In June, the country trio formerly known as Lady Antebellum published a statement saying that they were “regretful and embarrassed” that they had not taken into account the negative associations of the word antebellum and would henceforth be known as Lady A. This change came years after journalists challenged them on their choice of name, but better late than never, right? There was one big problem: A Black blues singer by the name of Anita White had been performing under the name for Lady A for more than 20 years. The situation neatly captured the almost willful ignorance that made the name change necessary in the first place: In trying to respond to criticism several years too late, the good intentions of the Artist Formerly Known as Lady Antebellum erased the livelihood of a Black artist. Still, things seemed to be looking up when the band posted a tweet on June 15 of a Zoom call with White that said, “We are excited to share we are moving forward with positive solutions and common ground.”
But, if the lawsuit the band filed against White this week is any indication, that forward momentum looks to have stalled. Also, the estate of Mr. Rogers might be involved?
To detangle this legal morass, Slate spoke to trademark lawyer and University of New Hampshire professor Alexandra Roberts via phone and email.
Rachelle Hampton: Could you just explain the contours of this suit and who you feel has the better case?
Alexandra Roberts: So, this suit is actually a declaratory judgment suit, which means the band isn’t suing Ms. White to get her to stop using the mark or to accuse her of infringing their rights. All that they’re asking the court for is essentially an affirmation of the legitimacy of their rights. The band has three federal trademark registrations, which are incontestable. It’s basically saying to the court, “Will you just confirm for us that these trademark registrations are valid?” Essentially it’s a defensive move—it’s in response to what it perceives as a threat of a lawsuit from Ms. White.
There are a couple of issues here. One of them is about jurisdiction. The type of suit that they brought requires reasonable apprehension of a suit from her. And the evidence for that is kind of scarce. They say that when her new lawyers contacted them, they identified themselves as litigation attorneys. And then they say that the settlement agreement for coexistence for each entity continuing to use Lady A, that they were going back-and-forth when her new representation suddenly asked for $10 million. And the combination of those two things, they decided, meant that she would potentially sue them for trademark infringement. And that is kind of a leap. So it actually would be not shocking for a judge to just throw this case out and say: “You don’t have the ability to bring this case. If she sues you for infringement, we’ll hear that case. And if you want to sue her for infringement, then we’ll hear that case.”
So, this is a very preemptive move.
Yeah. And it’s really surprising. I think laypeople have good intuitions on this, which is, why would they do this if they didn’t have to? It sounds as though they were in conversation, the band and the individual artist, they were having discussions about continuing to coexist and even about collaborating. It seemed like everybody was getting along well. And then maybe the lawyers went a bit too far or maybe something went wrong in those conversations. And so either just the band or both sides kind of moved to this adversarial position. But I think everybody was capable of taking a step back, looking at the situation and saying: “Litigation is not the smart move here. Spending a lot of money on lawyers, asking them to make sense of this and divide up these rights is not the right move.”
You said on Twitter that you’re not impressed with the evidence that the band formerly known as Lady Antebellum used for their federal trademark of the name “Lady A.” Could you tell me more about that?
So, a trademark is a source indicator. A trademark is a brand name or a symbol or something that tells us who makes the product, who sells the product, who provides a service. When an entity applies to register something as a trademark, or just to assert trademark rights of a term or a phrase or a sample, they need to show use as a mark, something that consumers will understand to be the trademark used, and they need to show it in connection with the specific goods and services.
For band names it’s a little bit trickier, but if you’re displaying something on an album as the name of your band, or as a record label, or using it in some way that people understand as a trademark. And what we see with [the band’s] specimens are use on the front of some T-shirts, which isn’t necessarily a trademark used. And we see use all over the Lady Antebellum website as they’re kind of referring to themselves in shorthand. So it looks a lot more like a nickname that they’re using for themselves and less like a trademark.
All that said, as I mentioned, the registrations are incontestable, which means they went through the whole process. The applications were examined by [a United States Patent and Trademark Office] examining attorney. They were passed through to publication, which means anybody can oppose them: Anybody who’s in a position to be affected can speak out and say, “I don’t think this registration is any good.” Ms. White could have spoken up and said, “Actually, I’ve been using this mark for a lot longer and so your registration is problematic.” None of those things happened. So the registrations were issued, and then more than five years went by and the band essentially did some more paperwork that gave them even more rights and makes these registrations even more difficult to challenge. It’s going to be really difficult to cancel or invalidate those registrations.
In that case, the $10 million that Ms. White’s lawyers floated seems like a lot.
Here’s the fun thing about trademark rights in the United States, and this is not true in a lot of other places: Trademark rights in the U.S. are based on use. Even when you have a registration, the registration is itself based on use. You can’t get a registration based on a plan to use something in the future, or just paying a fee and saying that you want it. You have to show actual use in interstate commerce and you don’t need a registration to get trademark rights.
If you set up a shop and you start selling Rachelle’s Purses and people buy them, you sell to people in different states, and you start to get a reputation, you establish some goodwill in your name, and you do that for a few years, you have trademark rights and you don’t ever have to do anything to confirm those trademark rights. And if somebody then infringes, if somebody sets up a shop down the road and they start selling Rachelle’s Handbags and create confusion among consumers, you can sue them. You basically get all of the same rights that the owner of a registered mark has—not quite all of the same ones, but a lot of the same ones. Those are called common law rights. If this conflict gets litigated, it’s really difficult to predict the outcome.
It seems pretty clear that Ms. White has prior use. If she can show use as a trademark, if she can show use across state lines, if she can kind of establish those rights, then she can enforce those rights because they started first. So the first user is often going to be able to trump anybody who comes later. But then it gets even more complicated because the registration automatically gives you rights throughout the U.S., but common law rights are potentially cabined by where the use is made. So if Ms. White can show, for example, that she was using Lady A as a trademark throughout the Pacific Northwest long before those applications to register Lady A were filed by the band, then she might have superior rights in that region of the country, but not throughout the country.
I think some of the discussion that trademark people have been having is these older cases that divide up the country in that way are maybe useful if you’re selling doughnuts in a couple of towns. But if you are a musician, and you have a Spotify station, and you’re streaming music to people in every state or you’re selling albums and people can download them from their computers, then that geography starts to make a lot less sense. The $10 million that some are finding completely outrageous and some are finding not outrageous at all is, I think, a reflection of that uncertainty.
It is possible for them to go to court and for somebody to accurately say, “You know what, to the band, Lady A, the individual artist, she was here first. And people were buying her music in just about every state of the union, so you’re enjoined from using this name, despite your registration.” I think that would be a surprising outcome but it is possible.
What do you think would be an unsurprising outcome?
I think some kind of coexistence. If they actually litigated this, which still seems unlikely, a court could end up kind of denying each side an injunction. So the band doesn’t get to make Ms. White stop using Lady A, Ms. White doesn’t get to make the band stop using Lady A, everybody has to go along together and continue to coexist, which is exactly the outcome that they’ll reach if they can just get together and their lawyers can find some kind of happy medium.
If the original Lady A had trademarked the name and then let Lady Antebellum refer to themselves as Lady A, would that weaken her claim?
So the stereotype about the requirements of policing I think tends to be overstated, but it is possible that if you kind of knowingly go along for many years with another user of the same mark, you can be [assumed] to have given up your opportunity to challenge that name. I think it will be interesting if they continue to litigate to figure out who knew what and when they knew it. So for example, if Ms. White started recording albums of Lady A in the early 2000s or even prior to that, and then the band applied to register Lady A and started using it on their website, more like 2008, 2010, were they aware of her use and should that have changed their behavior? When you apply to register a mark, you basically attest to your belief that nobody else has conflicting rights. And the USPTO is also expected to do that search and to look around and be aware of any rights that might conflict. So they apparently were not aware at the time. They might be more likely to be aware if it happened now.
So did they know in 2008, 2010? And then did they know a month ago when they made this decision to actively announce, We’re changing our name from Lady Antebellum to Lady A? And what did they owe her at that stage? Or what conversations should they have been having to make a more careful, educated decision? Or did they just rely on the existence of their registrations and say, “We don’t need to do a search. We don’t need to ask if this name is already in use because we own these registrations. So we must be safe.”
What do you see happening from here?
I think that the band is going to notice the backlash, see the reaction among fans, among people paying attention. A lot of people are paying really heightened attention right now, I think, to issues of racism and injustice. And kind of silencing or trying to take the name away from a Black artist with a lot of longevity, I think, is going to generate some incredibly negative publicity. So my guess is that they would return to the negotiating table, or that’s what I would advise them to do if I were working with them, and try to backtrack a little, maybe get back to where they were earlier, maybe see what they can do to establish some kind of more positive relationships, but I wouldn’t have predicted this move. So it’s also possible that they could try to push forward with this and try to get in front of a judge, knowing that they have these registrations that are really strong.
In a truly unexpected development, the actor who played Lady Aberlin on Mister Rogers’ Neighborhood jumped into the fray yesterday, suggesting that because her character was occasionally known as “Lady A” and released a song in 1982, Fred Rogers’ estate might actually have a claim as well. What do you make of that?
The tweet references copyright infringement, so I’ll start there. There is no copyright protection for names or titles. The song to which Betty Aberlin links—including melody, lyrics, etc.—is protected by copyright. Obviously no one is accusing White or the band of performing or recording that song without a license. Copyright protection is sometimes available for characters, but again, neither of these musical artists is playing the character of Lady A from Mister Rogers’ Neighborhood. Even if they were, that would likely be a fair use. And again, a name is never protected by copyright law, and that’s the only thing these musicians have in common with this character (They’re not impersonating her in any other way.) Copyright infringement is a nonstarter.
Trademark rights are what the Lady A dispute centers on. As we discussed today, trademark rights arise from use of any word, phrase, logo, symbol, etc., as a source indicator in connection with the sale of specific goods or services, like Greyhound for bus services or Dasani for bottled water or Tony the Tiger for cereal or a [Nike] swoosh for athletic apparel. I am not aware of Lady A from Mister Rogers’ Neighborhood being used as a source indicator in connection with any goods or services. If it were 2020 and we were talking about a reality show star rather than a character or actress on Mister Rogers’ Neighborhood, then there would probably be a higher likelihood of trademark use: For example, I believe all of the Kardashians and Jenners have trademark registrations for their names in connection with things like entertainment and endorsement services and public appearances. If Lady A used the show to launch her music career and released several albums under that name and then went on tour and sold tickets, that would be a different conversation.
Intellectual property doesn’t grant anyone exclusive rights to the name of a person or a character unless that name is being used as a trademark for something. Music recordings can be that something, as can entertainment services.
The tweet does raise another interesting point, which is that the band and Ms. White are not even the only two [musical acts] who go by “Lady A”; there’s at least one more on Spotify and there could be others. Trademark cases sometimes take into account whether use of a particular mark is nonexclusive or very common in an industry, creating a “crowded field.” (For example, there are hundreds of banks with “National” as part of their names, so if one sues another for infringement, the defendant will be able to persuasively argue that so many banks with similar names exist that consumers aren’t likely to be confused.) Three or four artists may not be enough to show “crowding,” exactly, but may suggest that the band and White can continue to coexist without deceiving consumers—i.e., the existence of other Lady A’s, even including Lady A from Mister Rogers’ Neighborhood, weighs against a likelihood of confusion based on the use of “Lady A” by both the band and Ms. White.
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