Speakers: John Walsh, Felicia Ellsworth, Hailey Cherepon, Elizabeth Chan and Louis Tompros

Walsh: Welcome to in the public interest, a podcast from WilmerHale. I'm John Walsh.

Ellsworth: And I'm Felicia Ellsworth. John and I are partners at WilmerHale, an international law firm that works at the intersection of government technology and business.

[Music plays]

Walsh: Happy holidays and welcome to season three of In the Public Interest, everyone.  Felicia it’s hard to believe another season has already started.

Ellsworth: Time sure has flown by, but it's great to be here.  This season we'll be bringing you a lot of really interesting episodes.

Walsh: Today the WilmerHale podcast is proud to kick off season three with a holiday themed episode featuring Elizabeth Chan, a full time Christmas pop star who has dedicated her entire career writing holiday music.  The wonderful music we're listening to right now is from Elizabeth's new album, and we're going to hear more of her music throughout the episode.  Hailey Cherepon an associate who worked on this case will kick us off.

Cherepon: Over the past few months I had the honor of working on a case that garnered national media attention, protecting the right for our client, musician and singer Elizabeth Chan to use the phrase Queen of Christmas. Elizabeth is a unique musician, she writes, creates, and produces exclusively holiday music.  Earlier this year, Mariah Carey and her team tried to trademark the phrase Queen of Christmas to prevent other Christmas artists from using the phrase and to officially make Mariah Carey the only queen of the holiday.  But Elizabeth opposed the action so that she and other artists could continue to all be Queens of Christmas.  With the holiday season coming up we thought it was a perfect time to feature Elizabeth's story.  We're joined by our host Felicia Ellsworth, who will speak with Elizabeth and one of the WilmerHale attorneys that helped her on this issue, Louis Tompros.  Wishing you all a happy holiday season and Felicia it’s over to you.

Ellsworth: Happy holidays everyone.  Today I'm joined by Louis Tompros and one of the firm's clients and Louis's clients, Elizabeth Chan.  Louis is a partner at WilmerHale in our Boston office, and Elizabeth I will let you introduce yourself and I know we've just heard a little bit about you. Louis and Elizabeth thank you so much both of you for being here.

Tompros: Thanks for having me.

Chan: Yeah, thanks for having me. So, I'm Elizabeth Chan, based in New York City.  Ironically enough, across the street from the WilmerHale New York offices, which I had never known was there until I had met Louis and figured out you know that we're basically neighbors, and I am so proud to be a client of Louis Tompros because he has helped me stay the Queen of Christmas.

Ellsworth: So, let's talk about that a little bit.  As Hailey mentioned, you're one of the only musicians who exclusively records and releases Christmas music.  So, tell us a little bit about how that happened.  How did you get here?

Chan: For me, ever since I was about 7 years old, I had always wanted to write and sing Christmas music.  I'm in my office right now and behind me there's a bookcase and I have these notebooks of mine when I was a young child of me writing poetry about snow and snowmen and holiday things.  For me, it was just something that I was always enamored with.  I remember telling my parents in the back seat of their car while we were listening to Christmas music that I wanted to be a singer and I wanted to write Christmas music and I loved Christmas music and I knew all the songs on the radio and I remember very, very clearly that my parents were like no way, no way there's no such thing as you becoming a singer.  There's no career in this, this is not going to happen, but thanks, but no thanks.

Ellsworth: So, we've had an opportunity to hear a little bit of your music in the podcast today, how would you describe your music stylistically, or what is your goal and purpose with your music?

Chan: The goal and the purpose of my music has definitely changed throughout the years.  I've been composing Christmas music solidly and professionally for the last 12 years, and my music is truly a reflection of where I am in my life and in my journey through Christmas music.  The best thing about my job is that I've had the great fortune and ability to be almost like a musical chameleon and dive into different genres.  Whether it's jazz or classical music or pop or EDM or dance music.  I've sung in different languages, English, Spanish, Mandarin, Tagalog, Norse, Norwegian.  The crayons in my box in which I color my Christmas music are endless and so it's not ever just one style because I know that Christmas is the kind of season and Christmas music is the kind of thing that reaches parts of the world that I will never see but my songs visit all the time and so for me to reach those places I have to make it as diverse as the world is.

Ellsworth: So, tell us a little bit about the Queen of Christmas and what that has meant to you.  You've been dubbed that, of course, because of your focus exclusively on Christmas music.  But tell us a little bit about what that's meant for your career.

Chan: Before all of this happened with Mariah Carey, whenever anybody says Queen of Christmas, I always think of my grandmother.  I did not expect tears to happen.  I grew up with very little.  I'm the first born child of two immigrants who've really had nothing, and they had me way too young.  And we really had nothing during Christmas.  All we had was each other.  I'm half Filipino, half Chinese.  I have a ton of uncles.  My mom was the youngest of eight and the only girl and I was her first born.  So, my grandmother thought I was particularly special.  She really taught us that Christmas was about being together and food and laughter and Christmas music.  Christmas was always very simple.  It was about family, love and home.  And so, for me, before any of this Queen of Christmas stuff happened with Mariah, the Queen of Christmas was always my grandmother because she taught me how important it was to bring people together during the holidays.  And through this whole process of defending Queen of Christmas not only for myself, but everybody else and generations after I found my baptismal certificate and I, I learned that I was baptized on Christmas Sunday.  I always saw that as a sign for my grandmother who's no longer with us.  Sometimes she shows up in in these small ways so.

Ellsworth: I, I think the back story of sort of why this is so important to you is really, really powerful and I think, to me at least, leads to the next question or answers probably the next question, but I'll pose it to you which is how did all this come about with Mariah Carey?  What was your impetus for moving forward with the trademark challenges that you've brought? 

Chan: I was actually working on a spoken word album called The Queen of Christmas, that recounts my whole journey as a Christmas artist and while I was working on this album, my entertainment attorneys at the time had found the filing for Queen of Christmas trademark and said hey Elizabeth, did you know that Mariah Carey is trying to trademark Queen of Christmas and I didn’t.  And I don't think that they would have found it or looked it up if they didn't have their own curiosity.  I mean, every year we're very diligent about copywriting, my albums and my music.  So, they happen to find it.  I never worried about trademarks in that way, but they had flagged it to me and said this is going to be bad if she's issued this trademark, it would mean that you wouldn't be able to ever be known as the Queen of Christmas, which was already a title that I had earned, because maybe my second or third year of being a Christmas artist I had seen 2 singles reached the top of the radio charts and so radio started to call me the Queen of Christmas because in any music genre, if you're the most prolific artist in that genre are the Queen of Soul, the Queen of Jazz, and for me I was the Queen of Christmas now.  It was a badge of honor I took very seriously, and a responsibility that I love.  So, that's how I first found out about it, but. I was really naive about the process.  I thought, oh okay, I'm just going to find a lawyer and we're just going to take care of this.  I thought it was as simple as copywriting an album and it was nothing like that.

Ellsworth: So, enter stage left Louis Tompros.  Let me turn to Louis then and ask how did you get involved?  How did WilmerHale get involved in helping Elizabeth in this legal matter?

Tompros: Thanks, well the way that WilmerHale got involved was because Elizabeth was good friends with one of our partners, Kevin Prussia.  And reached out to him looking for a lawyer or help or something.  I think she said law student advice, anything that she could get to start trying to deal with this.  And Kevin put Elizabeth in touch with me and another of our partners, John Hobgood.  We talked to Elizabeth and understood the situation and it was pretty evident to us what Mariah Carey's company was doing.  They were seeking a forward-looking registration that's called a trademark registration for intent to use on Queen of Christmas on dozens and dozens of different kinds of goods, including things that Elizabeth was doing like music, albums, that kind of thing, but also all kinds of other crazy categories of goods they wanted to have the registered trademark for Queen of Christmas on things like books and posters and pajamas and mugs and cocktail shakers and face masks literally across the board.  And it was pretty evident to us what they were doing was something that companies sometimes do, which is to try to blanket the field to keep others out.  When we heard that about Elizabeth's story and about her being called the Queen of Christmas way back as early as at least 2014 and then having been a full time Christmas recording artist in this space for so long, it became clear to us that this was a really unfair move by Mariah Carey's company.  And so, we wanted to help Elizabeth out.  We wanted to take this on to make sure that we push back against that kind of really improper use of trademark registration.

Ellsworth: And Louis, can you explain for our listeners, just a little bit about how the trademark process works?  Elizabeth mentioned opposition proceedings, maybe just give a little outline of what the legal framework is here.

Tompros: Sure, in the US trademark system you can get a federal registration for a trademark.  Now you don't have to get a registration to be able to use a trademark.  You can use any name you want when you're selling something or offering something or providing a service without registering a trademark.  But many people try to get trademark registrations for their trademarks because they provide some additional protection.  If you have the US registration for a trademark, there is a legal presumption that you own that trademark and that you have the right to use it yourself and that you have the right to preclude other people from using it in any of the classes of goods and services for which it's registered.  The way that you seek such a registration is that you file an application, usually with the help of a lawyer to the Patent and Trademark Office.  And that's what Mariah's company did here.  And in that application, you have to identify what it is you want to register.  She said Queen of Christmas and you have to identify what classes of things you want to register that trademark for and that's where she had really blanketed the area with essentially everything.  After that application is filed the Trademark Office reviews it and publishes it for opposition and an opposition is an opportunity for anyone who wants to challenge a trademark and say no, you shouldn't have this right for whatever reason to do so.  So, a trademark opposition is essentially a lawsuit that you file in front of the Trademark Office and it's assigned to a 3 judge panel.  It's a 16 to 18 month legal proceeding with discovery and depositions and ultimately a trial before the Trademark Trial and Appeal Board where you can challenge the applicant’s right to register that trademark.  That opposition proceeding is really the only way for somebody like Elizabeth to challenge an attempted registration, like what Mariah Carey's company was doing here, and so that's what we did.

Ellsworth: So, before we talk about how the legal proceedings unfolded.  Elizabeth, can you tell us why you decided to pursue this to sort of take on this behemoth of everything that Mariah Carey was trying to do?  What motivated you to push this forward and to take this on?

Chan: I maybe spoke with 40 different lawyers.  For me, I was just taking it one step at a time because I was completely naive to the process and the only reason why I knew Kevin in the first place is because when my parents told me I couldn't be an artist or a singer, I did what any Asian parent wants their kid to be.  They want them to either pursue law or be a doctor or a finance, and so I was choosing a law for a little while.  So that's how I met Kevin in college.  We took all of our law classes together.  And so, Kevin said, hold on, let me talk to my partners at my firm.  Just give me like, give me a day, I'll get back to you.  Basically, that's how I ended up being a client of WilmerHale.

Ellsworth: Were you at all concerned about any professional repercussions of taking on Mariah Carey?  Putting aside all the legal issues.

Chan: Uh, yeah, I mean every, Louis is laughing for so many reasons, right?  Because litigation is tough, and I was not only defending my profession, my livelihood, I was protecting my personal life because, you know, I personally love Christmas music.  It affected my daughter to a certain extent, who's only five and also known as the Princess of Christmas.  Going up against a global superstar like Mariah Carey, I was always a public figure, but this would be completely different.  And you know, in the entertainment business it's a business based on judgment.  It's a business of perception, and it's not objective, it's subjective.  So, yeah, I was very concerned about all of that.

Tompros: And can I add in one thing here, which is just to say I know it's a little weird for a lawyer to say I'm really proud of my client, but I think I and all of us are really proud of what Elizabeth chose to do here because she's got it exactly right.  This was a situation where the legal issues were very good for us.  And we could litigate this case and win and by WilmerHale coming in and evening, the playing field, we could litigate this case against a big firm on the other side, and win, but from the perspective of the impact on Elizabeth both personally and professionally, it was a big deal.  A huge amount of time away from the recording work that she's trying to do year round and a huge amount of potential public backlash from fans of a legitimately globally known superstar.  And she was willing to stand up against that for herself for her family, but then also more broadly for the same principle we thought it was appropriate to stand up for that nobody should claim sole ownership of the name Queen of Christmas forever and for all time.  And it was a really obviously very brave thing for her to do.  In some ways it was easier to be your lawyer than it was for you to be the client in this kind of a circumstance.

Chan: Oh, it was really hard, I was pretty scared and it did have personal and professional impacts on me.  But I also understand that Christmas to me is something so special and worth protecting.

Ellsworth: So, let's talk a little bit about what did happen, right?  You all had a pretty big victory pretty recently.

Tompros: Sure, so we filed an opposition proceeding at the Trademark Trial and Appeal Board and we asserted 2 main reasons for opposing the trademark.  One was likelihood of confusion because Elizabeth had been using this trademark before.  We didn't think that Mariah Carey could show that she had been using it ahead of the time that Elizabeth had been.  And Elizabeth had become associated with it in the second was this concept of false association that the media had associated Elizabeth with Queen of Christmas and it was unfair to then monopolize that in favor of somebody else.  We were not saying that Elizabeth was entitled to the trademark registration.  We were simply saying that it shouldn't be registered to somebody else because Elizabeth was one of the people that had been using it appropriately beforehand and so we filed our opposition after several extension requests and related oppositions.  Ultimately, Mariah's company did not file an answer and we think we know exactly why it's that there's not an answer.  There's nothing to say their application made very clear that they were not yet using the Queen of Christmas trademark, and we're going only to be using it in the future and our opposition and  the evidence that we were able to put forward in support of it made very clear that Elizabeth had been using it beforehand and that's a very clear cut case as we had been saying to Elizabeth from the beginning that if justice prevails, we should win.  So, the Trademark Office found exactly that they issued a judgment in view of Mariah's company’s inability and failure to answer the allegations that we put forward in the opposition.  We got a judgment saying that the registration will be refused and permanently rejected, so all of the applications that we challenged were rejected and it's now formal and final, and now nobody, certainly not Mariah Carey, but nobody can claim exclusive rights to being the Queen of Christmas.

Ellsworth: So, Elizabeth maybe give us your perspective as the non-lawyer from how you view what happened and what's next for you.

Chan: I was just always fighting for status quo, I guess.  I'm in the Christmas music space.  Mariah has always been in my orbit and it had never been an issue before she made it an issue.  But when she decided to take that stance and I realized it would have detrimental impact to me personally and professionally, I had to stand up and do something about it, you know.  And for me it's worth it.  Mariah is known as the Queen of Christmas.  I'm known as a Queen of Christmas.  There will be other Queen of Christmases.  It takes about several decades for Christmas music to become popular.  Whether it's Silent Night or Jingle Bells or even Mariah's song, I've only been doing this for 12 years, so I have quite a ways to go.  But for me to even see that somebody would want to shut that opportunity down for me and people in the future to know that someone was actively trying to stop the clock on tradition is egregious.  I looked at my daughters, my 5 year old daughter Noel, who's known as the Princess of Christmas.  The minute that she was born because she was born of the Queen of Christmas hence she became a Princess the Christmas.  I look at her and I look at my other daughter Ava and I thought I want to protect what Christmas looks like for you in the future.  When I was growing up for me, my favorite singer was Karen Carpenter and I thought about who their favorite singer would be.  Obviously, since they're my daughters, and once they become teenagers, it's not going to be me.  I know this for a fact.  But whoever that Queen of Christmas that they look forward to listening to that will shepherd in the season.  I thought about my great grandchildren and I wanted that for them.  I wanted to open up the genre in the way that it was opened for me.  We were fighting for the future of Christmas you know.

Ellsworth: We're all grateful that you did that and that with the help of WilmerHale Christmas is for everybody

Chan: Exactly.

Ellsworth: I understand Elizabeth, you've got a new album coming out.  Anything you want to tell us about that?

Chan: Yes.  So, I just released my 12th album.  It's called the 12 Months of Christmas.  And I remember asking everybody on the legal team, hey, does anybody have a better title and I literally got crickets back from all of these smart brilliant people.  No one could come up with a better title, I was like what's wrong with you guys?

Tompros: We're good lawyers.  We're not particularly great album creators.  I'm sorry album naming is apparently not one of our strongest practices.  Here at WilmerHale.  The 12 Months of Christmas is fantastic, it's, it's, it's your whole year round theme.

Chan: It is.

[Music plays]

Chan: Louis had a lot of fun, I think in this whole thing cause he even asked for like hey Elizabeth, can you write a lawyerly Christmas song or a song about lawyers?  And so, I did.  I wrote a song called the Santa Claus, and it's a duet with me and my daughter, the Princess of Christmas, about what the clause is between her and Santa.

[Music plays]

Chan: I had a lot of fun with that, and I was so grateful to Kevin and I wrote him a Christmas song too that I got to play for him a week ago.  He had not heard it before and I got to watch him listen to it on zoom and it was, it was a good moment.  Yeah, so, I put all of my feelings about this whole trademark proceeding and all of the strife and the pressure and everything, and I put it back in the music, which is what I do as an artist.  I'm also like one of the top Christmas artists right now.  Like I have like the number 4 record in America.  I, I always forget to like just enjoy the moment you know and just celebrate the wins, not just the legal wins but like the musical wins too. 

Ellsworth: I'll tell you, in my family we start listening to Christmas music right after Halloween.  So, we're …

Chan: You're my peoples.

Ellsworth: We're your people and we're gonna put The 12 Months of Christmas on our playlist to be sure.

Chan: Awesome, awesome.

Ellsworth: Thanks for everything you both did to defend Christmas and thanks for taking the time to share your story with us.

Tompros: Thanks for having me.

Chan: Yeah, thanks for having me.

[Music plays]

Walsh: Thanks to our audience for joining us on this episode of In the Public Interest.  We hope you'll join us for our next episode.  And if you enjoyed this podcast, please take a moment to share it with a friend, subscribe rate and review us.  Until then, see you next time on In the Public Interest.