Tuesday, January 29, 2008

Red Hot Trademark Infringement. . . or Not

This is the first post of 2008. I wish everyone is having a happy and healthy 2008.

Several months ago, the Red Hot Chili Peppers sued Showtime Networks and others in relation to the television show, "Californication."

Click here for a copy of the complaint.

There are two important sentences from the story linked above: The complaint alleges that the composition entitled "Californication" and the album achieved "extraordinary critical and commercial recognition."

"'Californication' is the signature CD, video and song of the band's career," band frontman Anthony Kiedis said in a statement. "For some TV show to come along and steal our identity is not right."

The complaint poses one important question: Can a band release an album or song that is so successful, that it defines their career as a trademark?

Frankly, the answer is, "No."

To understand this, the purpose of trademark law needs to be remembered. Trademarks exist in order to show that goods/services come from a certain source and have a certain quality. (And, yes, that is a link to Wikipedia. I reviewed it and think it is good for an overview.) Does the title of a CD show the source of goods (the goods here are the songs on the album) and the quality of those goods?

Again, the answer is, "No."

Why? Philosophically, the trademark is the name of the band. The Red Hot Chili Peppers have a different sound than R.E.M., who has a different sound than Bruce Springsteen, who has a different sound than Jay-Z, who has a different sound than Reginald Dwight (er. . .Elton John).

How to describe the Red Hot Chili Peppers music? Billboard magazine does it well. Looking at some of the discography of the band, album titles such as "Freaky Styley," "Mother's Milk," and "Blood Sugar Sex Magik" highlight the earlier part of the band's career while "Californication," "By the Way" and "Stadium Arcadium" highlight the latest part of the band's career. While "Californication" was the best-selling album for the band, "Blood Sugar Sex Magik," was probably the album that put the band on the popular music map (and probably marked a turning point in their sound due to the popular slow-tempo song, "Under the Bridge").

All the albums show characteristics of the band's style. The style, too, has changed over time (probably because of the numerous personnel changes in the band - which brings to question if band names should be trademarks themselves). The source of all the songs on the albums is the band. The quality of all the songs on the albums comes from the band. The quality is not represented by the album title, but by the musicians playing the song, bringing the products (songs) to the listener.

Coming from the legal perspective is similar. Personally, I have filed more than one trademark in the class of music recordings.

No title can be a trademark, unless the title is of a series of recordings. Then the trademark applicant must show that the musician controls the quality of the recordings, such that the name has come to represent an assurance of quality to the public.

Evidence musst be shown that there is evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for prerecorded works. Evidence that the name is recognized by others as a source of the series includes advertising that promotes the name as the source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from the sound recording industry, retailers, and purchasers showing recognition of the name as an indicator of the source of a series of recordings.

Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for prerecorded works. Evidence of control over the quality of the recordings and use of the name includes licensing contracts or similar documentation.

Ultimately, "Californication," while a great height in the band's career, cannot be a trademark for the band as the band's name itself would be the mark.

As for the next installment, I've been receiving a few e-mails and will answer your questions - just send an e-mail and ask away.

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