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.

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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.

Strike Two!

In a phone call with a client last night, I was asked what I thought about the strike started by the Writers Guild of America that is now affecting the television industry.

According to the WGA website, there are big issues to be resolved, including:

• Jurisdiction for most of new media writing.


• Residuals for Internet downloads of television shows.


• Residuals for streaming video of theatrical product.

Right now, anytime a consumer views a TV show on the website of a network or channel, no fees are given to writers of the show. Quite often, there are commercials that appear before any video clip, so the television networks are making money when each show is viewed. (Then the networks pay the television production companies - represented by the Alliance of Motion Picture and Television Producers, who then pay all cast and crew members.)

So, this boils down to a licensing question: Do the writers (and their unions) agree to license their work (scripts in the form of a television show) on new forms of media? The strike says that they do if they are paid for it. Back in 1988, the television writers' strike cost the industry nearly $500 million in advertising revenue. How bad will the carnage (for this industry) be this time?

Is There Branding in Television Networks?

The UPN and WB television networks are merging for this upcoming television season. The new network is called CW and features the most-viewed shows from the two old networks.

Does the CW stand for a certain type of programming?

I spoke with Ellen Gray, the television critic of the Philadelphia Daily News, recently about the changes that the new CW network will (or will not) bring to television in this upcoming season.

In recent times, I had been thinking of WB as the teen angst network, as their shows consisted of "Smallville" (Superman's teenage years), and "One Tree Hill" (two estranged brothers growing up in a small North Carolina town called Tree Hill ). I was thinking of UPN as being the network for African-American TV shows, with the hilarious "Everybody Hates Chris" (Chris Rock's pre-teen years), and "Girlfriends" (four successful African-American women take on Los Angeles).

However, I was reminded that was not always the case. The networks "tried to have distinct identites" at the beginning, according to Ellen Gray. She reminded me that WB started with (and continues to have) family-friendly shows like "7th Heaven" (which will continue on the CW). The next step in its evolution was to target "young girls" with shows like "Gilmore Girls."

UPN, Gray reminded me, premiered with the two-hour pilot episode of "Star Trek: Voyager," and tried to build its audience from there. It has also tried to brand itself as the place to watch professional wrestling. (When Ellen Gray pointed that out to me, it brought back memories of those laughable ads where pro wrestler The Rock was a guest star in an awful episode of "Voyager" in which his character wrestled one of the Voyager's crew members.)

The traditional television networks do not have brands, either, Gray reminded me. CBS is no longer the network that only older people watch. CBS has had a "fair amount of success" thanks to "Survivor" in reaching a younger audience. NBC does not necessarily attract a younger audience anymore and is in fact premiering a show this new season starring Jeffrey Tambor and John Lithgow called "Twenty Good Years" about two men who ponder the last 20 years of their lives.

The CW, it turns out, will be more of the same as most of the programming will come from the two previous networks and only two new shows will be debuting. "Runaway" seems to be a mix between "The Fugitive" and "7th Heaven," as a family on the run from the law as the father was convicted of a crime he did not commit. "The Game" is a spin-off of "Girlfriends" in which a three women date NFL players. (Does anyone remember the English show "Footballers Wive$"?)

There is no cohesive schedule to the network. Monday seems to be family night, featuring "7th Heaven," Tuesday is the night for the younger girls with the pairing of "Gilmore Girls" and "Veronica Mars," Wednesday seems to be miscellaneous with "One Tree Hill" and "America's Next Top Model," Thursday is the action/teen night with "Smallville" and "Supernatural," Friday is wrestling, and Sunday is the African-American night with "Everybody Hates Chris" and "The Game." Gray hesitated to call Sunday the African-American night, talking about how universal "Everybody Hates Chris" is, but maybe that Sunday at 7 PM would be a better slot for the show, but not surrounded by the other shows that night.

CW's advertising has been a mix of messages. The ads' tagline "Free to Be" is open-ended. "You're free to be whatever you want as long as you watch the CW," joked Ellen Gray.

So it seems that there is not a true brand to what the CW programs for viewing, which is true for all of television. It does seem as if CW might be undecided in its personality, though.