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What is a trademark for a music group or a song?

A few years ago, the Red Hot Chili Peppers sued Showtime Networks and others in relation to the television show, “Californication.”

The complaint alleged 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.”

Trademarks for Music Groups or Songs

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?

Before we answer, let’s take a step back.  To understand this discussion, 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.

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?  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, we 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. No performer name may be a trademark, either, unless the trademark applicant is able to show that the musician applicant controls the quality of the recordings, such that the name has come to represent an assurance of quality to the public.

    However, the name of the author or performer may be registered if:
      (1) It is used on a series of written or recorded works; and
      (2) The application contains sufficient evidence that the name
    identifies the source of the series and not merely the writer of the
    written work or the name of the performing artist.
TMEP § 1202.09(a).
      A showing that the name functions as a source identifier may be
    made by submitting evidence of either: (1) promotion and recognition
    of the name as a source indicator for the series ...; or (2) the
    author's or performer's control over the name and quality of his or
    her works in the series ...
TMEP § 1202.09(a)(ii).
      If the applicant maintains control over the quality of the goods
    because the goods are published or recorded directly under the
    applicant's control, the applicant may submit a verified statement
    that "the applicant publishes or produces the goods and controls
    their quality."
TMEP § 1202(a)(ii)(B)

Evidence must 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.

The one exception is when that song title is so definitive in a performer’s career that it would be a part of the band’s popular image.  That song title, like “Free Bird,” must acquire secondary meaning.

Ultimately, “Californication,” while a great height in the band’s career, cannot be a trademark for the band as it probably has not reached that height for this band.