Title: Trademarks in Music: Can a Song Define a Band’s Brand?

The name of a song can only function as a trademark if there is another use of the song – in apparel, for example.  The title of a single creative work, such as a song, cannot function as a trademark.

An album title can function as a trademark if there is a series of sound recordings with that title.  It is the same with a book title – a series of literary works is required for it to function as a trademark.

If that series qualifies as a trademark, it is a good idea to perform a trademark search and to file a trademark application at the United States Patent and Trademark Office in order to register the trademark.  

An Example of a Band Trying to Make the Use of a Song Title a Trademark

A few years back, the Red Hot Chili Peppers took legal action against Showtime Networks in a trademark issue over the use of their iconic song “Californication” in the television show of the same name. Band frontman Anthony Kiedis emphasized the significance of the song, stating, “‘Californication’ is the signature CD, video, and song of the band’s career.”

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?

The Question at Hand: Can a Song Become a Trademark?

The central query raised by the lawsuit is intriguing: Can a song or album achieve such monumental success that it becomes a trademark for a music group?

Before delving into the answer, it’s crucial to revisit the purpose of trademark law. Trademarks serve to indicate the source and quality of goods or services. However, when it comes to the title of a CD or a song, does it truly reveal the source and quality of the music within?

The Philosophical Challenge: Band Name vs. Album Title

Philosophically, the trademark is the band’s name itself. Bands like the Red Hot Chili Peppers, R.E.M., Bruce Springsteen, Jay-Z, and Elton John each have a unique sound, making the band name the true identifier. Album titles, though reflecting the band’s evolution, don’t inherently signify the source or quality of the songs.

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).

Legal Perspectives on Trademarks in Music

From a legal standpoint, obtaining a trademark registration for a song title is challenging. Registered trademarks can only be granted for a series of recordings if there’s evidence demonstrating the name’s role as a source indicator. This evidence may include advertising, reviews, and declarations from the industry, showcasing the name as a recognized source.

Trademark rights only accrue when there is a series of sound recordings associated with that song title or album title.

The Exception: When a Song Title Attains Distinctiveness

While challenging, there is an exception for song titles that become inseparable from a performer’s image, such as “Free Bird.” In such cases, the title may acquire secondary meaning, making it eligible for trademark protection.

The Case of “Californication”: A Great Height, But Not a Trademark

In the case of “Californication,” despite being a famous song in the Red Hot Chili Peppers’ career, it may not qualify as a trademark. To achieve this status, a title must transcend being a successful song and become an integral part of the band’s popular image.

In conclusion, the journey to trademarking a song or album title involves overcoming stringent legal criteria, emphasizing the unique challenges faced by music groups seeking to protect their creative legacy.

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.

Other Branding Ideas for Bands

Artist names, which can include the band name, a stage name for an artist, or even the personal name of the artist, can qualify as trademarks.  Musicians tend to register the trademarks for goods and services such as live performances of music and sound recordings. A record label name can qualify for trademark protection.

For example, Elvis Presley‘s name is a registered trademark. Taylor Swift has registered some of her song lyrics as trademarks for a variety of products – none of them actually music. This shows the different ways that musicians can use trademark law to protect their creative expressions. The musician can become a trademark owner through these creative uses of trademark law with other products.

The Beach Boys

Lead singer Mike Love acquired sole licensing rights to the Beach Boys name in 1998, following Carl Wilson’s death. He then sued bandmates Al Jardine and Brian Wilson (who is also his cousin).

Love first sued Jardine for touring under the name “Al Jardine of the Beach Boys” and “Beach Boys Family & Friends.” He then filed a lawsuit against Wilson when Wilson released an unfinished Beach Boys album, SMiLE.

While promoting the album, Wilson released a free compilation featuring re-recorded Beach Boys songs. Love stated that Wilson had been “misappropriating Love’s songs, likeness, and the Beach Boys trademark, as well as the ‘SMiLE’ album itself.” According to Love, the compilation negatively affected demand for the original tracks.  (Notice that Taylor Swift has re-recorded songs from a prior time in her library, but that’s a copyright issue, not a trademark issue).

Van Halen

The American rock band Van Halen was named after brothers, guitarist Eddie and drummer Alex. They decided to trademark the family name and the music group’s name, creating a strong brand.

When Alex Van Halen married Kelly Carter in 1984, she took his last name. They divorced 12 years later, but Kelly kept the famous last name. When Kelly embarked on a new business venture 20 years after the divorce, Alex sued her over the use of his last name in her personal business ventures. Kelly had trademarked the name of her construction and interior design company, and Alex didn’t want his fans thinking that his band was associated with his ex-wife’s couches and accent pillows.

According to the lawsuit, Van Halen’s trademarks “have acquired extensive goodwill, developed a high degree of distinctiveness, are recognized throughout the United States as well-known and famous, and recognized as identifying high-quality goods and services,” attorneys wrote. Ms. Van Halen’s “conduct is likely to have caused and will continue to cause confusion and mistakes among consumers and others as to the source, origin, or sponsorship of her products.”

Other Intellectual Property Protection for Bands

Musicians out there need to take heart that copyright protection does exist for musical works.  Your music copyright needs to be filed at the U.S. Copyright Office in the Library of Congress. The copyright registration will protect the sound recording itself of the music.  A separate copyright registration can be filed in the sheet music.  Yes, musicians do own music in all forms that they create.  

Do you have questions about and need legal help for your music trademark?  Contact us at anthony@vernalaw.com or call us at 914-908-6757.