By Koo Moore, enforcement analyst and
Stephanie Mitchell, marketing manager Share this post
When brands think about registering a trademark, it’s natural to consider the classes that match the direct nature of their products and services. A car manufacturer would register under vehicles[1]; an apparel brand would register in clothing, footwear, and headwear [2] —and perhaps jewelry[3] if they offer accessories.
What might not immediately spring to mind would be to register a trademark for the aforementioned products in I.C. Class 9, which, among other things, covers music, downloadable media, and music CDs.
However, CSC has seen an increase in the number of brands used in album cover artwork, song titles, and even artists’ names. Certain genres of music—especially hip-hop—may lean towards certain brands as signifiers of wealth and success; jewelry, luxury vehicles, and premium alcohol are just a few examples. In a 2017 article[4], Fortune.com highlighted the 12 most referenced brands in pop music over the previous three years. Two thirds of these brands were luxury vehicles, with Rolls-Royce the most referenced. Non-car brands included Rolex, Jordan sneakers, Hennessey, and Xanax.
CSC’s experience in enforcing trademark rights upon digital music services has revealed many nuances, and the enforcement process is not always straightforward.
- While brands in the related industries could enforce based on a likelihood of confusion argument, this is not always reliable when the brand and the artist are in completely different industries. In the late 90s, for example, Mattel took Scandinavian pop group Aqua to court over the use of a trademarked color and references to Barbie dolls in their song “Barbie Girl”. The case was dismissed, with Judge Alex Kozinski stating, “If we see a painting titled “Campbell’s Chicken Noodle Soup,” we’re unlikely to believe that Campbell’s has branched into the art business … nor upon hearing Janis Joplin croon, “Oh Lord, won’t you buy me a Mercedes Benz?” would we suspect that she and the carmaker had entered into a joint venture[5].”
- It may be difficult to enforce upon song titles and artists’ names that include brands or registered brand terms due to possible infringement on rights such as freedom of expression. That said, platforms are generally compliant when it comes to the use of copyrighted images or logos—for example, in album cover artwork.
Protecting a non-music brand’s intellectual property (IP) rights in a musical class can be a tricky area to navigate. On some music platforms, an I.C. Class 9 registration is a pre-requisite for the completion of any trademark reports, so it may be worth non-music brands considering this as a viable registration to protect their IP. If your brand is in one of the previously mentioned most-used categories, it may be a good idea to add the larger music download sites to your monitoring list. CSC can enable this, and gather relevant data so we can advise brands when a potential infringement occurs, and give guidance on how to enforce upon these instances to protect IP rights.
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[1] I.C. Class 12
[2] I.C. Class 25
[3] I.C. Class 14
[4] https://fortune.com/2017/08/18/name-brands-pop-music-rap/
[5] https://www.esquire.com/entertainment/music/a33578/bands-vs-brands/