The Red Hot Chilli Peppers are suing Showtime for naming their latest series “Californication.” Showtime’s producers claim that the Red Hots didn’t coin the term though. (complaint)
“Apparently in the ’70s there were bumper stickers that said ‘Don’t Californicate Oregon,’ because Californians were coming up there, and I just through it was a great, great title for this show,” said [Producer Tom] Kapinos. (source)
As far as the claims go:
The lawsuit alleges unfair competition, dilution of the value of the name and unjust enrichment, claiming the title is “inherently distinctive, famous … and immediately associated in the mind of the consumer” with the Red Hot Chili Peppers. (source)
The case seems like a tough call.
It is unlikely that the Red Hots will be able to show trademark rights in the name of a single album. Generally speaking, a title of a single work is not subject to trademark protection. That probably kills the dilution claim. But, that doesn’t squash the other claims.
In Rosa Parks v. Laface Records, 329 F.3d 437 (6th Cir. 2003), the band OutKast was taken to task by the civil rights heroine for naming one of their songs after her. There was no real artistic reason to name the track after her, and thus the court ruled in her favor.
Ultimately, I don’t think that Mr. Kapinos’ claim about hearing the term in the 1970s will matter — even if it is true. This is going to come down to whether the title will mislead consumers into a belief that the Red Hots have something to do with the show or that they sponsor or endorse it in some way. In this day and age where everything on TV or in a movie is a product placement, consumers might very well come to that conclusion. Whether the Red Hots prove trademark rights or not, Showtime’s actions still might amount to unfair competition or unjust enrichment.
Professor Dave Fagundes provided this interesting commentary:
In a somewhat ironic backstory, about a year ago, the RHCPs were nearly sued by Tom Petty on the copyright theory that “Dani California”, one of the songs at issue in the current matter, infringed Petty’s musical work “Mary Jane’s Last Dance”. A Delaware DJ showed that the chord progressions, lyrical themes, etc., of the two songs were largely identical. Petty eventually decided against litigating, however, expressing the refreshing but rare opinion that he didn’t care much if people copied his songs and didn’t want to add to the volume of lawsuits over pop music:
If “karmic imbalance” were an affirmative defense to trademark infringement, the RHCPs would be up a creek.
For the audio comparison of the Petty and RHCP songs, click here.