Last month, Verizon Wireless purchased the right to be the exclusive provider of ring tones from the Bob Marley music catalog from Universal – who owns the rights to Marley’s music.
The Marley estate objected, claiming Verizon failed to get permission from the singer’s family before making use of his music and likeness on its Web site. The estate threatened to sue for trademark infringement. (source).
Most of the coverage of this case is a bit ham-fisted and confused. I won’t even cite to the awful New York Times coverage of the case because it is so poor. You would think that the New York Times would have better coverage, but what can you say about the paper that tied the hook and sinker to the Bush line on the Iraq War? Gray lady my ass.
Politics and media criticism aside, I will attempt to clarify some of the legal issues in this interesting case.
The Copyright Issue
With respect to Verizon’s right to use Marley’s music in its ring tones, this turns on its agreement with Universal. Under U.S. law, copyright to a particular musical work can be bought and sold just like a car, a house, or a canned ham. I have not traced the chain of title to Redemption Song, but there seems to be no dispute as to who owns the copyright to the Marley library. Therefore, Universal had every right to slice off the ring tone rights to Verizon. This does not seem to be in dispute.
The Musical Trademark Issue – How a Case over a Baked Lays Commercial (go figure!) Predicts the Outcome of This Case
I emotionally side with a musician who gets upset when he hears his composition in a TV commercial. Jim Morrison allegedly flipped out when he heard “Light My Fire” turned into a TV commercial without his permission – even though he profited handsomely from the deal (source). A recent law review article claims that many musicians are more concerned with attribution and control than with financial gain.
Although this contention can probably be supported only anecdotally and not empirically, it seems safe to conclude that the two things that virtually all creators desire is to receive credit when appropriate and to eliminate the suggestion of association when it is not. Laura A. Heymann, The Trademark/Copyright Divide, 60 SMU L. Rev. 55, 95-96 (2007) (citations omitted).
I have no compelling evidence to support or rebut Professor Heymann’s claims, but I blogged earlier on a case involving a spat between the members of the Violent Femmes, which erupted after one member sold the classic “Blister in the Sun” to a burger chain for use in its commercials. See Violent Femmes Turn on Each Other).
While I am certain that Marley’s heirs were just as disgusted when they heard Buffalo Soldier as a ring tone as Morrison was when he heard Buick using his tune to hawk Opels, and I am a big fan of artistic integrity, the reality is that the Marley estate does not have a claim under this theory. Under current law, this does not support a trademark infringement case.
Oliveira v. Frito-Lay
The seminal case regarding this issue is Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2001). In that case, Astrud Oliveira (a.k.a. Astrid Gilberto), the singer of the famous 1964 recording of “The Girl From Ipanema” sued Frito-Lay for using that recording in a Baked Lays commercial. There was no dispute that PolyGram Records was permitted to license the song to others – as PolyGram was the proper owner of the copyright to the work.
Instead, Gilberto asserted a personal trademark right in the song itself. She credibly claimed that the tune was indelibly intertwined with her persona. She claimed that the world knows her as “The Girl from Ipanema,” she had marketed herself that way, and this song, even decades later is her “signature performance.” (admit it, it’s stuck in your head right now).
Gilberto complained that since she was so closely identified with the song, The Girl From Ipanema, that its use in the potato chip commercial would imply that she herself endorsed the snack. The 2d Circuit agreed with her that the song was her signature performance, and that this was a common phenomenon for many performers. The 2d Circuit also agreed that a song might, in itself, serve as a trademark. Nevertheless, the 2d Circuit rejected the notion that a “signature performance” by a musician should be judicially recognized as a creature that creates trademark rights that inure to the benefit of the performer. (The court did agree that Congress might have the power to legislatively grant such rights, but doing so would be an improper judicial exercise).
Performers may be able to assert claims against “sound alikes,” as in Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) and Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (intentionally imitating Bette Midler violated her rights) or in look-alike caricatures as in White v. Samsung, 971 F.2d 1395 (9th Cir. 1992) (A robot Vanna White violated the real Vanna’s right of publicity). Nevertheless, performers may not, under current law, assert trademark rights in a song – no matter how closely intertwined that song may be with their persona. See also EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir. 2000) (a song may not serve as a trademark for itself, lest trademark law subsume the rights protected by copyright).
Accordingly, with respect to the bastardization of Marley’s music into ring tone dittys, unless there are significant unreported facts, the Marley estate seems to have virtually no chance of success.
Trademark Rights in Marley’s Name and Likeness
It appears that the Marley estate is not only troubled by the use of Marley’s music, but the use of his image and name. A person’s likeness and name can function as a trademark. See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (Tom Waits sound alike); Abdul-Jabbar v. General Motors Corp., 75 F.3d 1391 (9th Cir. 1996) (use of Lew Alcindor name in a car ad).
It seems that the Marley estate will lose again, if they seek redress under trademark law. As a general principle, the name of an author does not function as a trademark unless it serves some function other than as the designation of the creator of a particular work. The USPTO Examination Guide instructs examining attorneys to refuse registration of a name of a performing artist “if the mark is used solely to identify the…artist.” (source. Court cases have held the same. See, e.g., In re Polar Music Inter’l AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); In re First Draft, Inc. 76 USPQ2d 1183 (TTAB 2005) (“[A]s a general rule, an author’s name is not registrable for a single work but may be registrable for a series of … works, when ther is sufficient other indicia that the name serves more than as a designation of the writer, that is, that it also functions as a mark.”).
The BOB MARLEY® trademarks
My uninitiated trademark wonks out there might call my attention to the fact that BOB MARLEY® is a registered trademark. (Reg. No. 2349361). However, an examination of the mark demonstrates a conspicuous absence of any reference to musical compositions. All the goods and services protected under these marks are as follows:
incense, novelty license plate, jewelry, watches, medallions, greeting cards, stickers, stationery type portfolios, posters, postcards, postcard books, songbooks, decals, trading cards, calendars, novels, bookmarks, backpacks, fanny packs, wallets, tote bags, mugs, textile wall hangings, T-shirts, thermal shirts, jackets, hats, caps, sweatshirts, ties, bandannas, ornamental cloth patches, plastic cases for beepers, magnets, and (naturally) smoking pipes.
On the other hand, BOB MARLEY AND THE WAILERS® is also a registered mark, which does cover a “series of sound and video recordings featuring music and downloadable sound and video recordings featuring music.” See Reg. No. 2820741. (However, note that in an office action dated June 10, 2003, the examining attorney initially rejected the mark, holding inter alia:
The examining attorney refuses registration because the proposed mark does not function as a trademark, but merely identifies the featured performer or performers. The examining attorney will reconsider this refusal if the applicant submits evidence that the mark has been used on at least two recordings. Please note that the fact that the CD submitted as a specimen is a “reissue” is not sufficient to demonstrate that the mark is used on more than one recording. See Office Action on Ser. No. 76441329 (10 Jan. 2003)
Once the applicant adjusted the application and submitted evidence that “BOB MARLEY AND THE WAILERS” had been used on more than one recording, the Examiner dropped this objection. (Just as a side note, just how brain dead does a person need to be in the year 2003 to either not know that this band released more than one album, or to be unable to take notice of this fact on their own. Examiners seem to have zero difficulty doing their own research to find an obscure reference to reject obscure acronyms, but “Bob Marley and the Wailers” didn’t ring a bell with this Examiner??? – This certainly lends credence to my earlier post: “Top Ten Reasons that that the USPTO no longer takes note of the facts when issuing Office Actions.”)
Given this, why can’t the Marley estate (if they control the relevant trademarks, which I must presume they do) use this mark to stop Verizon from using the Marley name – even if they can’t stop Verizon from using the Marley music? Because as I have written, again and again, trademarks are not “word patents.” Consider this quote from none other than Judge Posner.
The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of particular goods. The consumer who knows at a glance whose brand he is being asked to buy knows whom to hold responsible if the brand disappoints and whose product to buy in the future if the brand pleases. Ty Inc. v. Perryman, 306 F.3d 509, 510 (7th Cir. 2002).
That case presented different facts, but fundamentally the same principle. In Ty Inc. v. Perryman, a woman sold Beanie Babies online, and the manufacturer of the once-popular stuffed animals sued for trademark infringement. Logically, the court held that as a reseller she had the right to use the name. To add to the weight of the defendant’s case, the 7th Circuit held that Ty’s actions in creating an aftermarket for its products gave her an even greater right to truthfully use “Beanie” to truthfully describe the source or origin of the goods she re-sold.
Similarly, it would make very little logical sense if Universal owned the rights to the musical works, and Verizon received permission to use them, yet one or the other could be prohibited from identifying the works as originating from the world-famous musician. This is very different from the Jimi Hendrix case, in which the Hendrix estate has gone to court against a vodka maker for the unauthorized use of Hendrix’s likeness to sell their liquor. See Jimi Hendrix case Vodka Leaves Sour Taste for Jimi Hendrix Family.
Ring tones were not even in existence when Marley died in 1981. Accordingly, it is understandable that the heirs to the estate might be horrified to hear Marley’s classics emanating from the tinny speakers on thousands of cell phones. Nevertheless, I find it hard to imagine that the record company’s contract did not contemplate future uses and an expansive transfer of rights to the works. Unless there is a bizarre inclusion or foolish omission from the contract transferring the rights over to the record label (provided it wasn’t a work for hire in the first place), all the Marley estate has here is their moral outrage – which I certainly share.
As with all things legal, the entire story takes far more space than can be effectively blogged. There might be a royalty amount issue percolating here. Keep an eye on this class action suit over digital downloads.
As previously blogged here, this is not the only high-profile case involving the Wailers.
The trademark infringement suit between the Wailers (a 1960s Seattle band) and the Wailers (the one you are thinking of) appears to be heating up. The Reggae band has filed its answer and counterclaim, seeking cancellation of the 1960s Seattle band’s registration. I’m friends with the attorneys on both sides, but if I’m playing neutral bookmaker on that case, I’m giving the Reggae band 100-1 odds that they prevail.