PTC FORUM: Digests of Articles

USA / TRADE MARKS / SONG TITLES

Protection of Song Titles under the Lanham Act

Entertainment and Sports Lawyer, Vol 19 Nos 2-3, 2001

Allen B Grodsky and Eric M George

An unusual point of law is discussed in this article: namely, the extent to which song titles are protected under United States Federal trademark law. The authors, who had represented composers of the song, Killing me Softly with his Song, in a lawsuit regarding the motion picture entitled, Killing me Softly, point out that "works of artistic expression - including titles to musical compositions - obtain trade mark protection with 'proof of secondary meaning and consumer recognition'". They quote Professor J T McCarthy both to the effect that title alone of the literary work cannot be protected by Copyright Law and that "the test of secondary meaning is whether, in the minds of a significant number of people, the title in question is associated with a single source of the literary work"; in other words, whether the song is sufficiently well known for people who hear the title to think of the song itself. Much depends on the evidence: a Second Circuit Court was persuaded that Benny Goodman's Sing, sing, sing with a swing, had secondary meaning; but a District Court held that secondary meaning was not established by the mere fact that the Beatles' "Anthology" recording sold 8 million copies. However, if secondary meaning is established, it still has to be determined that the other party's use of the title creates a likelihood of confusion among members of the public. The reasons for the determination must, in view of First Amendment concerns (freedom of speech), be "particularly compelling". The authors refer to the seven different factors, identified by the Ninth Circuit Court as relevant to a determination on the likelihood of confusion, and apply the factors to song title infringement cases. They examine the proximity of the goods (for example, whether songs and motion pictures are sufficiently close to amount to proximity); the similarity of the marks, with particular reference to sound and meaning; the strength of the mark; the possible convergence of marketing channels; the type of goods and corresponding consumer care; the junior user's intent; the evidence of actual confusion; and the likelihood of commercial expansion. The question of appropriate remedies then arises. The authors, who wittily refer to a number of well-known songs throughout their article, conclude that "composers of famous songs must vigilantly protect their rights or will see them slowly Fadeaway" (a reference to the song from Ricky Nelson: Best of 1963-75). [20064]