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Tuesday, 17 February 2015

Random thoughts on Ms Swift's "sick" trade marks

Taylor Swift and her recent US trade mark applications have made headlines and even inspired those who usually do not care about IP and/or trade marks to comment about them.  Indeed, this Kat has been asked about her thoughts on Ms Swift’s trade marks quite a lot by non trade marky friends, also comparing it to the Rihanna t-shirt case.

In kitten heels, no less...
By way of background:  Ms Swift, a pretty and successful US songstress, recently filed a number of trade mark applications at the US Patent and Trade Mark Office for word marks.  The marks are lines or quotes of lyrics from songs or song titles of her most recent album 1989. Ms Swift’s applications include applications for the phrase “THIS SICK BEAT”, “PARTY LIKE IT’S 1989”, “CAUSE WE NEVER GO OUT OF STYLE”, “NICE TO MEET YOU. WHERE YOU BEEN?, “COULD SHOW YOU INCREDIBLE THINGS”, all used in her various musical offering, including her hit song 'Shake it off'.

Legal commentators got equally excited and discussed the pros and cons of Ms Swift’s filing strategy in much detail, notably on various LinkedIn groups.  Why did she file separate single class applications covering unusually broad specifications (by US standards) for each class, when the US allows for covering them in one application? Maybe to make licensing easier? To use the applications as bases of an International trade mark or for national priority applications and to make it administratively easier to pick and choose which ones to designate in which territory, notably for countries where copyright protection for song titles and short citations would be tricky to obtain? Indeed, to allow the marks to move to full registration more quicly in case of a citation of an earlier mark by the USPTO examiner in just one class. To enable swift (ha..!) enforcement, since we all know about the perils of having to rely on unregistered rights in their various guises.  … etc. etc.  The list of questions and potential answers is long but the filing strategy appears more or less straightforward.
Of course, filing these marks is about money, protecting her rights, her brand and IP from unauthorised exploitation (i.e. by way of merchandise) by third parties; the latter also applies to Rihanna. And let’s not forget the counterfeiting aspect.

"Money, money, money.... " -
did ABBA ever trade mark their song title?
Intriguingly, however, Ms Swift’s applications seem to have triggered a wider debate and there is indeed another aspect to this discussion, the “freedom of speech” angle.  The criticism can be distilled by what US writer, musician, moral commentator Ben Norton has written on his website. He calls Ms Swift's trade mark applications an example of the "ridiculous ability of the rich to legally own words".  Ms Swift’s applications even inspired him to write a protest song. He blogs: 
This Sick Beat™, [is] a satirical parody song I released on 31 January 2015, in protest of Taylor Swift’s application to trademark several common phrases, has generated much controversy.”  
Looking at his website Mr Norton's intention seems to be to provoke and make people think.  In essence, he argues that Ms Swift’s trade marks are "a direct attack on one of the most fundamental and inalienable rights of all: our freedom of speech".  

Freedom of speech is one of the most important rights in a democracy but it should it not also be counterbalanced against other human rights, such as in these example Ms Swift’s intellectual property rights, basic rights in her own intellectual creation, i.e. her “property”?  This includes her freedom of speech and right to express herself in an artistic way and protect this expression against third party exploitation without her consent.  Her trade mark registrations, if and when granted, will not prevent all use of the expressions used as marks, but use as a trade mark , i.e. they will empower her to enforce her rights for the goods and services covered with her trade marks.  As such, she won’t own the words - and I suspect Mr Norton is fully aware of this. Perhaps what really irks him is that some of the marks are “common phrases”, as he puts it.  He should, however, put some trust into the USPTO examiners and their examination process.  Having said that, from a trade mark practitioner’s perspective, it is to be welcomed that trade marks are in the news and that people talk about them. 

Nonetheless, it is not unusual that celebrities file for trade mark protection to protect their IP. So why is this such an issue in Ms Swift’s case and –- to a lesser extent -– in the case of Rihanna’s passing off court case? Could it be that this is because these are two young, pretty and successful women that have the audacity to also have some business sense?  Like colleague of mine said wisely, if it was Kanye West who is known for his business acumen, people wouldn’t comment much, if at all.

So, Merpel wonders, is there a feminist angle to the debate: do people feel entitled to complain because they are women (in kitten heels) ...?


James Wagner said...

I suspect the controversy is that at one time someone singing a song was compensated by those listening to the song. They then got a right to those who wanted to copy the song.

This is an attempt to get money from anyone who wants to draw any association with the song, on such things as "Home décor; Furniture; Containers; Pillows; Cushions; Frames; Mirrors; Ornaments; Wind chimes" "Beverageware; Glassware; Dinnerware; Disposable dinnerware; Tableware; Cookware; Kitchenware; Household utensils; Containers…" "Toys; Bean bags; Ornaments; Christmas stockings; Christmas tree decorations; Christmas tree ornaments; Christmas tree accessories…"
etc. etc. etc...

I think its a legitimate question whether a line of a song should grant any rights on how others can mark their wind chimes and Christmas tree ornaments, no matter how popular that song.

Further, the greater the scope of rights provided, the greater the chance of overreach (see Katy Perry's left shark 'copyright' claim for a recent example. In many of these cases you'll have a large company with little or no legal rights 'policing' the mark against a third party who simply cant afford to fight for the right to continue to do what they are legally entitled to do.

Anonymous said...

Has Ms. Swift's "own intellectual creation" really got anything to do with trade marks? Has her right to "express herself in an artistic way and protect this expression against third party exploitation" really got anything to do with trade marks? Those both sound like defences of Ms. Swift's copyright.

Anonymous said...

Presumably under US law Ms Swift will have to demonstrate actual use of the trade marks on all these goods and services before they can be registered.

I might ask for a set of THIS SICK BEAT kitchen utensils. Or maybe some COULD SHOW YOU INCREDIBLE THINGS hosiery...

Anonymous said...

My tactics sure grate
Got nothing in my brain
That's what people say, mmm-mmm
That's what people say, mmm-mmm

I go for too many marks
To keep people at bay
At least that's what people say, mmm-mmm
That's what people say, mmm-mmm

But I keep bruising
Can stop, will stop losing
It's like I got this music
In my mind
Saying, "It's gonna be alright."

'Cause the players gonna play, play, play, play, play
And the haters gonna hate, hate, hate, hate, hate
Baby, I'm just gonna rip, rip, rip, rip, rip
I rip ’em off, I rip ‘em off
Infringers gonna break, break, break, break, break
And the fakers gonna fake, fake, fake, fake, fake
Baby, I'm just gonna shake, shake, shake, shake, shake
I shake them off, I shake them off

I never miss a beat
I'm lightning on my feet
And that's what they don't see, mmm-mmm
That's what they don't see, mmm-mmm

I'm dancing on my own (dancing on my own)
I make lots and lots of dough (lots and lots of dough)
And that's what they don't know, mmm-mmm
That's what they don't know, mmm-mmm

But I keep bruising
Can stop, will stop losing
It's like I got this music
In my mind
Saying, "It's gonna be alright."

Anonymous said...

The mark on its own is not an item "protected"

Perhaps those fearing "ownership of words" has a beef with the trademark system in general, because their position here (singled out for one woman) applies universally to every single word mark in the system.

James Wagner said...

Anon at 19:55, I would say there's a difference between a company who has been using their mark on their product for years applying to register their mark for those goods or services, which may actually serve a consumer protection function, and someone who having had a hit song applies to register every potentially memorable phrase in the song for 100+ goods in the hope that someone else will commercialize a product employing one of the phrases and they can engage in some rent seeking.

Anonymous said...


The phrase "engage in some rent seeking" is just too pejorative to me to want to fish out the point that you are trying to make. In fact, it reinforce my point, as EVERYONE engaging in the trademark system is in fact "engaging in rent seeking."

Maybe you can express your view without the emotionally charged language?

James Wagner said...

Anon, my view is that you are wrong. Not everyone using the trademark system is rent seeking, but some are.

Some are seeking to protect their brand from being infringed by third parties. Some are trying to develop a new brand and giving public notice of their intention to do so. In both of these cases the trademark system is being used to promote efficiencies, as it helps prevent confusion in the market and serves a notice function as to the use or pending use of a mark in the marketplace. Whether there is a total increase in efficiency/wealth generation is I suppose debatable, but I think generally most would agree that the registration system is a net benefit.

There is also those who file applications not based on having used the mark, or even intending to use the mark, but based on a hope that a third party will want to use the mark. When that third party does they will then use their speculative application to force a license, and then use the existence of those licenses to justify the validity of the original mark based on proposed use. This is gaming the system without creating any value, seeking.

Anonymous said...

Isnt there a problem with the inherent distinctiveness of all of these what are effectively slogan marks or am I missing something?

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