Can Taylor Swift Really Trademark Her Song Lyrics?
Applications were filed for the marks:
- This Sick Beat
- Party Like It's 1989
- Cause We Never Go Out of Style
- Could Show You Incredible Things
- Nice to Meet You, Where You Been?
If the applications are granted by the US Patent and Trademark Office, Swift will be able to prevent the unauthorized use of these phrases on commercial products and services.
Swift herself was previously sued for trademark infringement by the California company that owns the trademark “Lucky 13.” Swift and American Greetings use the same slogan on greeting cards and in a sweepstakes.
Trademark applications must indicate a category of goods and services. These categories are called “classes” and an applicant can select up to 45 of them. Each class requires an additional fee.
Swift’s proposed marks include categories related to music, such as:
- musical instruments
- guitar picks
- guitar straps
- wind chimes
- entertainment services
- ring tones
However, the application also includes many categories that have no direct relationship to music, such as:
- removable tattoo transfers
- household utensils
Some of the categories cover products which reached their market peaks in previous centuries, such as:
- walking sticks
- whips, harness and saddlery
This may be the first time that a musical artist has sought trademark protection for lyrics. However, other celebrities have also sought to protect their signature catchphrases.
- Michael Buffer, a wrestling commentator, trademarked the phrase “let’s get ready to rumble” and reportedly earned $400 million from licensing it.
- Paris Hilton trademarked “that’s hot” and finally settled with Hallmark 2010 after a three-year dispute over a greeting card that featured those two words and her picture.
However, not all attempts to seek trademarks for catchphrases have been successful:
- Donald Trump failed to acquire a trademark for “you’re fired,” on the basis that it was too similar to the already-trademarked name for an educational board game called “you’re hired.”
Even cases based on unregistered trademarks have been successful. In January, Rihanna succeeded in preventing Topshop from selling sleeveless tops with her image in the UK. The photo was taken by an independent photographer, who owned the copyright in the image and licensed it to Topshop.
Rihanna’s case was decided under the doctrine of ”passing off.” As the British court said,
In substance Rihanna alleged that she had suffered damage to the goodwill in her business as a result of the misrepresentation, implied in all the circumstances, that she had endorsed the T-shirt.
In the US, the rights of privacy and publicity protect celebrities (and others) from the unauthorized use of their names and images in connection with products and services.
“Don a Henley”
As I recently discussed in this blog, a California federal judge refused to dismiss a trademark infringement lawsuit brought by Don Henley of the Eagles arising out of the slogan “Don a Henley, take it easy,” used to sell Henley-style shirts.
If you have questions about the uses of phrases or images in advertising, you may wish to consult a trademark or advertising lawyer.