A New Category is Born!
My reaction upon reading this article about the Red Hot Chili Peppers' suit against Showtime for its use of "Californication" as the name of its series starring David Duchovny was yet another "Oy vey, making trademark lawyers look bad." Because I had this feeling so recently, I figured it was time to memorialize this recurring stomach cringe with a category.
Do the Chili Peppers not realize that every day that series airs, every time it's mentioned on TV, in print, or online, that earworm of a song embeds itself in your brain? The odds are good that the relentless repetition of the series title has generated more than one purchase of either the Californication CD or another Chili Peppers release? I know that impulse occurs for me, even though I don't have Showtime (and can you guess what song will not leave my head as I compose this?) I cannot honestly think of any damages the Chili Peppers could have sustained, and I hardly think the success (or lack thereof, I don't know) of the series can be viewed as attributable to the CD title — initial interest confusion doesn't seem likely: "we thought the show was related to the Chili Peppers CD but stayed to watch even though it wasn't"? That just doesn't wash for me.
More stupidity from across the pond shortly.
Do the Chili Peppers not realize that every day that series airs, every time it's mentioned on TV, in print, or online, that earworm of a song embeds itself in your brain? The odds are good that the relentless repetition of the series title has generated more than one purchase of either the Californication CD or another Chili Peppers release? I know that impulse occurs for me, even though I don't have Showtime (and can you guess what song will not leave my head as I compose this?) I cannot honestly think of any damages the Chili Peppers could have sustained, and I hardly think the success (or lack thereof, I don't know) of the series can be viewed as attributable to the CD title — initial interest confusion doesn't seem likely: "we thought the show was related to the Chili Peppers CD but stayed to watch even though it wasn't"? That just doesn't wash for me.
More stupidity from across the pond shortly.
All agreed ... but the idea that the TV show's use of that phrase has helped rather than harmed the market for the RHCPs' original work is copyright fair use analysis, not trademark analysis. I think it still comes down to the plain fact that the title of a single work does not function as a trademark. The only troubling comeback to that is that CALIFORNICATION is the title of both the song and the album it appears on. Does that make it serve as a trademark for the RHCPs? I don't think so, but it may be a point upon which reasonable minds could differ. Certainly the word makes you think of the RHCPs and their song, and that sounds like secondary meaning--but you can't have secondary meaning if you don't have a trademark in the first place. "The Girl from Ipanema" makes you think of Astrud Gilberto (and hear her performance of the song in your head); but that doesn't mean she has trademark rights in it--courts have already held that she doesn't. But I'm thinking more and more that there are no quick answers to the issue the RHCPs have raised, so for now, the case is still one worth watching. If it goes the distance, I'd expect the same outcome as in Gilberto.
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You're absolutely right that there's simply no trademark right in the title of the single work, and that's truly the core of the defense here with the law as it stands now. I can't see this going any route other than towards Ipanema.
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Looks like it was abandoned after publication (according to USPTO). I guess I'll have to rethink the series idea I had for ShowTime called "Under the Bridge".
I pretty much agree with your view about this issue.
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You know, there was a show called One Tree Hill and I didn't hear U2 complaining . . .
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Though RHCP may not have filed for TM of Californication, it's still an asset that (up to know) uniquely identified a source of certain goods and services (i.e. music or entertainment). When Showtime started using Californication, it could cause confusion should RCHP decide to release a sequel album. At that point, people might start to wonder, to what does Californication refer: an RCHP album or a series (soundtrack?) from Showtime?
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A sequel album? You mean like Heroes 2? The Joshua Tree 2? Sticky Fingers 2? Frampton Comes Alive 2? Dark Side of the Moon 2? Hotel California 2? Rumors 2? Nevermind 2? I'm not holding my breath. The only artist I can remember with a theme for album naming was Greg Kihn, who had titles like "Kihnspiracy," "Citizen Kihn," and "Kihntagious." I'm reasonably certain that shtick has has him residing for all eternity in the Where are they now file. It's a Catch-22: If RHCP had to rely on its previous titles' acclaim to sell new releases, those new releases by definition would have to be worthless. If the music is good, and the band's reputation good, it doesn't matter what the album title is. The fact is, bands have a trademark already -- their names. The time, energy and resources spent worrying about their album titles' being knocked off could be far better put to use making good music.
I mean come on: Every time I hear one of my daughters talking about the toy line called Littlest Pet Shop, my mind immediately completes the phrase to call it "Littlest Pet Shop Boys" and I think "Hey, I haven't listened to Pet Shop Boys in ages. Have they put anything out recently?" This can only be good for the Pet Shop Boys, and I think the same goes for RHCP.
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The point is not whether it's wise to release a sequel album based on the name Californication -- your fictional examples illustrate the unlikeliness -- it's that the RHCP now face likelihood of confusion should they decide to do that. Californication isn't just a song, it's the title track. And like Another Brick in the Wall Part 2, it might end up being bigger than its predecessor.
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Well, a judge is not likely going to allow RHCP to recover, whether damages or injunction, for that speculative a harm. Did the use of "Jumpin' Jack Flash" as a movie title harm the Rolling Stones? What about the "Ruby Tuesday" restaurant chain? The Lady Madonna maternity boutique? The Strawberry Fields natural food store? What about the movie called "Material Girls"? This kind of evidence demonstrates that the public is capable of distinguishing between a term that's a song title and another work bearing the same name. Put differently, I think RHCP would have a very difficult time explaining how its song title is different from all other song titles.
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