Trademark Law and Copyright Law - Their Use by Celebrities

Recently Publicized Trademark and Copyright Actions by Attorneys for Celebrities

Individuals and small businesses have recently been surprised to receive cease and desist letters from entertainers like Taylor Swift and Katy Perry for everything from Taylor Swift song lyrics on a coffee cup to a 3D print of the left shark in Katy Perry’s Super Bowl performance. So what’s up with that?

It’s been said that entertainers are now blurring the lines between copyright, trademark and patent law simply to make more money or to prevent others from making money off of them. However, there actually is precedent for making claims that a musician’s lyrics are protected under trademark law and that other images created by a performer and likewise associated with that entertainer are protected under copyright law.

Trademark Law

The cease and desist letter sent by Taylor Swift’s attorneys to prevent her lyrics from being printed on coffee cups sold to the public is an example of how entertainers today are seeking to protect their work from being infringed by others under trademark law.

It would be difficult today for any lyricist or musician to claim that they discovered, invented or created the grouping of any few words in a song title or the song’s lyrics for the very first time and that no one ever before them had come along to do so. Although at some point, someone must have said each phrase in any language for the very first time, it’s doubtful they ever became so well known for having used the phrase that others would immediately associate the phrase with that person.

Today, while the lyrics of a songwriter would be a valid work that could be copyrighted so as to entitle the musician to bring suit for copyright infringement against anyone using them in a copyrightable work themselves, with the exception of the fair use doctrine (which is an entire subject on its own) for slight uses, the average person on the street would not expect that the lyrics could be trademarked so as to prevent the use of even a one-line lyric on a coffee cup. But they can. They can be trademarked as well as copyrighted. So what is going on here?

The theory behind an assertion that lyrics or a slogan, or a phrase can be trademarked is that the lyrics have become so distinctly associated with the entertainer themself or their song in the case of lyrics, that they have acquired secondary meaning, thus allowing the performer the right to protect the phrase in any type of commerce, such as on coffee cups or other goods.

Is it really worth it to trademark a phrase that you’re associated with? Consider the trademarked phrase, “Let’s Get Ready to Rumble.” It’s been reported that this one simple phrase has generated $400 million to it’s owner, Michael Buffer.

Is such a legal assertion going to hold water for the local street performer or even an emerging artist on a singing competition on television. In nearly every instance, the answer would be no. But for someone of Taylor Swift’s stature, or Katy Perry’s or the Beatles? Yes.

But why should it be necessary for such artists who are most assuredly making more money than we can imagine need to prevent a small entrepreneur from making a small amount of money from coffee cups with a songwriter’s lyrics on them? Because trademark law in the U.S. requires them to do just that if they want to protect their works.

Trademark law require a quick response from the owner of a work in which they assert ownership to prevent the unauthorized use of their work. This is normally achieved by use of a “cease and desist” letter to the alleged infringer of their work. It’s not a lawsuit, but it’s a none-too-polite way of warning the alleged infringer that if they don’t stop using the person’s work in commerce, a lawsuit will follow, which can be far more expensive to defend in most cases, with the risk of a judgement for damages, than stopping what it is they’re doing that has brought the ire of the work’s owner, in this case the lyricist or performer.

The typical cease and desist letter, whether it’s used to stop an alleged trademark infringement or an alleged copyright infringement, warns the alleged infringer that their continued use or sale of the alleged infringing products may subject them to a judgement for actual damages, statutory damages, and punitive damages as well as immediate and permanent injunctive relief if they are found to have infringed the owner’s copyright or trademark. What such a letter also fails to mention, is that the attorney fees and costs in defending such a lawsuit may be so expensive as to even force them into bankruptcy.

Even if the claim that’s made by the attorneys for the artist in a cease and desist letter is bogus, specious at best, in most cases it simply isn’t worth it for the individual or a small business to wage the fight against a deep-pocketed performer just to win a small victory that obtains only the right to sell an item rather than the damages the performer could win for the infringement of their work.

Copyright Law

The cease and desist letter sent by Katy Perry’s lawyers to the owner of an online store selling 3D printed replicas of the left shark in Katy Perry’s Super Bowl performance was based on an assertion by her lawyers that the sale of 3D print of the shark costume were infringing Katy Perry’s rights under U.S. copyright law.

Perhaps to the surprise of Katy Perry’s lawyers, in this case, they received a response from an NYU law professor representing the owner of the online store.

The law professor tweeted that he felt the left shark was not copyrightable because it qualified as a “useful article” which is not protected the same way as an artistic work. The law professor also sent a letter in response to Katy Perry’s lawyers, questioning whether the singer’s lawyers had over-asserted the strength of their client’s rights.

In his letter, the professor wondered what Katy Perry could possibly have to gain from their declared war on the left shark internet meme. He asked why the lawyers for Katy Perry could feel that the costume of a shark is copyrightable in view of the fact, he stated, that the U.S. Copyright Office has made it clear that costumes are not. It should be noted however, that another law professor has also weighed in on the subject stating that an animal costume can be copyrighted, so long as it is not generic.

Regardless, the law professor representing the online store owner made it clear that his client just wanted to go back to his business and would be grateful if Katy Perry’s lawyers would just back off. As the law professor said, going ahead with a dubious copyright claim would not benefit Katy Perry. He also questioned whether the NFL rather than Katy Perry had ownership of any copyright interest in the costume.

But indeed, if Katy Perry did design the costume or had a designer transfer their copyright interest to her, and if she felt she might use it in future shows and possibly even sell replicas herself at concerts, even if the NFL had control over the content of the Super Bowl halftime show, this is what copyright law also requires of anyone owning a copyright - a quick assertion of their rights upon learning of any infringement of them.

To a performer in today’s spotlight across all mediums of the universe which can be very bright indeed, the performer’s intellectual property is their most valuable asset. In 1985, Michael Jackson bought the publishing rights to most of the Beatles songs for a mere $47.5 million. Today this amount looks ridiculously small, and in fact it was even then. The purchase of the Beatles catalogue meant that Jackson was free to license any song previously owned by the former music publishing arm of The Beatles to any brand he chose.

Jackson was later able to sell his rights to Sony for $95 million and still acquire half ownership in Sony/ATV Publishing as well, a company which today is worth billions. (ATV had previously purchased the Beatles catalogue from Northern Songs, the Beatles publishing arm.) Due to a notoriously terrible contract John Lennon and Paul McCartney signed at the start of their career, Northern Songs owned the publishing rights to over 250 Beatles songs, including all of their hits at height of Beatlemania.

The online store owner attempting to sell Katy Perry’s shark costume perhaps summed up the perspective of the small entrepreneur who receives cease and desist letters today with a few choice words. He said it appeared to be easier to deal with world leaders like Kim Jong Un or Chris Christie and that he would go back to making pieces about them and other world leaders (although we’re not sure Chris Christie would qualify as such). His final thought on the subject was more astute - “All this lawyer crap is very stressful.”

Dealing with lawyers preventing a small business person from making a little money can indeed be very stressful. But this is what trademark and copyright law requires of the attorney who has been tasked with protecting every possible intellectual property asset of their client. The lawyer may not like putting the strong arm on a business person just trying to make a living, but for the business person who now has to give up a line of products he or she may have invested some money in producing, and who may have done so without thinking of the consequences when they should have known better, there is considerably more stress felt upon receipt of a lawyer’s cease and desist letter.

While the seller of the coffee cups with Taylor Swift lyrics printed on them and the maker of the 3D prints of the left shark in Katy Perry’s Super Bowl performance may not have anticipated they were infringing anyone’s copyright or trademark interest, neither should Taylor Swift nor Katy Perry be criticized when trademark law and copyright law requires them to have their lawyers do exactly what they did, namely to aggressively protect their clients’ intellectual property rights.

Is it necessary for a lyricist or songwriter to prevent their lyrics from being sold on any type of item? Under trademark law as it exists today, probably so, if the lyrics are so distinctly associated with the songwriter and performer that they have acquired secondary meaning under the law.

Is it necessary for a performer to prevent others from selling the same costume they create or have someone else create for them to use in a performance? Under copyright law, probably so as well, if the artist wants to retain the exclusive right to use the costume in future performances thus acquiring an even stronger acquired secondary meaning that will allow that artist to copyright the costume and later sell it themselves as a Halloween costume.

If Jimmy Buffet had a Parrothead costume, which for all we know he may have, and he used it in his performances, no one would question his right to have it copyrighted. The name, Parrothead, is already trademarked by Jimmy Buffet and his company, Margaritaville Enterprises, for various products.

Today, however, the brand of a performing artist, sports figure or model is so much bigger than just their music, their achievements on the field or their photos, it’s everything else that allows them to market themselves across all the different platforms available to them today. And that is why too a celebrity must also be careful not to appear to be petty at the expense of the little person.

Unfortunately for the celebrity, in today’s world when their every action and those of their attorneys are publicized, even when they do exactly what is required of them by trademark and copyright law, their actions can appear to be unjustified.

While it may be important to protect one’s intellectual property, because of he importance of their brand’s image, a celebrity would not be wise to sic their lawyers on an autistic little girl’s lemonade stand selling hand drawings of their celebrity client to help pay for her mother’s cancer treatment. And let’s be clear, we know of no such instance having occurred to date and we doubt any celebrity would ever knowingly have their attorneys take such an action.

We should also make it clear that copyright and trademark laws are essential and are crucial to protecting the rights of the creative artist who develops a screenplay or produces a film, writes music or a book or creates a line of clothing or jewelry or anything else due to their talent as artists and creative people against those who would sell pirated copies of their films, produce knock offs of women’s handbags or designs of clothing, or of an artist’s paintings. Our firm, just like any other firm who practices copyright and trademark law will proceed against such a copyright or trademark infringer without a second thought.

But there must obviously be some balance between protecting one’s intellectual property while allowing the little person to sell a product that has only a tangential relationship with a celebrity. What is thus needed is a change in the law that allows both parties to coexist peaceably and which does not, by their coexistence, cause the celebrity to forfeit their intellectual property rights if they choose to allow the little girl at her lemonade stand to sell her drawings without receiving a letter from an attorney.

Perhaps when the copyright and trademark laws are rewritten, that balance and peace between the celebrity and the little guy or girl will be restored while still allowing the creative artist’s lawyers to proceed with all the resources at their disposal against pirates who would seek to profit in large scale off the back of the creative artist.

The Law Offices of Sebastian Gibson can be contacted at (760) 776-1810 or toll free at (855) WHAT NOW. With offices in Orange County’s Newport Beach and Palm Desert in Palm Springs and the Coachella Valley, the Sebastian Gibson law firm is the firm to come to for the protection of intellectual property, copyrights and trademarks, and all things creative from design to music, modeling, film, book and comic book publishing, video game and app development, fashion and jewelry design, and the food and wine, hotel and restaurant, nightclub and event industry in California.

ABOUT THE AUTHOR: Law Offices of R. Sebastian Gibson
Attorney Sebastian Gibson has over 35 years experience representing entertainment clients. His clients have included celebrities, writers, artists in music, film and television, and models from around the world. With law degrees and experience in California and Great Britain and experience obtaining a sizeable copyright and trademark infringement settlement in a case involving a nationally known figure, Sebastian Gibson is uniquely talented to represent celebrities, models and individuals whose intellectual property rights, publicity rights or privacy rights have been violated or infringed. With offices in Orange County and the Palm Springs and Palm Desert area home to writers, the Coachella Music Festival, Palm Springs International Film Festival and Indian Wells BNP Paribas Tennis Open, Sebastian Gibson is the attorney for all things entertainment and creative.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.