In Defense Of Taylor Swift - Fordham Intellectual Property, Media & Entertainment Law Journal
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In Defense Of Taylor Swift

In Defense Of Taylor Swift

In the wake of news that Taylor Swift filed trademark applications to register a number of song lyrics from her latest album, 1989, journalists, musicians, and political activists have taken to the Internet to express their outrage.  Some simply reported the news as shocking, while others derided the pop star for violating the First Amendment and unfairly taking advantage of U.S. copyright law.  However, a trademark application does not violate the First Amendment and copyright law does not govern Swift’s trademark applications, trademark law does.  A quick Google search for news of Swift’s filings shows more than 20 articles that confuse copyrights with trademarks and but one that attempts to clarify the concepts.  Even the New Yorker revealed its misunderstanding.

The overwhelmingly negative response to Swift’s trademark applications is alarming not only because it reflects a widespread misunderstanding of what trademark law even is or why it has been recognized as a bona fide form of intellectual property.  The greater danger is that the spread of misinformation in the name of “social justice” will only discourage musicians, writers, and all other artists from adequately protecting their work.

For the sake of encouraging artists to protect their creations, this defense of Swift’s recent filings attempts to remind the artistic community that protecting one’s intellectual property is a good idea.  First it will clarify the difference between copyright law and trademark law and second, it will confront the arguments against Swift individually by explaining that filing a trademark application does not earn you a seat in hell, as some would suggest.

Welcome to New York

In order to understand the flaws in the arguments against Swift’s trademark enterprise, let’s go back to the basics and think about the goals of trademark law.

By way of contrast, federal copyright law prevents freeloaders from stealing creative works and claiming them as their own. Federal trademark law, on the other hand, does not protect creative works; rather, it protects brands or anything that functions as an indication of the source of commercial products by preventing infringers from passing off their own inauthentic goods or services as those of another. To be precise, Congress enacted the Lanham Act not in order to protect works in the way that copyright law does, but to protect two classes of individuals: 1) the producers of commercial goods and services who have invested serious amounts of money into branding their products; and 2) the consumers who purchase those products. Let’s take Swift’s most recent filings as an example to elucidate the difference in protection.

The three marks that are causing the biggest uproar are NICE TO MEET YOU WHERE YOU BEEN, COULD SHOW YOU INCREDIBLE THINGS, and THIS SICK BEAT. Most of her applications are filed in Class 16 (for paper products, such as stationery), Class 25 (for clothing, such as T-shirts), and Class 41 (for entertainment services, such as live performances).  The fact that she filed “intent-to-use” applications means that she is not yet using these marks on stationery, T-shirts, or at live performances, but that she has plans to do so. Before her marks will register she will need to make use in U.S. commerce (and she has already made some use thus far: http://store.taylorswift.com/SICK-BEAT-LONG-SLEEVE.html).

In filing these applications, Swift is not trying to stop another artist from using the same lyrics in one of their songs (and if she was, I would be taking a very different position in this article).  Instead, these applications suggest that she is only planning on selling merchandise with her song lyrics on it.  Registering her lyrics with the U.S. Patent and Trademark Office serves several important functions that benefit her and consumers like you and me everywhere.

First, it puts the world on notice that Swift is planning on selling merchandise with these terms, thereby giving anyone who is already doing so the opportunity to object.

Second, after Swift starts selling merchandise in connection with these marks, her trademark registrations will give her greater protection against anyone who tries to pass off their own merchandise as hers. In the event that another party tries to capitalize on the popularity that Swift has made for herself, she will have an easier time stopping them.

Finally, a trademark registration will control who can sell products with Swift’s lyrics on them. This might initially seem alarming to some, but the truth is that this kind of control is for everyone’s benefit—a reward for investing money and energy into building goodwill around a brand name on the one hand and a decrease in consumer search costs on the other. While a registration for THIS SICK BEAT for T-shirts, for example, would give Swift the exclusive ability to sell T-shirts with those words on them, it will also ensure that her fans are getting an authentic piece of Taylor Swift merchandise when they buy one. If you think that anyone should be allowed to capitalize off of the goodwill that Taylor Swift has created, then you are essentially advocating for theft.

There may be arguments that THIS SICK BEAT is too basic of a phrase to protect within the confines of trademark law and I address those arguments below.  For the purposes of distinguishing trademark law from copyright law, though, the point is that trademark law serves an important function not served by copyright law that is absolutely necessary for the competitive marketplace.  Without trademark protection, consumers would be unable to discern a quality product (or an authentic one) from one that is poorly made (or inauthentic).  Without it, Swift’s well-earned fans would be giving their money to freeloaders trying to profit off of the name that she has made for herself.  Again, the function of trademark law is to protect not only the holders of trademark registrations but, more importantly, to protect you, the consumer.

Bad Blood

The strongest pushback against Swift came from Ben Norton, a self-prescribed “writer, journalist, and artist” who recorded a protest song entitled “This Sick Beat” (which entirely misses the point for reasons that will be explained below). According to Norton, Swift is a member of the “bourgeoisie” trying to keep the working class in its place. “Taylor Swift did not invent the phrase ‘this sick beat,’” Norton wrote on his website.  To Norton, Swift is nothing more than a pawn in the “system” that allows “wealthy individuals and powerful financial entities to privatize language that is collectively owned, and then to profit off of it.”

Others are upset because it appears that, as of yet, no musical artist has successfully registered one of their own song lyrics as a trademark.  Instead of heralding Swift for navigating through relatively unchartered territory, social media activists criticize her on the ground that her application violates the First Amendment by denying other Americans their right to free speech.

Likewise, I was appalled that Swift would try to register lyrics from her latest album, 1989. Red was WAY better.  She should register “WE ARE NEVER EVER GETTING BACK TOGETHER” for greeting cards in Class 16.  I would buy a few of those and send them out to a select few individuals.

In all seriousness, a large part of the arguments against Swift are rooted in confusion about the difference between copyright law and trademark law.  Let’s take Norton’s parody song, “This Sick Beat,” head on because it is a prime example of the misguided idea that a trademark application has some bearing on songwriting.

Norton is correct that his song does not infringe on Swift’s rights, but he’s correct for the wrong reasons.  He believes that his song falls under Fair Use, and again, he is not wrong.  However, it is the Fair Use defense of copyright law that allows him (and Al Yankovic and anyone else who makes derivative works) to operate under the parody exception.  Norton’s aggressive statement on his website cites the four factors that courts consider in analyzing a Fair Use defense to copyright infringement.  However, all of that is meaningless in this context.  While there is such a thing as a Fair Use defense in trademark law, the factors considered in a trademark infringement case are entirely different from the factors considered in a copyright infringement case because the nature of the harm is different.  So when Norton writes that under Fair Use his song would be “in violation of no laws” even if Swift’s applications had already registered, he makes a massive category error effectively reducing his ramblings to utter nonsense.

Again, Norton is correct that his song is not an infringement of Swift’s trademarks, but he is wrong in thinking that Fair Use protects him.  Rather, he does not infringe Swift’s trademark simply because he does not make a “trademark use” of the phrase THIS SICK BEAT.  If he really wanted to challenge Swift’s trademark rights, he should try printing THIS SICK BEAT on a T-shirt and seeing if he can sell twenty before Swift’s lawyers hit him up with a cease and desist letter.

Begin Again

 Hopefully we’ve cleared up the trademark/copyright confusion so let’s move on to the other pushback against Swift.  The more theoretical arguments about whether Swift has privatized language and violated the First Amendment are of course meritless, but at least we can analyze them from a common understanding that the only law that applies here is trademark and constitutional law.  We’ll leave copyright where it belongs (namely, at the U.S. Copyright Office, not the U.S. Patent and Trademark Office(USPTO)). Let’s analyze these arguments one by one:

1) Musical artists should not be allowed to register their own song lyrics as trademarks.

There is absolutely no precedent for this whatsoever. TheStar.com reported that Beyoncé and Britney Spears are two artists that have previously tried to register song titles and lyrics.  USPTO records show that applications were abandoned because the artists were unable to prove use of their mark, not for any reason grounded on the principle that song lyrics are not protectable.

U.S. trademark law operates in what is called a “use-based” system.  That means that you can register a trademark for almost anything that you use as a trademark. Again, if it identifies the source of the product or service, then it is a trademark worthy of protection, with limited exceptions.

The ability to register virtually anything exemplifies why phrases like “Swift tried to trademark something” are categorically incorrect.  Normally such a semantic distinction would not be important, but in this case, the misuse of the term trademark as a verb greatly contributes to misunderstanding the term and its implications.  Swift’s applications are attempts to register trademarks, not to “trademark” them.  A set of words or drawings either is or is not a trademark, irrespective of what the USPTO thinks of it.  If it functions as an indication of the source of a product, as Swift’s phrase THIS SICK BEAT does, then it is a trademark. Her application is merely a request to have the USPTO recognize it as such.

One of the advantages of a use-based system is the fact that anyone could have registered THIS SICK BEAT if they had only beat Swift to the punch.  Even more, anyone who has already been using the mark has the opportunity to oppose Swift’s applications through formal proceedings before the Trademark Trial and Appeal Board.

The ability to register virtually anything means that use is the only prerequisite for earning rights in a trademark. Therefore, even if Swift successfully registers her mark and tries to use the registration as a sword against prior users, those prior users will likely be able to defend themselves by proving that they were first and may even be successful in cancelling her registration.  After all, a trademark registration is not impenetrable.

2) Registering common phrases like THIS SICK BEAT violates Americans’ right to free speech under the First Amendment.

Norton wrote in his article that “Trademarks are a direct attack on one of the most fundamental and inalienable rights of all: our freedom of speech.”  Contrary to this allegation, language and trademark law are not in competition.  To say that they are is like trying to argue that the New York Knicks are a better baseball team than the New York Yankees.  The existence of a trademark registration for even a commonly used word does not affect anyone’s ability to communicate.  But even if we give this argument the benefit of the doubt, it still fails because the First Amendment actually encourages registration of trademarks like THIS SICK BEAT.

A commonly held, but mistaken, belief is that trademark protection comes from Article I of the Constitution which in fact houses the Patent and Copyright clause. Rather, the Supreme Court clarified that trademark protection implicitly derives from the Constitution’s Commerce Clause (Trademark Cases, 100 U.S. 82 (1879)).

In truth, the First Amendment weighs in favor of Swift on the policy that heavily restricting trademark registration inhibits an applicant’s right to free speech.  Most notable of late is the Washington Redskins case, in which the football team will argue that the cancellation of their federal registrations violated their First Amendment rights.  The reality, therefore, is that the First Amendment pendulum swings in favor of allowing a broad range—not a restricted range—of trademarks to be registered.

3) Swift does not and cannot own the phrase THIS SICK BEAT because she did not come up with the phrase.

There are two parts of this argument that need to be addressed.  First, to say that Swift is applying for the right to “own” the phrase is a misnomer.  Rather, she is applying for the right to exclusively use the phrase in connection with those goods, and only those goods, listed in her applications (with a tiny exception for the Related Goods doctrine).  That is, contrary to Norton’s allegations, she does not and will not “own” the phrase outright.  She cannot send a bolt of lightning down from her throne on Mount Trademark to blow away anyone who uses the phrase in another fashion.  When Kanye reassures Beyoncé that despite not winning a Grammy, her album is still full of some “sick beats,” the trademark police are not going to appear out of thin air and haul him away (though I wish someone would). Even more, this does not prevent others from using the phrase THIS SICK BEAT in connection with other goods or services (like say, Dwight Schrute’s beet farm). Swift might have an argument against them under the Related Goods doctrine, but that will be for the courts to decide.

The second issue with this argument is the idea that Swift has no right to the phrase THIS SICK BEAT because she did not come up with it herself.  If you believe that then you should also believe that Apple, Inc., one of the most recognizable computer companies in the world, should not be allowed to protect its brand because apples existed before computers did.  Under that logic, any and every computer manufacturer should be allowed to put the apple logo on its own computers. Likewise, the makers of ALL laundry detergent did not come up with the concept of “everything” so their brand name must not be protectable either.

The reason this argument fails is because invention of your mark is almost entirely irrelevant.  Whether you coined a phrase or took it from common language makes no difference; the only thing that matters is whether you have made consumers recognize your brand as a product source.

4) Song lyrics cannot be registered as trademarks because they are too commonly used in every day language.

This argument comes closest to making a good point, but it still falls short.  It comes close because the USPTO will refuse registration of your mark if it is descriptive of the product itself or has come to be the generic name for the products.  But it falls short because there is no restriction on using common terms as a trademark (see the APPLE and ALL examples above).

In this case, none of Swift’s recent applications are descriptive or generic.  THIS SICK BEAT is not a phrase that competitors need in order to describe their own merchandise.  Nor can THIS SICK BEAT be said to be the generic name for T-shirts.  But even if Swift’s marks were descriptive, the USPTO will nevertheless register a descriptive mark if the applicant can demonstrate that consumers have come to recognize the brand as a product source.  The USPTO calls this consumer recognition “secondary meaning” in the marketplace.  Secondary meaning is what trademark protection is all about: protection is a reward for creating secondary meaning in a phrase, whether you came up with the phrase or not. Swift can probably make a good argument that the use of THIS SICK BEAT in her songs has created secondary meaning in the phrase such that U.S. consumers have come to associate the phrase with her and her music.  Therefore, she has arguably earned trademark protection (and she will have common law trademark protection based on her current use of the mark on T-shirts even if the USPTO refuses to register her mark).

Shake it Off

 To avoid going on a never-ending diatribe of the merits of trademark protection, I will briefly sum up with one last important point.  The bottom line is that if Swift is successful in registering her marks with the USPTO, it will have no negative effect on the creative community.  In fact, a society that offers this kind of intellectual property protection is one that encourages artistic endeavor (for an in-depth discussion of how trademark law encourages creativity, see Jeanne C. Fromer’s article “The Role of Creativity in Trademark Law.” 86. Notre Dame Law Review 1885 (2011)). Without that protection there would be little incentive for anyone to do anything professionally, whether their enterprise is art or business, because no one would be able to stop others from maliciously trading on their name.  Haters can hate all they want, but Swift is right to continue to play, play, play.

 

 

Joey Gerber

Joey Gerber is a second year student at Fordham Law School. He is an IPLJ staff member.