“If you got a mind to, you can sing. If you got a body, baby, shake that thing.” Name Droppin’ Ray Wylie Hubbard, from the album Growl
The news in trademark litigation land last week was fairly dull. Sure, the Supreme Court handed down a rare decision on trademark law–a unanimous one at that. But it concerned an arcane split among the regional circuit courts about when a trademark plaintiff can recover an infringer’s profits. Some courts had only allowed what’s known as “disgorgement” when the infringement was willful. Other courts had a more liberal standard, where willfulness was not required but was one of several factors to be factored in. Despite being split on contentious social issues, the Justices spoke with one voice. The unanimous Court called the “willfulness” requirement an “inflexible precondition “. So they endorsed the more expansive view. Going forward, every trademark case will include the possibility of a “disgorgement” remedy, even if the infringer didn’t willfully set out to commit infringement. And that can make big difference–the profits in the case the Supremes decided were over $6 million.
The case is Fromag Fasteners v. Fossil, Inc.
The development that really struck a chord last week concerned profits of a different sort–the profits earned by a superstar singer and their affect on getting two unusual trademarks. The U.S. Patent and Trademark Office has awarded two trademarks to Armando Christian Perez, better know as the hugely successful performer Pitbull. These registrations don’t cover a name, logo, or symbol–they cover a sound–Pitbull’s signature “EEEEEYOOO” yell, or “grito” in Spanish. One registration covers sound recordings. The other, live performances. Mr. Perez’s grito thus joins a rarefied club of trademarked sounds that include the MGM Lion’s roar, the NBC three-note chime, and the New York Stock Exchange’s opening bell.
How, you may ask, can a sound–something heard, not seen–be trademarked? The answer lies in the definition of a “trademark” provided by Congress in the federal trademark statute, the Lanham Act. Like the flexible standard for determining whether a trademark infringer should have to cough-up its profits, the test for what qualifies for trademark registration and protection is broad, defining “trademark” to include “any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” And even if it’s a sound.
But getting a registration for a sound, like Pitbull’s yell, isn’t as simple as registering a term like GOOGLE. Those types of arbitrary word marks can be registered without having to show that the public associates them with a single source. Pitbull, however, had to show more, and he did. He filed a sworn declaration showing his ten’s of millions of dollars in record sales and an equally massive amount of concert revenues, all featuring his EEEEEYOOO! grito. He acquired trademark rights in his grito the old fashioned way–he earned them.
And Pitbull did something else. Along with his trademark lawyers, he’s written an article the Spring 2020 issue of the NYU Intellectual Property and Entertainment Law Journal explaining not only the law behind sound trademarks, but also the science explaining why his grito serves so effectively as his brand. He writes ” Pitbull’s creation of a unique yell to alert friends in a loud nightclub setting was a highly effective tactic for getting their attention in the early days of his career. Today, his grito has evolved, serving a new purpose: to let people know that they are listening to a Pitbull song.” And what enabled him to win his registrations was that his grito has contributed so much to his bottom line.
Trademarking a sound is pretty rare. Trademarking a performer’s signature aural signal is unprecedented. Could it be a game changer for musicians, who until now have relied on copyright protection for their recordings? Will Pitbull’s two trademark registrations for EEEEEYOOO! lead to a chorus of new trademark filings by other performers? Perhaps even posthumously by their estates? A “circle R” for “Ring a ding ding,” has a nice ring to it!
Quote of the day: “Yelling is a form of publishing.” Margaret Atwood