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Californification of titles without trade marks

Showtime Network, a pay TV channel picked Californication to title its TV series. The Red Hot Chilli Peppers had already used it to title a song and album.

Fame creates facts

The Red Hot Chilli Peppers’ 1999 album titled “Californication” was a smash hit. It sold 14 million copies worldwide. It spawned singles including Californication. There were also videos, Grammy and MTV award nominations and wins. The Peppers estimate the song has played on US radio 200,000 times and its video on US TV 1,500 times. That's a lot of fame and public recognition, but does it make the Peppers owners of the title?

In 2007, Showtime used the term Californication as the title for its television drama starring David Duchovny about the misadventures of an irreverent writer living in California.

Later in 2007, the Peppers – the four composers of the song, commenced legal proceedings in California (where else!).

Law remedies wrongs

The Peppers allege "The title Californication has therefore acquired secondary meaning." That's in paragraph 25 of their Complaint. In law we say a "secondary meaning" arises if people see, read or hear the word "Californication" and think not just of its dictionary meaning but also its association as sourced or originating from a person or company. The law can recognise a monopoly right for those who successfully claim a word has a secondary meaning. It is secondary in that the word has both a dictionary meaning and a second meaning.

Hear "beatles", think bugs and The Beatles. The Beatles understood the concept of secondary meaning, they sued Apple Computer, Inc three times over almost three decades, initially to protect their claim to the names Apple Corps and Apple Records. Title claims it seems were also central to the decision in the 1990s by Prince to use the love symbol as an identifier. He had a falling out with Warner Bros, which had a trade mark registration over PRINCE.

In IP cases it is normal to see quite a few legal bullets in a plaintiff's gun. Hence the Peppers also claim Showtime and its producers have acted in breach of the Lanham Act making a false designation of origin likely to cause confusion, mistake and deception. Further loading up, the Peppers rely on the legal concepts of unfair competition and dilution as well as the equity law remedy of unjust enrichment.

Factual footprints

Turning back to facts, defendants in these types of cases often face unhelpful quirky facts. We've last noted them when Dan Brown (author of The Da Vinci Code) named a character in his book using an anagram of the two authors who subsequently sued him.

A quirky fact in the Californication case is that a character from Showtime's Californication TV series is named Dani California. This is cited in paragraph 20 of the Peppers' Complaint. You'll hear this name used in songs off the Peppers’ album and indeed the title of a subsequent song by them. These are inconvenient facts for Showtime. As the defending party it will need to argue Californication has no special origin sourced to the Peppers.

Money

And finally the Peppers mention money, economic loss to use the technical term. Here in paragraph 23 of their Complaint the Peppers’ say that searches of "Californication" on iTunes returned the TV series’ soundtrack along with their work. Under law in California you can claim triple damages. The Peppers seek a court order for that.

...on the other hand

Turning to Showtime's side of the legal scale, the Peppers face weighty legal obstacles.

  • Despite the claim that the title is "inherently distinctive" and "immediately associated in the minds of consumers" with the Peppers, their song and album, it has long been online in Wikipedia and encyclopaedias.
  • It was use as early as 1972 in this Time magazine article.
  • Why is all this relevant? Under the law relevant to titles and names, including trade mark law, when you are trying to claim a word has a secondary meaning it does not help if it appears in lots of dictionaries and encyclopaedias with no indication it is sourced from you.

Registered trade mark - a silver bullet

The Peppers have no silver bullet trade mark registration for Californication. The Peppers evidently are not short for cash for a court case, but most bands people and companies are. Therefore, what's the lesson to be learned for the rest of us?

Commenting on this, US attorney Kim Walker states on his firm’s website www.out-law.com:

"Successful songs, albums and movies can become brands in themselves. What's really surprising is how few songs and albums are properly protected … The Chili Peppers could almost certainly have registered a trade mark for 'Californication', notwithstanding Time's article. They made the word famous, but it doesn't automatically follow that they can stop its use in a TV show."

The lesson is to get legal advice to apply for a trade mark registration and take other action to support a monopoly over a word, name, phrase, logo or other sign. If you don't, then competitors will make you spend more on intellectual property lawyers, and potentially even more on IP litigation lawyers.

We'll leave the final word to the Peppers. Their Complaint ends with the arcane language “WHEREFORE, Plaintiffs pray for relief as follows” before listing the court orders they seek. Divine intervention may indeed be required.


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