The Song Remains the Same (1)
But Not Necessarily the Name

By Robert D. Litowitz  (2) and Mark Traphagen  (3)
Part II

Quasi Trademark Protection—Section 2(a) Again in Margaritaville
The trademark, publicity, and service mark rights potentially available to performers in musical groups are not merely limited to their names and likenesses. Protection may even extend to the title of a song that a performer has popularized and by which he or she is uniquely identified. For example, in Buffett v. Chi-Chi’s, Inc., the Trademark Trial and Appeal Board recognized that a musician may enjoy rights analogous to trademark rights in a popular song title. In that case, Chi-Chi’s, Inc., which owns and operates a chain of Mexican restaurants, filed an application to register the mark “Margaritaville” for restaurant services. Singer and songwriter Jimmy Buffett opposed registration of this mark on the grounds that it falsely suggests a connection with him. Buffett brought the action pursuant to Section 2 (a) of the Lanham Act.He alleged that the word “Margaritaville” had become closely associated with him in the minds of a substantial portion of the public. “Margaritaville” was the title and prominent lyric of a song that he wrote, recorded, and popularized in 1977. Buffett further contended that Chi-Chi’s use of “Margaritaville” as a service mark falsely suggested an association or connection between the restaurant chain and Jimmy Buffett. 

Chi-Chi’s argued that Buffett had not used “Margaritaville” as a trademark or as a designation for any goods or services related to Chi-Chi’s restaurant services. Therefore, Chi-Chi’s use of the word could not create a likelihood of confusion among the public.   

The Board, however, concluded that use of a name or word as a technical trademark or service mark was not a prerequisite to maintaining a claim for false suggestion or connection under section 2(a). Following the Federal Circuit’s lead in University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co. the Board observed that the portion of Section 2(a) regarding “false suggestion of a connection” evolved out of, and embraced, the concept of right of privacy and publicity. Consequently, these rights protect an individual’s control over the use of his “identity” or “persona.”   
Based on the Du Lac principles, the Board provided the following elements for determining when a mark falsely suggests a connection with a living person:

(1) the defendant’s mark must be the same or a close approximation of plaintiff’s previously used name or identity; (2) the mark must be recognized as such; (3) the plaintiff must not be connected with the activities performed by the defendant under the mark; and (4) the plaintiff’s name or identity must be of sufficient fame or reputation that when defendant’s mark is used on goods or services, a connection with the plaintiff would be presumed. 

In the Buffett case, the complainant persuaded the Board that the public associates the term “Margaritaville” with the public persona of Buffett. The Board relied upon the evidence introduced by Mr. Buffett and affidavits of several members of the music industry stating that “Margaritaville” was almost a nickname of Jimmy Buffett. The Board appeared particularly impressed with evidence that Buffett had attempted to associate the term “Margaritaville” with his public persona in numerous commercial ventures. This evidence included a licensing agreement for the name “J.B.’s Margaritaville” for restaurants, as well as a similar agreement regarding the sale of clothing. 

In Buffett, the Board limited its analysis to whether entertainers could maintain actions to prevent registration of words, phrases, or things associated with them. It did not go so far as to determine whether Buffett enjoyed a proprietary right in the word “Margaritaville.” The Board also declined to address whether an entertainer could enjoin commercial use by another of a word, phrase, or thing rather than merely preventing registration. 

In Carson v. Here’s Johnny Portable Toilets, Inc., the Sixth Circuit considered whether a celebrity could prevent commercial exploitation of a phrase or thing associated with him or her. The plaintiff, Johnny Carson, host of the perennially favorite late night talk show “The Tonight Show,” sought to protect the phrase “Here’s Johnny,” which had been used to introduce him on the show each night since 1962. Carson had authorized use of the phrase, “Here’s Johnny,” in connection with a number of commercial ventures, including a restaurant chain and a line of men’s clothing. The plaintiff objected to the defendant’s use of the phrase in the name of its portable toilet rental business. 

Carson brought an action alleging unfair competition, trademark infringement under federal and state law, and invasion of privacy and publicity rights, seeking damages and an injunction. The district court denied Carson’s request for relief in its entirety. 
The appellate court departed from the district court’s conclusion on the right of publicity claim. The Sixth Circuit held that the defendant had violated Carson’s right to protect the “commercial interest” in his identity, even though Here’s Johnny Toilets had not appropriated Carson’s name or likeness. The Sixth Circuit afforded protection against the unauthorized use of Carson’s famous introductory phrase, although Carson did not persuade the court that the defendant’s use of the phrase was likely to falsely suggest association, connection, or sponsorship with the plaintiff.

Viewed together, the Carson and Buffett cases suggest that performers must tread warily in seeking protection against unauthorized use of a title, phrase, or other thing. Such protection is reserved for phrases that consumers clearly associate with the performer and which the celebrity has exploited as services. In Buffett, the Board held “Margaritaville” potentially eligible for protection after finding that it was tantamount to Buffett’s nickname. Similarly, the Sixth Circuit found “Here’s Johnny” eligible for protection based on Carson’s use of the phrase on national television for over twenty years. 
In each case, the performers also had taken steps to exploit the phrase commercially as a trademark or service mark. Carson had licensed use of the phrase “Here’s Johnny” for use as a service mark on clothing, and Buffett also had begun to license “Margaritaville” for use as a service mark. In both cases, therefore, a crucial nexus between the right of publicity and the trademark protection existed due to actual or proposed use of the term in question as a service mark.

Pitfalls in Selection 
Many musical groups and bands have adopted names from the registry of industrial America. For example, when Neil Young and Stephen Stills of Crosby, Stills, Nash and Young formed a band in the mid-1960s, they borrowed the name of a steam roller company, “Buffalo Springfield.” There is no indication in the reported case law that the corporate Buffalo Springfield objected to the activities of their musical namesakes. 
In this modem age of corporate rock and roll, however, where Warner Communication’s brainchild MTV dominates the musical industry and where corporate sponsors underwrite concert tours by rock and roll stalwarts such as Paul McCartney, The Rolling Stones, and The Who, it is doubtful whether a musical group today could borrow a corporate name without eliciting protests from its corporate alter ego. One such performer, Thomas Morgan Robertson, recently found himself embroiled injust such a dispute, after achieving success under the stage name “Thomas Dolby.” Use of the name “Thomas Dolby” did not sit well with Dolby Laboratories, Inc. (“Dolby Labs”) and its founder, Ray Dolby (“Dolby”). In the mid-1960s, Ray Dolby invented a noise reduction system for audio and video cassette recorders, which he dubbed the Dolby noise reduction system. 
When musician Thomas Dolby burst on the United States musical scene in 1981 with a successful record, music video, and television appearances, Dolby Laboratories promptly voiced its objections to the use of the name “Dolby.

After receipt of a letter threatening action from Dolby Laboratories, Robertson/Dolby continued to perform and record under the name “Thomas Dolby” without objection from the company. Then, in late 1985, when Robertson/Dolby began composing soundtracks for motion pictures, Dolby Laboratories protested and subsequently brought action. In advertisements for the movie, “Howard The Duck,” the name “Thomas Dolby” appeared near the Dolby Stereo trademark. Dolby Laboratories was concerned that consumers would be confused by the proximity of “Thomas Dolby” to the Dolby Stereo trademark. The company brought suit to enjoin further use of “Thomas Dolby” in connection with motion pictures and to prohibit use of the surname “Dolby,” standing alone, on sound recordings. In its motion for preliminary injunction, Dolby Laboratories contended that Robertson/Dolby had deliberately adopted his stage name in order to capitalize on the good will of the Dolby Stereo trademark. Dolby Laboratories further argued that the public was likely to mistakenly believe that Thomas Dolby founded Dolby Laboratories and that Dolby Labs’ reputation was effectively hostage to Thomas Dolby’s career. According to the company, Thomas Dolby’s potentially fluctuating musical fortunes could irreparably harm Dolby Laboratories’ good Will. 

Defendant Robertson/Dolby denied these allegations and contended that “Thomas Dolby” had been his nickname since the age of fourteen. He further stated that he chose to perform as Thomas Dolby because he felt that the name had a distinctive aura, comparing it to the stage names of other successful performers such as David Bowie, Stevie Wonder, and Ringo Starr. Robertson/ Dolby further argued that he would be irreparably harmed by an injunction because relinquishing the Thomas Dolby name could undermine his entire career. 
The United States District Court for the Northern District of California, upon reconsideration of its order denying injunctive relief, held that there was a likelihood of confusion between the name Thomas Dolby and Dolby Labs’ well known Dolby trademark. Robertson/Dolby persuaded the court that, although Thomas Dolby was not his given name, he had not adopted it to cash in on Dolby Laboratories’ reputation. The court, relying on the “fair use” provisions of the Lanham Act, permitted defendant to continue using the name Thomas Dolby, but prohibited him from using the surname Dolby alone. The court enjoined the defendant from using the name Thomas Dolby without explanation if he engaged in the promotion of sound equipment. The court concluded that if Thomas Dolby promoted equipment of inferior quality, Dolby Laboratories’ reputation might be harmed. In sum, Dolby Laboratories succeeded only in obtaining a narrow injunction which prohibited use of the name Dolby, standing alone, in connection with musical recordings and motion pictures. 
Paramount Pictures (Paramount), the owner of rights in the television series “Star Trek,” was even less successful when it brought suit to prevent a musical group from registering the name The Romulan Invasions as a service mark for entertainment services. The “Star Trek” television series originated during the 1966-1967 television seasons. The original series featured a race of creatures known as the “Romulans” who appeared in a number of television episodes and had been licensed by Paramount to appear in several books based on the “Star Trek” series. 

Despite the series’ success and Paramount’s licensing efforts, the Trademark Trial and Appeal Board dismissed Paramount’s opposition against registration of The Romulan Invasion for entertainment services. Although recognizing that the “Star Trek” series was well known, the Board was particularly troubled by the absence of evidence showing technical trademark or service mark use of the Romulan name. 
Curiously, the Board equated the absence of proof that Paramount Pictures actually had used the Romulans name as a technical trademark with a lack of public recognition of the Romulan’s mark and a consequent absence of confusion. In this respect, the holding in Star Trek is difficult to reconcile with the Board’s decision in Buffett. In Buffett, the Board accorded “Margaritaville” quasi-trademark protection under section 2(a) of the Lanham Act even though Buffett had failed to offer conclusive evidence that “Margaritaville” had been successfully exploited as a technical trademark or service mark. The fact that Buffett’s claim succeeded, while Paramount’s failed, is in some part due to the Board’s subjective belief that the public more readily associated “Margaritaville” with Jimmy Buffett than they did Romulans with the “Star Trek” television series. 
This apparent contradiction is probably due to the differences between the statutory grounds relied upon by Buffett and Paramount in support of their causes of action. Buffett invoked section 2(a) of the Lanham Act in opposing Chi-Chi’s Restaurant’s attempt to register “Margaritaville”. Buffett did not need to establish technical trademark or service mark usage to satisfy the requirements of section 2(a); he needed only to show that “Margaritaville” was synonymous with his persona such that use of that work by another falsely suggested an association with Mr. Buffett himself. 
Paramount, on the other hand, based its opposition to registration of The Romulan Invasion on section 2(d) of the Lanham Act. Paramount could not, the Board reasoned, satisfy the statutory requirements for opposing registration of The Romulan Invasion under section 2(d) without proof that Paramount had used the word Romulans in the technical sense as a trademark, service mark, or trade name. Moreover, unlike Buffett, Paramount could not avail itself of the protection afforded by section 2(a) of the Lanham Act, because The Romulan Invasion suggested no association or connection with “a person, living or dead.” 
Perhaps Paramount would have been more successful if, instead of opposing registration, it had sought to enjoin use of The Romulan Invasion mark in an action under section 43(a) of the Lanham Act. Section 43(a) is similar to section 2(a) in that both prohibit confusion or mistake involving connection or association between “persons” or their commercial activities. The Trademark Trial and Appeal Board might have received favorably a claim by Paramount that the service mark The Romulan Invasion falsely suggested a connection or association with the “Star Trek” series under section 43(a). 
The law surrounding the selection, ownership, registration, and protection of musical performing group names or service marks is fraught with uncertainty. The case law reflects the difficulty of applying legal principles developed in a corporate commercial setting for product and service distribution to ventures often built on shared artistic vision and even friendship. Disputes over service mark rights in these names are probably more analogous to divorces rather than classic trademark infringement. There is little solace for groups other than those such as Simon & Garfunkel who had the foresight and good fortune to adopt their individual names rather than a collective artistic identity. Nevertheless, our legacy of popular culture surely would have been less rich had The Beatles called themselves McCartney, Lennon, Harrison & Starr. 

Robert D. Litowitz is a seasoned litigator with nearly 15 years experience in litigating trademarks and other intellectual property rights before the courts, the International Trade Commission, and the Trademark Trial and Appeal Board. Before joining Finnegan, Henderson, Farabow, Garrett & Dunner, Litowitz honed his advocacy and intellectual property skills as a trial attorney for the United States International Trademark Commission. Today, Litowitz continues to exercise his expertise in ITC practice. He recently successfully concluded an action brought on behalf of a major U.S. footwear manufacturer. 

Mark Traphagen is a partner at the DC office of Powell Goldstein, specializing in software licensing and related intellectual property matters.

*Ed’s note: Due to space constrictions, we omitted the footnotes. For a full text of this article, please see the LAD website at: lad@lad.org 

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