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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Titles as Trademarks After THRILLER

These days, music fans (real and fictional) endlessly cover hit records with their own versions on YouTube. Just ask the US swimming team, or indeed Cookie Monster, about Carly Rae Jepsen's "Call Me Maybe". However, when competitors or others knock off the title of a successful work, shaking them off can present special challenges, as the estate of Michael Jackson learned recently when it contested a UK trademark application for THRILLER LIVE. This case spotlights the importance of evidence in IPO proceedings and the value of trademark registrations for titles of creative works.

It's Close to Midnight

With over 100 million copies sold worldwide, Michael Jackson's Thriller is indisputably the best-selling album of all time. Its video, too, may be the most memorable in history. Even after 30 years Jackson's music and moves still draw a large and loyal fan base, and in 2006 a UK-based producer sought to capitalise on this by opening a new West End musical show about Jackson and his music, entitled Thriller Live.

Thriller Live rode the wave of popular musical bio-shows including such hits as Mamma Mia and We Will Rock You. It was not, however, connected to or endorsed by Michael Jackson or his estate. When the organisers, The Flying Music Company Ltd., applied to register THRILLER LIVE as a UK trademark for inter alia musical recordings and entertainment services, Jackson's estate filed vigorous opposition.

The opposition was based on claims that THRILLER was a well-known (albeit unregistered) trademark, whose inclusion in the later mark was likely to give rise to confusion; that Flying Music's activities were essentially passing off; and that the application had been filed in bad faith, since Flying Music must have known that the intellectual property rights in the album title Thriller belonged to Michael Jackson and later to his estate.

For all its fame, though, the title Thriller had its limitations. There was no doubt that it identified Michael Jackson's chart-topping album. But, under the law of trademarks, did it identify the commercial source of the goods?

This subtle distinction proved the undoing of the estate's first two grounds of opposition. The hearing officer acknowledged that how the average consumer perceives an album title is a question of fact in each case. However, he noted that "intuitively" most people would regard the title of a creative work such as a musical album as being descriptive of the album's contents, in contrast with the name of the artist, which is more likely to be seen as the commercial source of the work.

In this case, there was no evidence that the average consumer perceived Thriller as anything more than an album name, albeit the best-selling album of all time. In the absence of such evidence, the hearing officer concluded that the estate had not proved ownership of unregistered trademark rights in it.

Similarly, in relation to the passing off claim, the fact that Thriller was an album title was problematic. Had Thriller denoted a series of albums, much as Time or Life denote regularly published journals, then it would perhaps have been possible to read into it a trademark significance. However, as merely the title of a one-off work, the album name was not, in the hearing officer's view, distinctive of anything but the Thriller album itself - it did not denote trade source.

While this language is arguably more appropriate to trademarks than to the law of passing off, nonetheless the reflexive descriptiveness of Thriller as an album title meant, for the hearing officer at least, that the use of Thriller Live would not necessarily misrepresent the "commercial origin or authenticity and approval of the goods and services." Had the estate contended that the use of Thriller Live would amount to some other kind of misrepresentation, for example as to the nature of the content, it might have met with greater success. However, the estate only pleaded misrepresentation as to a commercial connection with Michael Jackson or his estate, and its passing off case therefore failed.

The hearing officer implied that matters might have been different had the estate shown that musical bio-shows named after a well-known song or album title of the artist in question were commonly assumed to be officially authorised or endorsed. However, the evidence only showed one such officially authorised show as of the applicant's filing date, namely We Will Rock You, and this on its own was not enough.

Something Evil's Lurking in the Dark

The estate enjoyed some better, although still only partial, luck in its case on bad faith.

Here the estate claimed that Flying Music's application for THRILLER LIVE could prevent the estate from exploiting or continuing to exploit rights in the album title Thriller in relation to musical recordings and other goods and services.

While the hearing officer did not necessarily accept that argument in relation to use as the name of an album or video given the descriptiveness of Thriller as a mere title, he was nonetheless persuaded that this was one potential consequence that Flying Music should have considered. There was no evidence that it had done so, nor as to why, if it had, it had nonetheless filed the application. Such conduct was not, in the hearing officer's view, in line with normal standards of acceptable commercial behaviour. Consequently, in relation inter alia to recorded music and images and entertainment services, the application had been filed in bad faith.

That was not, however, the end of the show. Flying Music had also claimed protection for "entertainment services in the form of musical theatre" and related services. There was no evidence that Michael Jackson had ever given any musical theatre performances. Moreover, the applicant had itself been staging a West End musical under the name Thriller Live since 2006. In the hearing officer's view, this fact represented a "prima facie legitimate reason" for Flying Music's application in respect of such services. In respect of them, therefore, he concluded that the application had not been filed in bad faith.

Comment

Much of the interest in this case stems from its famous subject matter. That in no way, however, diminishes its importance as the latest object lesson in how, and how not to, prove and protect rights in titles of creative works.

Textbooks and judges alike are sceptical as to the trademark power of album and book titles. Titles of one-off works, however successful, are likely to be taken as denoting only the work and not its creator or source. Only where a title has come to denote a family of works (eg, a regularly published periodical, or a series like Harry Potter) is it likely to be seen as referring to a creative or trade source, and therefore as having trademark significance.

But there are, of course, exceptions to every rule. It is doubtless true that the names of artists, whether singers, authors or others, are by their very nature indicative of the origin of their works. Titles of one-off albums or books do not necessarily have this meaning. And yet, as everyone knows, there are some one-off titles that transcend this. How to Make Friends and Influence People is clearly a reference to Dale Carnegie's work. War and Peace is synonymous with Tolstoy. And the album name Thriller is intertwined in the public consciousness with the name Michael Jackson - its success virtually defined his career. These may be one-off titles, but their popularity has made them inseparable from the name of their artistic source. One immediately brings the other to mind.

In the context of a legal case, though, the trademark impact of a title is an issue of fact to be proved by evidence. To the late Michael Jackson's estate, it may have seemed unnecessary to prove that the title of the best-selling and most famous album of all time was actually understood by the public as denoting a work emanating from Mr Jackson and a record label authorised by him. However, the innate problems with titles as trademarks meant that the hearing officer was not prepared to find for the estate on this point without evidence that Thriller really was understood in this way.

The estate filed ample evidence of the fame and success of the Thriller album; what more could it, or should it, have done? Any answer to that question must by definition be speculative, but an obvious candidate would have been something in the nature of survey evidence showing that the average consumer thought spontaneously of Michael Jackson when Thriller was mentioned. No such evidence would be immune to criticism, of course, but it might have given the hearing officer a branch to cling to. As it was, the estate took the trademark significance of the title virtually as read from its fame. The lesson here is that fame is not enough.

Likewise, the absence of evidence that the average consumer would perceive a show such as Thriller Live as being officially authorised or endorsed undermined the estate's claim that the use of the mark would lead to confusion or deception. It is a myth, and an unhelpful one, that IPO cases are designed to be "cheap and cheerful" proceedings where evidence is not always needed. It is clear from this case that evidence can sometimes be everything.

In relation to bad faith, the hearing officer's finding that the applicant had a legitimate reason to file for Thriller Live in relation to musical theatre shows because it had in fact already been staging them under that name is open to question, since it arguably assumed that actual trade confers propriety. That is not necessarily true; merely trading under a name does not imbue it with a legitimacy that it otherwise lacks, for example because the name was chosen for its ability to evoke another's business or brand.

What perhaps this case shows more than anything, though, is the value of a registered trademark. Had the estate owned prior registered trademark rights in THRILLER, there would have been no need for it to prove the trademark character of the mark unless the validity of the registration were separately contested. A small initial outlay for registration could have avoided the expenditure of many thousands and changed the outcome of this case. Given the question marks over the legal impact of titles, artists should take heed.