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Monday, May 02, 2011

Back in the saddle, again

I'm glad to return for my second stint as a guest blogger here at Prawfsblawg.

The title of this post might have evoked memories of Gene Autry's signature tune, Aerosmith's single from the Rocks album, or a little known gem from the band Somebody Still Loves You Boris Yeltsin. While the songs are distinctive, the titles are the same. Neverthelsss, Autry would have no cause of action against Aerosmith, and Aerosmith would have none against Somebody Still Loves You Boris Yeltsin. Copyright doesn't protect song titles, and the 2d, 6th and 9th circuits have all embraced a public interest balancing test for potential trademark infringement suits: the use of the same title as an earlier work may only be enjoined if it had no artistic relevance to the underlying work, or was expressly misleading. Nothing about the reuse of "Back in the Saddle" as a song title would likely mislead consumers, and every song includes the phrase in its lyrics.

Here's a slightly more interesting counterfactual  - what if Gene Autry had decided to make a comeback as a live performer in 1984, the same year that Aerosmith reunited with their original guitarists, and both artists hit the road on respective "Back in the Saddle" tours?

It would be hard to confuse Gene Autry with Aerosmith, but perhaps trickier to distinguish the tours one from another. Still, the problem is easily solved if consumers ask for Gene Autry or Aerosmith tickets. "[T]rademark infringement protects only against mistaken purchasing decisions and not against confusion generally." Lang v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991). In addition, for both artists, "back in the saddle" would be a fair description of their return to live performances. Thus, there is likely no trademark infringement. (Aerosmith's "Back in the Saddle" tour in 1984 was seen as a triumphant return. Autry had long retired from performing by 1984.)

It might be a closer call if you imagine a counterfactual Led Zepellin reunion in 1984 (pick your favorite drummer to replace the deceased Jon Bonham) for a "Back in the Saddle" tour. There, the styles of the band are closer, and the potential audience crossover much more significant. Tickets will probably still be purchased by consumers looking for the artist, and not the tour, and Led Zepellin is, in the colloquial use of the phrase, in fact "back in the saddle." Again, Aerosmith likely has no claim.

Aerosmith's best hypothectical case might be against an Aerosmith cover band, hitting the same cities on the same dates in 1984 as the original, under a "Back in the Saddle" banner (either tour name or band name).  It's not impossible to imagine a consumer mistakenly purchasing tickets to a smaller venue, in the same city, who thinks she is getting the genuine article when she purchases tickets to see "Back in the Saddle." You might also imagine momentary consumer confusion, which has been enough to support a claim of trademark infringement as initial interest confusion, first articulated by the 9th Circuit in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).

More to come, of course, on the intersection of trademark and copyright law, problems with jurisdiction and venue in intellectual property litigation, and thoughts inspired by the recent Rethink Music conference co-sponsored by the Berkman Center for Internet and Society, Harvard Business School, and the Berkelee College of Music.

Posted by Jake Linford on May 2, 2011 at 09:54 AM in Intellectual Property, Music | Permalink

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