Red Hot Chiles and Showtime Californicate in Los Angeles Superior Court
(click on image for the RHCP website)
The following local news comes via the UK's IPKat post Hot Stuff for the L.A. Courts, linking to an Australian news source, picking up the item from the AP. You'd think I'd know what's happening in my own back yard, but nooooooooooooooooooooooooooooo.
[T]he Red Hot Chili Peppers have sued Showtime Networks over the name of the television series Californication, also the name of the band's 1999 album and one of its singles of the same name.
The lawsuit, filed in a Los Angeles court yesterday alleges unfair competition, dilution of the value of the name and unjust enrichment, claiming the title is "inherently distinctive, famous ... and immediately associated in the mind of the consumer'' with the Red Hot Chili Peppers, the Associated Press reported..
''Californication is the signature CD, video and song of the band's career, and for some TV show to come along and steal our identity is not right,'' said the band's lead singer Anthony Kiedis.
Since there seems to be little likelihood of confusion between the television program and the record album and because the RHCP waited until Californication became a "hit show" before making its claim, is it possible that the lawsuit itself is a form of "free riding" on the success of the Showtime series -- that re-connecting the word "Californication" with the RHCP eight years after the album's release might well breathe new life into its sales.
I mean, if you recorded an album awhile ago and a series of the same name suddenly became a big success, wouldn't you want the show's ubiquity to remind people of your album everytime the show was mentioned? Is the filing of the Superior Court action -- which is certainly colorably meritorious -- nevertheless also a really really low-cost advertisement for the band?
And though I'm increasingly out-of-touch with pop culture, Californication does not seem to be out of touch with anything (I admit to being a fan). In fact, it is awash with pop cultural references making it (in my geeky book at any rate) pretty darn "hip."
And since the RHCP are also pretty darn "hip," the available synergies for both "products" seems obvious to me.
In other words, isn't this a business problem with a business solution rather than a legal problem with anything close to an answer that is easy enough to make it worth the parties' time and money to fool around with in the Courts.
I'd love to hear the opinion of Ron Coleman whose Likelihood of Confusion blog has convinced me he's one of the best in the field right now.
Ron?
UPDATE FROM RON COLEMAN who you'll notice is now carrying an advertisement for our friend Charles Fincher's law mugs -- Mug the Judge! Small world.
Ron writes:
Well, titles of works aren't normally protected as trademarks. Here, look.
I vote "no" for the Chilis. Love the work, though!
Vickie Pynchon - November 25, 2007 9:01 PM
Thanks Ron! The link is to a terrific Hollywood Reporter article on the issue entitled Sam I Ain't by local trademark attorney Jonathon Sokol.
In this November 15 article, Sokol cites the Second Circuit concluding "that literary titles do not violate the law 'unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.' 875 F.2d at 999.
Circumstances under which titles ARE potentially infringing are also included in Sokol's article.
Thanks Jonathon. Great article!
Well, titles of works aren't normally protectivle as trademarks. Here, look.
I vote "no" for the Chilis. Love the work, though!
Thanks Ron! The link is to a terrific Hollywood Reporter article on the issue entitled Sam I Ain't (http://www.hollywoodreporter.com/hr/content_display/business/law/e3id3a854696cdb5c004b7a2b730190fed1) by local trademark attorney Jonathon Sokol.
In this November 15 article, Sokol cites the Second Circuit concluding "that literary titles do not violate the law 'unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.' 875 F.2d at 999.
Circumstances under which titles ARE potentially infringing are also included in Sokol's article.
After reading over the Complaint, I now see legally how the Red Hot Chili Peppers (the "RHCP") were able to get this case in Court without being accused of blatantly filing a frivolous complaint. The RHCP have coupled a claim for unfair competition and dilution regarding the TV show title (which looks like a weaker claim on its face) with the stronger claim against the TV Show's soundtrack release (the Californication soundtrack). Of course, the media headline is going to pick up on the more publicized RHCP Album Name vs. TV Show element, but this is typical of the media game in Hollywood.
There are a number of issues that make this case an interesting case to follow, such as the claim that the RHCP's album title has acquired a "secondary meaning" that will transcend trademark categories and the fact that Showtime actually applied for a federal trademark for "Californication" in the TV series category. Like most entertainment cases, it appears to me that this is just another case of "who has the bigger pockets to pay their lawyers". I suspect that there were extensive pre-litigation correspondence between the parties and Showtime never reached a settlement number that was high enough for the RHCP so they sued.
Also, not only is this good exposure for the band but the way that the media has spun the story so far, Showtime is getting some good pub as well by making it seem like this is a far fetched claim.