Off the Campaign Trail and Into the Courthouse: Does a Political Candidate's Use of a Song Infringe on the Performer's Trademark?

Abstract

As the use of popular music in political campaigns has skyrocketed, so have complaints by musical artists who do not want their songs associated with candidates they do not support. Recently, musical artists have asserted that this constitutes trademark infringement by falsely suggesting that they endorse a candidate. Relying on court decisions and statutes, this article analyzes song-based performer trademarks and whether campaign's uses of music constitute infringement. Ultimately, this article concludes that typically musical compositions and sound recordings cannot be used as performer trademarks and, in any event, political uses would not amount to infringement.

Notes

Notes

¹ For an analysis of election laws of particular importance to broadcasters, see Podlas (2009). Additionally, a compilation of the main federal election laws is available at the Federal Elections Commission website. Retrieved from http://www.fec.gov/law/feca/feca.pdf.

² Music was first used in the 1828 presidential election, but quickly fell into disfavor (Hudson Parsons, 2009).

³ It showed Obama saying “making sure your tires are properly inflated … could save all the oil that they are talking about getting off drilling if everybody was just inflating their tires?” and concluded with “Barack Obama: Not Ready to Lead” as “Running on Empty” played in the background.

⁴ Music also famously backfired when Ronald Reagan referenced what he thought was the uplifting message in Bruce Springsteen's “Born in the USA.” Despite its up-tempo melody, Springsteen's song was an anti-war anthem criticizing the government's treatment of veterans. Springsteen complained that Reagan was co-opting his song's message, and Reagan's pandering backfired (Dixon, 2012; Kidd, 2011).

⁵ The Copyright Act, 17 U.S.C.S. §106, grants a copyright owner the rights to:

(1) reproduce the work in copies or phono records;

(2) prepare derivative works;

(3) distribute copies of the work by sale, rental, or lending;

(4) perform the work publicly;

(5) display the work publicly; and

(6) in the case of sound recordings, perform it publicly by digital audio transmission.

⁶ To sustain a commercial misappropriation claim under California law, a plaintiff must prove the defendant appropriated plaintiff's identity, name, or likeness to defendant's commercial advantage, without consent, and caused tangible economic injury (Cal. Civil Code §3344).

An excellent resource for state-by-state misappropriation/publicity laws and practical Legal Guides on the use of identity for commercial and journalistic purposes, is The Reporter's Committee for the Freedom of Press (rcfp.org) and its First Amendment Handbook: http://www.rcfp.org/first-amendment-handbook/false-light-misappropriation-right-publicity.

⁷ McCarthy's (1987), The Rights of Publicity and Privacy (West Group), is a widely recognized hornbook detailing many of the rights and issues discussed herein and one that media scholars may wish to consult.

⁸ Readers desiring more information on misappropriation and its intersection with trademark and various tort claims are directed to Cornell University Law School's Legal Information Institute: http://www.law.cornell.edu/wex/publicity. In addition, Harvard's Berkman Center for Internet and Society (http://cyber.law.harvard.edu/) Digital Media Law Project also provides a Legal Guide with examples and recent cases pertaining to uses of identity: http://www.dmlp.org/legal-guide/using-name-or-likeness-another.

⁹ A performer using a stage or corporate name may, however, be able to protect it under state law from unfair competition or fraud, but this is not equivalent to a trademark (Seiter & Seiter, 2012).

¹⁰ Therefore, consumers seeing a shirt would need to think of it not as something worn, but as a logo signaling a commercial source.

¹¹ Alternatively, a business could license a musical composition for its exclusive use or commission an original work, making it the exclusive owner. This would enable the business to cultivate an association between the song and brand, while preventing others businesses from using it. The song would function like a trademark, but remain a copyrighted work.

¹² Preemption prevents states from bestowing copyright-like protections on materials that Congress intended to be un-copyrightable or in the public domain (Forest Park Pictures v. Universal Television, 2012). Preemption functions properly only if the “subject matter of copyright”' is construed to include all works of the type addressed by copyright, even if federal law does not protect them independently (NBA v. Motorola, 1997). If it were otherwise, states could expand copyright protection as far as they wished on the theory that materials protected by the state did not meet federal standards, so were not preempted.

¹³ A more common type of infringement is when a competitor/infringer uses a trademark to pass off counterfeit goods or services or to suggest that its products or services emanate from the trademark owner, thereby confusing consumers regarding the source (Sports Authority, Inc. v. Prime Hospitality Corp., 1996). Another type of infringement pertains to commercial advertising and can be brought against business competitors (POM Wonderful v. Cocoa-Cola, 2014). Additionally, a limited group of trademark owners can claim “dilution” under the Federal Trademark Dilution Act. This requires proof that: the trademark is well-known and famous; it is inherently distinctive; the defendant used it for commercial purposes, in commerce; and by doing so has demonstrably diluted the distinctiveness of the trademark such that consumers no longer know what it designates (Playtex Products v. Georgia-Pacific, 2004).

¹⁴ Generally, when First Amendment values of political speech conflict with private interests (such as trademark or misappropriation), the First Amendment prevails (FEC v. Colorado Republican Campaign Commission, 2001; McCutcheon v. FEC, 2014).

Additional information

Notes on contributors

Kimberlianne Podlas

Kimberlianne Podlas (J.D., University at Buffalo) is an associate professor at the University of North Carolina, Greensboro Department of Media Studies, and previously practiced law in New York. Her research focuses on the law of contemporary media and depictions of law in media.