OK, confession time: During a recent night of insomniac action (brought to bear by some jackasses whom, while they shall remain nameless, as I am indeed a gentleman if nothing else, will some day soon face the inevitable karmic retribution that their myopic, ego-driven actions certainly merit) I came across the show Californication on Netflix Instant. While my instant queue is full of all sorts of, shall we say, more staid films of which I could have availed myself, none of these were particularly compelling (remember, I was tossing and turning and mad).
So…Californication it was.
The show is by no means bad, and it’s imminently watchable. Duchovony is far better in it than I recall him being in the X-Files [update: the wife just said this upon giving this post a very cursory glance (she didn't finish it): "Duchovony wasn't in the X-Files, he was in Red Shoe Diaries." (Whatever the hell that is).] It actually works out pretty well for the occasional 3AM trying-to-get-back-to-sleep dealio.
In any case, when the series title popped up on my screen, I, as I imagine most people who hate the Red Hot Chili Peppers (or, at least the post “The Uplift Mofo Party Plan” Chili Peppers) sort of cringed at the name. While I’m not 100% certain if I’ve ever heard the song “Californication” (or, for that matter, any of the songs off of said album), I am damn confident that there is indeed an album and song of that name by the Red Hot Chili Peppers.
So, being a fan of all things IP, during the title sequence I wondered things like: “Seems like there might be a likelihood of confusion going on here.” While you can’t copyright a title, you can get a trademark on a phrase or even a word – so long as it’s unique enough, and satisfies all the other elements required to do so (by the way, please construe none of this as legal advice; it is simply observational commentary, and if you have any concerns over trademark issues, get thee to a lawyer).
I would then watch the show/fall asleep, and forget about my little IP analysis.
However, moments ago, for reasons I cannot explain, I fired up Quicksilver and did a Wikipedia search on Californication. While I’m not sure why I did this, I do know it had more to do with being curious about who did the theme song than any TM issues.
A few lines into said entry, however, my IP interests were quickly re-piqued.
Whomever created this entry did, imho, a pretty good little thumbnail on TM that I would say might just be beneficial for anyone in a band, etc.
Here it is (not sure if it’s cool or not to quote from Wikipedia; if not, I’ll pull it down – let me know):
The Red Hot Chili Peppers filed a lawsuit on November 19, 2007 against Showtime Networks over the name of the series, which is also the name of the band’s 1999 album and hit single. They state in the lawsuit that the series “constitutes a false designation of origin, and has caused and continues to cause a likelihood of confusion, mistake, and deception as to source, sponsorship, affiliation, and/or connection in the minds of the public”.
Pointing to Dani California, a character who appears in both the series and three songs by the Red Hot Chili Peppers (including Californication) as well as confusion when shopping for their album and that of the series soundtrack, the band members are seeking unspecified damages. They are also requesting that a new name be found for the TV show.
Showtime Networks is expected to argue that the band did not in fact create the term Californication. They point out that the term appeared in print in Time Magazine in 1972, in an article called The Great Wild Californicated West. Canadian art-rock band the Rheostatics also released an album called Whale Music in 1992, with a song called “California Dreamline”. In this song, the word Californication appears in the phrase “Californication, spooning in the dry sand”.
Kim Walker, head of intellectual property at Pinsent Masons, states that the band should have registered Californication as a trademark. Instead, the only application for such was filed in April 2007 in the US, by Showtime. The mark has not yet been registered.
Walker has also stated: “Successful songs, albums and movies can become brands in themselves. What’s really surprising is how few songs and albums are properly protected,” said Walker. “The Chili Peppers could almost certainly have registered a trade mark for ‘Californication’, notwithstanding Time’s article. They made the word famous, but it doesn’t automatically follow that they can stop its use in a TV show.” “If they had registered the title as a trade mark covering entertainment services, I very much doubt we’d have seen a lawsuit. The TV show would have been called something else,” he said. “As it is, the band faces an uphill struggle.”
The matter remains unresolved.
I put the last full paragraph in ital as I hope all you in bands do give that a good look.
Again, no legal commentary or advice here, just an interesting fact pattern in an always interesting (and important) area of law.