[The Viewpoint] Sound Marks in India: Exploring non-conventional branding [Part II]

With the concept of sound marks emerging and receiving recognition, the realization dawns on how trademarks are no more restricted to words and designs but can also be applicable to ‘sensory’ related marks such as smell and sound.

In the previous article, we had explored the concept of sound marks and how ‘distinctiveness’ can be assessed. This article aims to cover a few other aspects of sound marks that are less explored.

The core issue in this domain is the overlap between copyright and trademark protection to a musical note, since the Trademarks Act, 1999 excludes co-existence of such rights, while the Copyrights Act, 1957 under Section 45 permits the consideration of a trademark registration only for ‘artistic works’. Therefore, sound marks extracted out of ‘musical works’ are not supported by any law or statute in India. Further, there is also an unexplored component of sound marks such as producer tags. Herein, the chances of a sound mark resembling an existing music or audio track is high, which could attract a copyright infringement suit. This article attempts to evaluate these issues.

Sound marks out of copyrighted works

As a general trend, parts of copyrighted works shall be registered as trademarks after obtaining the permission of the owner of such copyrighted work. Typical examples of such extractions approved by Indian courts are movie titles, song titles, character names, etc. Section 11(3)(b) of the Trademarks Act, however, outrightly rejects registration of any conflicting trademark to a copyrighted work. Character merchandising being one of the principal causes to claim the same, this exclusion is also backed by unfair competition reasoning, since extractions from famous movies and songs are used to gain better reach [McCarthy on Trademarks and Unfair Competition]. This conflict has also been settled in cases where the owners of the copyrighted work themselves have approached courts for trademark protection to parts of their work like character names, movie titles and song titles.

In this regard, a question that arises in one’s mind is whether smaller parts of a musical work can be registered as a sound mark. Indian courts have affirmed that, if the owner of the copyrighted work and its author have given permission, then a sound mark can be registered. This stand may be compelling, since Indian courts have offered trademark protection even when the copyright owner did not consent to the same.

However, the complexity of registration related to sound marks cannot necessarily be placed on the same footing as that of registration of song titles or movie titles, since registering the latter is mainly to restrict unfair competition arising out of the marks. Whereas the former is to protect a fresh work, promoting a product or service.

In other words, short portions of a song being used as a sound mark do not aim at making revenue out of the existing copyrighted work, which is outrightly anti-competitive in nature. Nonetheless, this narrative is backed by limited precedents since short portions of a song have not been registered as a sound mark quite often except, ‘Pitbull’s’ yell “EEEEEEEYOOOOOO” which has become his signature sign and eventually acquired distinctiveness to qualify as a sound mark [U.S. Registration Number: 5877076 and 5877077]. The yell appears to be part of a song, but that does not restrict Pitbull from getting it trademarked since copyright does not include right to restrict usages of small portions of any work.

Producer tags as sound marks

On the other hand, in western pop, “producer tags” is a rapidly growing mark, wherein the producers of music videos use a certain sound or tag line in all their videos representing their production house. On most occasions, the producers themselves are the artist of the songs which strengthens their authority over the work. Famous producer tags are “Oh Lord! Jetson made another one” for the production house JetsonMade, “Oh My God! Ronny” used by record producer Ronny J, “Mike Will” for Mike Will Made It record productions, “Tank God” for the production Tank God.

Since most producers are artists themselves, the registration of Pitbull’s yell displays a welcoming sign in encouraging non-conventional marks, especially extracts of music like that of the producer tags. In fact, producer tags are comparatively easier to be registered since they have acquired distinctiveness already.

Song portions as producer tags

Another usage of a similar nature in songs can be observed in the media industry where short portions of a song are used as a background score for a production house [Gangjee, Dev, Non-Conventional Trade Marks in India]. One such example is the cut-short portion of the song “Velai Illa Pattadhari Title Track” as the background music for the production house Wunderbar Studios. In this scenario, the producer of the movie VIP was Wunderbar Studios themselves, giving them an upper hand to commercially exploit the work at later points in time as well. However, the digital partner for the said movie’s songs is the company Divo, who must have agreed to the usage of the extracted portion of the song as BGM for the production house. In this scenario, if Wunderbar wishes to register its BGM as a sound mark, then it would have the burden to prove acquired distinctiveness and will also require the approval of Divo, based on their partnership with Wunderbar.

Challenges in proving distinctiveness of chord progressions

Though registering parts of musical works seems like a boulevard to establishing sound marks, there are also uncertainties with respect to the same, mainly relating to establishing distinctiveness in short portions of musical works which share the same chord progression with other existing works. In such a scenario, the musical work, which is a song in the present case, is distinct in nature when wholly seen as a work, but becomes non-distinct when extracted in a smaller portion which can’t exceed 30 seconds. Even though chords as well as chord progressions are neither copyrightable nor trademarkable, a similar melody can certainly lead to oppositions.

Establishing distinctiveness in a 30-second soundtrack is hard, given the chances of same chord progression used in the opposed song. This is an issue especially in India, where Carnatic music is founded on the same 7 chords as result of which progressions are bound to repeat. Musical notations which are made compulsory for registration are nothing but chord progressions. Given that, the liability of establishing novelty solely lies on the MP3, which is the mark. Therefore, the musical notations submitted might back fire on the applicant in terms of sharing the chord progression with a copyrighted work.

Conclusion

The concept of sound marks has undeniably opened up the world of branding. As far as overlapping of copyright with trademarks is concerned, the mandated musical notations should be considered secondary while assessing the distinctiveness of a sound mark, since chord progression is bound to repeat and cannot be copyrighted. [Sieckmann, Ralf, Sound Trade and Service Marks–Legal Aspects]. However, when the submitted MP3 format itself lacks uniqueness, there need not be any questions about copyright protection being a barrier, since copyright does not necessarily require registration to establish its existence.

When an application for registration of a sound mark is made, the registrar could identify the submitted work to be resembling an existing work and can automatically reject the application. Further, copyright disputes with respect to sound marks must be determined based on nature of the agreement between the copyright owner and the author of sound mark.

Advancements in sound marks like production tags and usage of parts of copyrighted work can certainly find room in the existing legal domain, given that rules for sound marks are exclusively framed in the near future to help with addressing the complications discussed so far. This form of progression can certainly develop the legal framework related to non-conventional trademarks and provide sound marks the recognition it deserves.

Shradha Rajgiri and Anita Bharathi are Senior Associate and Associate respectively at Shivadass & Shivadass (Law Chambers).