When is a trumpeter named Miles not allowed to go by Miles? Or open a cafe using his name? Or pose for a black-silhouetted profile of himself playing said trumpet?
The heirs of Miles Davis filed a lawsuit against Miles’ Cafe, a jazz cafe started by a jazz fan who plays trumpet and goes by “Miles” (Satoru “Miles” Kobayashi).1 Since its filing, the cafe has changed its name to SOMETHIN’ Jazz Club. (You can see the old name and the new on Miles’ Cafe’s Facebook page.)
While this is not strictly a law and tech lawsuit, we do cover trademark issues on Lex Technologiae, and this case allows us to examine the ins-and-outs of trademark law and litigation. Any trademark litigation, of course, starts with the trademarks that have allegedly been infringed.
What trademarks are implicated?
Miles Davis Properties LLC, the entity run by the heirs of Miles Davis, owns a few trademarks. The USPTO database show the following trademarks being owned by Miles Davis Properties LLC:
|Serial Number||Reg. Number||Word Mark||Check Status||Live/Dead|
|2||77770075||KIND OF BLUE||TARR||LIVE|
|4||77770072||KIND OF BLUE||TARR||LIVE|
Miles Davis Properties’ lawsuit covers two of these marks: serial number 75430133 and 77770108. The first mark is a typed drawing of the name “Miles Davis” for use in clothing, namely men’s and women’s t-shirts, vests, and ties (international class 25). Registered in 1999, this mark is an odd one to be used against a cafe.
The second mark is more recent—registered in 2010—and covers more relevant services: “Music publishing services; entertainment services in the nature of a website providing information relating to music, motion pictures, and artwork.” (International Class 41.) This second mark—technically a service mark—is also registered under International Class 42 for “computer services, namely, creating an on-line community for registered users to participate in discussions.”
While neither of the goods or services protected under either of the two marks is spot on for a cafe, the second mark comes closest. After all, Miles’ Cafe does advertise entertainment services on its website and Facebook page. Nevertheless, the use of these marks by Miles Davis Properties LLC in this lawsuit does stretch each mark’s stated purpose.
Miles Davis Properties is claiming a third mark, however. Miles Davis Properties’ Complaint states in paragraph 10(b) that uses “over the past 55 years have made the Silhouette Profile immediately recognizable to the public as the source of Miles Davis’ entertainment services.” For example, the black-silhouette of a trumpet player was used on a number of Miles Davis’ album covers. It is not, however, a federally registered trademark.
Marks don’t have to be registered to be protected
People register marks to obtain presumptions in their favor in a trademark action. For example, if the Silhouette Profile of a trumpeter was a federally registered trademark, then Miles Davis Properties wouldn’t need to prove that the image evokes Miles Davis (and thereby Miles Davis Properties) as a source of the good or service. Federal registration results in this being presumed.
So you can sue for trademark violations even if you have not registered your trademark, but you will have to prove that your mark evokes you and identifies you as the source origin for a specific good or service. This even allows someone like Miles Davis Properties to sue even if their federally registered trademarks don’t cover the way the trademark is being used. (Think of the t-shirt trademark being used against a cafe.) The trademark won’t benefit from the presumptions described above, but the lawsuit can still go forward.
It all comes down to the likelihood of consumer confusion over the mark.
Likelihood of confusion and its role with un-registered marks
The Lanham Act outlines prohibitions against false designations of origin in 15 U.S.C. § 1125. It states that anyone using a “word, term, name, symbol, or device” in connection with a good or service which:
is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.2
This grants anyone a cause of action against someone else who is naming a good or service in a way that is likely to lead to confusion over the source of the good or service. This is the underlying ground for any trademark lawsuit, and the grounds upon which Miles Davis Properties base their claims (especially for the black-silhouetted trumpeter).
The problem with trademarking a name
Personal names are problematic trademarks. A name is merely descriptive of an individual, and many individuals might have the same or similar names. For this reason, a secondary meaning must be shown to the USPTO before it typically grants registration over a name-based trademark. Miles Davis, for instance, would need to show that his name has become more than an identifier of him, but that it has come to identify the source of a specific good or service. (Music, t-shirts, websites, etc.)
If a name is successfully registered as a trademark, there are still fair-use exceptions for the use of that name. In other words, you won’t find folks being able to prevent, say, another Miles Davis from picking up a trumpet and playing jazz (or using his name to advertise his jazz playing). The second Miles, however, might be limited in the specific ways he advertises it or makes money from it (no t-shirts, perhaps). This is one reason why folks take stage names.
Property over-reach, or why I think this case is important
People over-reach when it comes to their property, whether it be physical or intellectual, and this case provides an example of this. I do not think Miles Davis’ heirs should succeed in a lawsuit over these issues. The claims stretch the purpose of the trademarks, and it smacks of an approach where they might view another trumpeter named Miles as infringing their marks.
Miles’ Cafe, however, has changed its name to SOMETHIN’ Jazz Club. From where I sit, despite my belief the lawsuit over-reached, this is a positive outcome. It appears, based on this evidence, that both sides were reasonable and found a way to move forward without expensive court battles. (Although I do not know if this was done by settlement, or by Miles’ Cafe on its own.)
Still, it bears remembering that property over-reach can have negative results. Do we really want folks to lose their ability to use their own names because of trademark? It doesn’t really happen now, for a number of reasons, but it could if the more strained arguments of some trademark owners were accepted as law.
With the potential for over-reach, and the loss of one’s identity if we’re not too careful, I’ll leave you with a paper that examines the dangers of various laws that commoditize the self: When selling your personal name mark extends to selling your soul, by Yvette Liebesman, and published by the Temple Law Review.