Breakin' the Law?

December 31, 2012 3:38 PM

Can I use a trademarked fictional character's name in a song title? This will be published to CD and vinyl.

Wrote a song using the name of a Star Trek TNG character as the title. It's ready to be printed, and I'd rather not change it. The question is whether this falls under fair use, or if anybody would care. If Nirvana can do Smells Like Teen Spirit, Sex Pistols can do EMI, Ronnie and the Daytonas can do Little GTO-- and those are all actual products-- is there any reason I can't just move forward with this? Initial run of 600 pressed copies total, if that matters.

posted by l2p to Law & Government (12 answers total)

At the same time, They Might Be Giants deferred and named their song (On "John Henry" from the early 1990s) "AKA Driver," where the song would've been called "Nyquil Driver." Of course, that's a negative or at least undesired connotation for the product: "Hey Nyquil Driver, it's Nyquil-driving time!"

How does your character fare in the song? Also, are we talking Captain Picard, or a lesser character, like Reg Barkley-- you can probably guess who makes Paramount the most money. Is the song part of the fandom/filking? Paramount tolerates fanfic pretty well, as far as I'm aware, when it's part of the fandom. That doesn't mean they'll tolerate 50 Shades of Data.
posted by Sunburnt at 3:45 PM on December 31, 2012

It's about Geordi la Forge. It's a sweet song I wrote after blazing through all TNG episodes in a couple months. It's about him falling in love with the wrong women, either uninterested or, say, a hologram. It's sung from his perspective, though it's not specific enough that if you didn't know all about TNG that you wouldn't like it or think of it as anything other than a punk rock love song.

Thank you, Sunburnt.
posted by l2p at 3:55 PM on December 31, 2012

You mention fair use, but this concept, from copyright laws, has nothing to do with trademarks. Trademarks mark a particular product or type of product, and aim to protect brands from piracy. On the face of it, if you are not creating a Geordi action figure or video or something one might reasonably mistake for the Star Trek brand, you are in the clear. I agree with sunburnt, though, that if you had nasty things to say about Mr LaForge, you might get a cease and desist, but it doesn't sound like this is the case. Just don't put unlicensed Star Trek images on the cover, they would go after you for that.

Disclaimer: IANAL, IANYL. If you want to be absolutely sure, contact an intellectual property lawyer.
posted by ubiquity at 4:04 PM on December 31, 2012

I'm not a lawyer, and this isn't legal advice, but Mattel v. MCA Records is probably an interesting case to consider. Look at the claims Mattel made: violation of trademark, damage to Barbie's reputation, damage to their marketing plans, etc. I'd guess the fact that MCA could have afforded to pay, if they'd lost, factored into the decision to sue. In the end, Alex Kozinski ruled that "The parties are advised to chill," because he interpreted the song as parody, so that's kind of good news--it sounds like yours might be parody too. It's also the case that there are dozens of songs for sale on iTunes that reference ST characters, including at least one called LaForge. But you might ask yourself what you'd do if you got a letter from a law firm about this, demanding you stop selling it, destroy all copies, etc. How much would that cost you? Would it be worth it to get a lawyer to answer? Etc.
posted by Monsieur Caution at 4:09 PM on December 31, 2012

Isn't there a 90's pop song that references Captain Picard? I don't think Picard is in the title, and for all I know that band's label shares a parent company with Paramount or something, but there is precedent in the specific case of ST:TNG characters in pop song lyrics.

Another FWIW, "Geordie" is a British slang term for some regional stereotype or something (is it people from Yorkshire? People from Manchester?). So unless you specifically reference the VISOR or being the chief engineer of the Starship Enterprise, you probably have plausible deniability.
posted by Sara C. at 4:23 PM on December 31, 2012

Superman's Song by Crash Test Dummies is probably a good data point here. It's about a well-known, fictional character that's an active property. I don't recall any controversy around it.

Also: If you got sued for a little indie song about Geordie LaForge, you would get SO MUCH free publicity. Boing Boing would be all over that in a heartbeat.

And the song Sara C. wonders about is Banditos by The Refreshments, of course.
posted by chudmonkey at 4:54 PM on December 31, 2012

I feel like the Spin Doctors tune Jimmy Olsen's Blues was subject to a lawsuit, but I can't find any corroborating evidence of such a suit online. Maybe it was just a rumor...
posted by Andrhia at 4:57 PM on December 31, 2012

Not a trademark case but Rosa Parks successfully sued OutKast for using her name in a song title.
posted by chrchr at 5:40 PM on December 31, 2012

This guy has some words on problematic areas with citations. Paramount seems pretty warm to tribute type activities historically, FWIW. Associates of mine existed as a punk tribute band with video documentation in Trekkies2 for a decade without issue.
posted by Ogre Lawless at 6:35 PM on December 31, 2012

The Swedish band S.P.O.C.K. (formerly SPOCK) had to change their band name. They got away with adding the dots, so it officially stands for "Space Pilot On Channel K" now. However, they also have songs containing the name "Dr. McCoy" (about the character) and "Never trust a Klingon" (I assume Paramount does have the rights on 'Klingon'). I'd look into the band history about their name change or maybe contact them through their homepage. If there's anyone who has experience with such a specific thing as using Star Trek character names in song titles, it's them.
posted by MinusCelsius at 6:14 AM on January 1, 2013

Not a trademark case but Rosa Parks successfully sued OutKast for using her name in a song title.

That article says that the result was a settlement rather than a court verdict.
posted by XMLicious at 11:39 AM on January 1, 2013

Oh, the other example that comes to mind is the musical act KLF, which temporarily took on the moniker "The Time Lords" and released a single "Doctorin' the Tardis," which got them very heavily sued by the BBC, owner of the Doctor Who franchise. That's British court, so the outcome doesn't apply to your situation, but, well, is Paramount less litigious than the Beeb?

If I were you, I'd call it "Geordi." You're allowed to sing about trademarks, but you can't mark your sale items (the song/album in this case) with their name. I'm trying to think whether Geordi has any kind of nickname or codephrase that refers to him specifically, but nothing's coming to mind.

Also, by the way, you may be interested in the LeVar Burton episode of The Nerdist podcast. He's got an interesting hypothesis as to why it is that Geordi never gets the girl.
posted by Sunburnt at 6:41 AM on January 2, 2013