Safeguarding Sounds in Songs: Pitbull and the Sound Trademark Revolution

Safeguarding Sounds in Songs: Pitbull and the Sound Trademark Revolution

Musicians rely on trademarks to build and protect their brands. Most musicians safeguard their brands by registering trademarks such as words and logos.^[1] Some examples include: the Rolling Stones’ “tongue” (design mark) and the band name “Metallica” (word mark).^[2] Sound marks, which identify a product through audio rather than visual means, are less common; yet they are also eligible for trademark protection.^[3] For example, emerging from her hit song “Hot Girl Summer,” rapper Megan Thee Stallion registered the phrase “Hot Girl Summer,” as it is used in various entertainment contexts.^[4] There are less than fifty sound marks to ever qualify for federal trademark protection in the U.S., and only a small percentage of those sound marks are in music recordings.^[5]

The Lanham Act, which codified federal trademark law in the U.S., defines a trademark as “any word, name, symbol or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods…”^[6] In other words, a trademark must (1) manifest a particular good or service; (2) that is distinct to the source; and (3) identify the particular source of the manifestation. Consider Megan Thee Stallion’s trademark. The phrase “Hot Girl Summer” originated from her hit song, and it became commoditized in the wake of the song’s release.^[7] Further, the phrase alone would trigger a familiar listener to recall its source—Megan The Stallion’s song: “Hot Girl Summer.”^[8] While the Lanham Act does not explicitly discuss sound marks, it does not preclude sound marks from being eligible for trademark registration.^[9] The United States Patent and Trademark Office (USPTO), which plays a supporting role to the Lanham Act, set forth guideposts by which to examine and regulate sound marks within the statutory trademark requirements.^[10]  Specifically, § 12.02.15 of the Trademark Manual of Examining Procedure (TMEP) provides that, to satisfy as a source indicator, a sound mark must “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound” with the underlying good or service.^[11] However, without codified law in this area, federal trademark officials are navigating an underdeveloped legal landscape as musical artists such as Megan Thee Stallion apply for sound mark registration as a new means of brand protection.^[12]

In October of 2019, recording artist Pitbull successfully registered two trademarks for his signature yell—“EEEEEEEYOOOOOO!”^[13] The two sound marks—U.S. Reg. Nos. 5877076 and 5877077—are for live performance and sound/musical video recordings, respectively.^[14] While sound marks are not novel, Pitbull pioneered a genre of sound marks that had not previously received trademark protection.^[15] The idiosyncrasy of Pitbull’s trademarks is best understood within the context of § 1127 of the Lanham Act, which provides that a trademark must “identify the particular source of the good or service.”^[16] Typical sound marks, such as that owned by Megan Thee Stallion, are used to identify the product but exist separate from the product itself.^[17] Alternatively, Pitbull’s trademarks are in the product they identify—the song. The Federal Signal Corporation owns a comparable sound mark on the sound its sirens make, but there is no record of such a trademark within the recording industry context prior to Pitbull’s registrations.^[18]

Trademarks exist to protect an original good or service from infringement or reputation damage. Considering that principle, Pitbull’s sound marks appear perfectly justified. The trademarked sound is distinct to the artist, it is featured in nearly every song that he produced over the three years prior to his application for trademark registration, and anyone who has listened to Pitbull’s music could identify the artist upon hearing his signature yell.^[19] Certainly, a creator who originated a product that has come to represent the brand they worked tirelessly to build should be able to protect that asset against appropriation. The question, therefore, remains: Why are sound marks an uncommon means of trademark protection? Perhaps the Lanham Act’s silence on sound marks is an indication of low demand. Alternatively, perhaps the lack of federal guidelines on sound marks has made it difficult for musicians to receive them. Only four months prior to Pitbull’s trademark registrations, the USTPO denied rapper Cardi B’s application to register a trademark for her signature sound, “Okurr,” on the ground that it is too “commonplace.”^[20] However, Pitbull’s success may have provoked a sound trademark revolution.

Many musical artists have signature sounds. Popular examples include Travis Scott’s “It’s Lit,” Da Baby’s “Let’s Go,” and Lil Wayne’s lighter flick.^[21] Trademark authorities and legal scholars anticipate an influx of artists with signature sounds to apply for sound marks analogous to Pitbull’s, and existing guidelines on the particular trademark protections are unclear.^[22] Thus, the USTPO must measure future determinations on sound trademarks against previous rulings on similar applications.^[23] The nature of the delta between Pitbull’s sound mark registration application being approved and Cardi B’s application being denied is unarticulated. Until and unless a federal statute is set forth on sound marks, the USTPO retains deference to determine which sound marks qualify for trademark protection, and in doing so the Office will develop the legal framework for decision making in this area of the law.^[24]