Ben Coogan and Georgia Campbell

Shake It Off or You’re Fired: Protecting slogans, phrases, or even lyrics

Ben Coogan and Georgia Campbell

May 2 2017

Trade marks

When people think of trade marks, famous brands, business names or logos generally spring to mind, such as the McDonald’s ‘M’ or Apple Inc.’s apple. But phrases that are associated with a brand, such as Nike’s famous slogan, “Just Do It“, can also be registered as trade marks.

Over the years, various celebrities have also registered phrases associated with them as trade marks. Socialite Paris Hilton famously managed to trade mark her catchphrase, “That’s hot!” and sued Hallmark for using her image and the catchphrase on a birthday card without her permission.

Trade marking phrases or an expression is also common in the sporting world. For example, in 1988 when the Los Angeles Lakers were looking to claim a third consecutive NBA championship and the team starting using the term “three-peat“, Coach Pat Riley registered it as a trade mark for use on merchandise.

Musicians have also successfully registered the titles of their songs as trade marks, such as David Bowie and his song, Ziggy Stardust.

But can you trade mark lyrics within songs?

Taylor Swift certainly thinks so. In 2015, the pop star applied to register certain lyrics from her 1989 album as trade marks in the U.S. ahead of her world tour. Some of the phrases she successfully registered as trade marks included “this sick beat” from her hit song, ‘Shake it Off’, as well as “nice to meet you, where you been?”, “cause we never go out of style” and “party like it’s 1989”. The goods covered by her trade marks include clothing, home decor, bags and jewellery.

By registering these phrases, Swift ensured that non-official tour merchandise featuring some of the trade marked phrases could not be sold without infringing her marks, thereby protecting her business.

Registering slogans, phrases or lyrics as trade marks

Not all celebrities have successfully been able to register phrases as trade marks. Donald Trump, for instance, applied to register the catchphrase “You’re fired” from his popular reality television show, The Apprentice, as a trade mark in the U.S., but his application was rejected by the U.S. Patent & Trade Mark Office.

So if you wanted to register certain lyrics from a song you wrote or a phrase or slogan associated with your brand or business as a trade mark for marketing purposes in Australia, how would you go about it?

The test for determining whether a phrase or slogan is capable of registration as a trade mark is largely the same as that used for applications involving single words, whereby you must be able to show that the phrase inherently distinguishes your goods or services from those offered by other people or businesses.

For example, in T.G.I. Friday’s Australia Pty Ltd & Anor v TGI Friday’s Inc & Anor [2000] FCA 720, Friday’s Australia, who sought the cancellation of Friday’s Inc.’s “TGI Friday’s” trade mark, argued that the phrase “TGI Friday’s” was not distinctive because:

  • it was an ordinary English expression (the acronym T.G.I.F., which stands for “Thank God It’s Friday”, had apparently been used since the 1940’s);
  • there was a natural association of the words with relaxing with a drink;
  • over the years a number of independent uses in relation to bars or restaurants have existed; and
  • the expression is constantly used in the community.

However, the Federal Court (comprising Wilcox, Kiefel and Emmett JJ) found that the “TGI Friday’s” trade mark had always been capable of distinguishing restaurant services provided by one proprietor from the services of another proprietor who did not use the trade mark because although it “may suggest notions of relaxation and refreshment”, the expression TGI Friday’s” of itself “means nothing” and “does not inherently refer to restaurant services.”

So, if a phrase associated with your business or featured in your song is a commonly used expression, such as Swift’s “this sick beat“, and the phrase does not inherently refer to certain goods (in Swift’s case, clothing, home decor, bags and jewellery), you may be able to successfully register the phrase as a trade mark.

Are any other protections available for slogans, phrases or lyrics?

The only other law that could potentially protect slogans, phrases or lyrics is that of copyright. Unlike trade marks, it is not necessary (and nor is it possible) in Australia to ‘register’ copyright; it simply subsists in certain works. However, courts in Australia are generally reluctant to find copyright exists in short phrases: see, for example, State of Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) [2009] FCA 737.

Therefore, if your business is associated with a particular phrase or slogan which you wish to protect, the best option is to apply to register that phrase or slogan as a trade mark.

For more information on registering phrases or slogans as trade marks, please contact Ben Coogan and Georgia Campbell.