Can I use a copyrighted term as a song title?

[Joshua K]

Jurisdiction

Pennsylvania

Hi! My band is releasing an EP, and the working title of one of our songs is "Flat Stanley," like the kids book. I'm wondering if releasing the song under this title could get us into any sort of legal trouble considering that Flat Stanley is a copyrighted phrase.

Thanks for your help!

 

[adjusterjack]

You will be infringing on copyright and trademark.

You risk being sued into bankrupcty. As popular as the character is (it's still being published) a lawsuit is almost guaranteed.

Don't do it unless you get consent from the publishers (Harper Collins).

 

[zddoodah]

Can I use a copyrighted term as a song title?

Flat Stanley is a copyrighted phrase.

No it isn't. In fact, there's no such thing as "a copyrighted term," so the answer to your question is necessarily no.

The subject matter of copyright (in general) is discussed in section 102 of the Copyright Act. Words, phrases, terms and things of that sort do not contain enough content to be protected by copyright (although a word, phrase or term may be protected by trademark law, but the purposes of copyright law and trademark law are VERY different).

I'm wondering if releasing the song under this title could get us into any sort of legal trouble

In 1997, a band called Aqua released a song called "Barbie Girl." Mattel (the maker of the Barbie doll) did not take kindly to the song and sued. The suit was dismissed by the trial court, and the dismissal was affirmed on appeal. While I can't guarantee you might not get a nasty letter or even get sued, the chances that you'd actually get held liable for anything are very low (and even the chances of getting sued are pretty low).

You will be infringing on copyright and trademark.

Sigh...

 

[PayrollHRGuy]

"Flat Stanley" is a registered trademark.

FLAT STANLEY Trademark of Trust u/w/o Richard C. Brown f/b/o Duncan Brown - Registration Number 3615114 - Serial Number 77537857 :: Justia Trademarks

 

[zddoodah]

"Flat Stanley" is a registered trademark.

As is "Barbie." In general, using a trademark as a song title or in song lyrics does not infringe on the trademark.

 

[PayrollHRGuy]

As is "Barbie." In general, using a trademark as a song title or in song lyrics does not infringe on the trademark.

But the song was protected under the fair use exception as a parody. We don't know if the OP's is "fair use."

 

[zddoodah]

But the song was protected under the fair use exception as a parody. We don't know if the OP's is "fair use."

"[T]he district court[] rul[ed] that Barbie Girl is a parody of Barbie and a nominative fair use; that MCA's use of the term Barbie is not likely to confuse consumers as to Mattel's affiliation with Barbie Girl or dilute the Barbie mark; and that Mattel cannot assert an unfair competition claim under the Paris Convention for the Protection of Industrial Property." Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 899 (9th Cir. 2002).

And the 9th Circuit "conclude[d] that MCA's use of Barbie is not an infringement of Mattel's trademark." Id., at 902.

While the case it often cited for its nominative fair use ruling, at bottom, the use simply wasn't an infringement of the trademark.

But sure, if the OP's song has nothing to do with "Flat Stanley" and the name is simply being used to garner attention, then the OP might not be able to advance a nominative fair use defense. However, I find it hard to believe that the owner of the mark could nevertheless sue successfully based on the Sleekcraft factors used in the 9th Circuit or the similar sets of factors used in other circuits.