James Bond music theme a valid EU trademark?
The music theme of the James Bond movies; who doesn’t know it. In particular, the mysterious guitar riff will sound familiar to most people. The composition, as well as several specific recordings of it, are of course protected under copyright and related rights (neighbouring rights). But recently, a part of 25 seconds of the 007-theme has also become a protected sound mark in the EU. The trademark registration can be found and listened to here.
A sound can be a valid trademark if it is distinctive
A sound can serve as a valid trademark under certain circumstances. That in itself is nothing new. However, the sound in question must meet the requirements that apply to any sign in order to function as a trademark. In particular, the sound must be distinctive. Last year I already wrote about the judgment of the General Court of the EU, in which the Court ruled that the sound of opening a can of beer or soft drink, followed by the fizzing sound of pouring the drink into a glass, could not be a valid EU trademark, because that sound is insufficiently distinctive for goods such as beer and soft drinks.
The EUIPO found that the James Bond Theme could not constitute a valid trademark
The James Bond Theme, too, raises the question of whether it is sufficiently distinctive to serve as a trademark. The EUIPO was initially of the opinion that the piece of music could not serve as a trademark. According to the EUIPO, the mark applied for was too long and too complex to serve as an indication of origin. Thus, the relevant public would not perceive the sound as a trademark.
The BoArd of Appeal finds that the James Bond Theme is a valid trademark
Applicant Danjac LLC (the company that exploits all rights concerning James Bond) appealed the decision by the EUIPO. The BoArd of Appeal of the EUIPO decided differently and concluded that the James Bond Theme is indeed distinctive and that it can also serve as an indication of origin. In doing so, the BoA considered – in line with established case law – that the criteria for assessing the distinctive character of a sound mark are no different than those for other categories of marks.
However, in applying these criteria it is important to note that it can be more difficult to establish distinctive character for certain categories of signs. For example, the public is used to identifying word and figurative marks as distinctive, but this is not necessarily the case for sound marks. In some sectors (such as TV) the use of sound marks is common and in such cases the relevant public may therefore be more likely to actually perceive a sound mark as an indication of origin.
How does the BoA arrive at this completely different result?
The BoA gives a nice description of the 25-second part of the James Bond Theme, as submitted:
“The sound mark at stake can be described as comprising three musical parts distinctively ‘interacting’ with each other, i.e. the characteristic trumpet fanfare (seconds 1-5); a kind of a dangerous and lingering ‘creeping up’ sequence, slow part (seconds 6-11); followed by a guitar solo (seconds 12-25).”
According to the BoA, the EUIPO had made “a sweeping statement regarding the behaviour of the relevant consumers, namely that the trade mark applied for was too long to be easily and instantly memorised as an indication of origin”.
Next, the BoA links to case law on the distinctiveness of slogans (“Vorsprung durch Technik“). On this basis, the BoA considers that a sound can also be distinctive if it requires a measure of interpretation on the part of the relevant public and the sound exhibits a certain originality and resonance, which makes it easy to remember and enables the relevant public to actually perceive the sound as a trademark and not as a functional element or as an indicator without any inherent characteristics.
The BoA believes that the James Bond Theme is indeed original, as it is a 25-second snippet of an existing original musical work. In addition, it also demonstrates a certain resonance, according to the BoA, since it consists of three parts that form a “dramatic entity and consistent work” and it therefore is a recognisable sound.
The fact that the mark applied for is relatively long does not lead to a different conclusion, according to the BoA. Moreover, there are other registrations of sound marks that are longer than 25 seconds. In fact, according to the BoA, an extremely short and simple sound, or on the contrary, a very long sound (such as a whole song) would be more likely to lack distinctiveness. The James Bond Theme is somewhere in between.
The BoA concludes that the James Bond Theme is eminently distinctive and can serve as a trade mark.
What lessons can we learn from this?
We can draw some lessons from this decision of the BoA, some of which already known from previous case law:
- To assess the distinctiveness of sound marks, the same criteria apply as for other types of marks;
- In order to constitute a valid trademark, a sound must (i) require a measure of interpretation on the part of the relevant public and the sound must (ii) exhibit a certain originality and resonance, making it easy to remember and enabling the relevant public to actually perceive the sound as a trademark and not as a functional element or as an indicator without any inherent characteristics;
- A sound that is very short, or on the contrary, very long, is less likely to serve as a valid trademark. For example, a short sound such as the application of Netflix’s famous sonic logo was rejected by the EUIPO for lack of distinctiveness.
I believe the BoA has come to the right decision. The requested 25 seconds of the James Bond Theme are extremely distinctive. It is clearly original and also possesses ‘a certain resonance’. In my opinion, when hearing (part of) the registered trademark, the public will immediately think of James Bond and of the company that exploits the rights of James Bond. The fact that the public will not be familiar with the name of that company (Danjac LLC), does not matter. As long as the public recognises the sound as an indicator of origin. The James Bond Theme seems to me to be eminently suitable for this purpose.
However, such a trademark registration can lead to all kinds of interesting discussions in the context of alleged infringement. The overall impression of the allegedly infringing piece of music and the trademark, as registered, will have to be compared. In music plagiarism cases, of course, this already happens, but the copyright infringement test is not the same as the trademark infringement test.
Incidentally, what makes this trademark registration particularly commercially interesting, of course, is the fact that copyright is finite (namely in the EU 70 years after the death of the author), whereas a trademark can theoretically be extended indefinitely. This, of course, potentially extends the duration of protection considerably. A sound mark is also very interesting for other companies, as sonic branding is increasingly being used.
Bonus: Trivia about the James Bond Theme
From a legal point of view, there are a lot of interesting things to say about the James Bond Theme. In the past, there has been quite some discussion about who actually wrote the James Bond Theme.
The original James Bond Theme from 1962 was composed by Monty Norman and arranged by John Barry. There have been several court cases about this in the past, as John Barry claimed to be the author of the original theme (too). Interestingly, however, the trademark application to the EUIPO does not consist of 25 seconds of this 1962 performance, but of a recording of the arrangement as made by composer David Arnold in 1997. However, that arrangement is not very different and the characteristic guitar riff is exactly the same.
What is striking is that the BoA in its decision consistently refers to ‘the first 25 seconds of the musical work’, but that is in fact not correct. The piece that was applied for as a trademark is in fact the part between minute 00:36 and 01:01 of the song that lasts a total of 02:49 minutes. The first 35 seconds of David Arnold’s arrangement consist of an introduction, but it is not yet as recognisable as the filed part.
Speaking of that signature guitar riff. That was originally played by guitarist Vic Flick in 1962. For playing that world-famous guitar riff, he received, as a session musician, a one off fee of (allegedly) only USD 15.
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