Trademark on That Beat!
By: Emily Marczak
Edited By: Christine-Marie Lauture, Esq.
“Run that back, Turbo!” “Another one.” “Yo, Pi’erre, you wanna come out here?“
These lines sound familiar? Hip-hop songs often have these examples of audio clips at the intro of a song. These sound clips are known as producer tags, beat tags, or drops. The tags function as a branding tool for producers that helps listeners identify the creator of the beats of the songs they enjoy. Traditionally, a producer tag will include the producer’s name in a creative way, such as Jetsonmade’s “Oh lord, Jetson made another one”[i] or more simply, like Mike WiLL Made-It’s tag, which just repeats his professional name – “Mike WiLL Made-It!”[ii] Producer tags originated in the ‘90s when DJs would exclaim their name over mixtape tracks. In the late ‘90s, producers of that period — such as Swizz Beatz — would typically shout their name over their productions for artists to assert their presence as creators, or as a way to punctuate a rapper’s flow.[iii] Without this tag, casual listeners may not have noted their contributions. In the early 2000s, producer shoutouts by rappers became more common (Fabolous was good for this in his DJ Drama mixtapes).[iv]
The producer Bangladesh — who has produced beats for artists such as Usher, Ludacris, Gucci Mane, and Beyoncé[v] — stated that he did not even know what being a producer meant when he was growing up, and started questioning who made the beats behind songs.[vi] In order to discover this information, Bangladesh started reading the credits.[vii] Today, however, with a dwindling CD market, the details crediting producers are not as readily available.[viii] Producers devote a generous amount of time creating tracks, and they have their own individual style when it comes to their crafting. Because producers are so essential in the creation of a song, they have a strong incentive to protect their brands.
The burning question: if producers desire to use legal mechanisms in order to protect their brand through their producer tag, what avenue should they use?
Producer Tags
Producer tags became particularly well known and more mainstream in 2016 after the release of Kanye West’s “Father Stretch My Hands Pt. 1.”[ix] In this track, rapper Future smoothly recited, “If Young Metro don’t trust you, I’m gon’ shoot you” following the exuberant crescendo of a choir.[x] This producer tag was so appealing to listeners, that it spawned off plenty of memes and Vines involving Metro Boomin’s producer mark in Kanye’s song, along with compilations of songs that have Metro’s tag.[xi] The tag embodied a major change in hip-hop as producers were starting to truly assert their prowess and ability to have their own claim to fame — regardless of being the performer.[xii]
Sometimes producers have multiple tags that identify them. The most notable producer tags arguably come from Metro Boomin. From “Metro Boomin want some more…;”[xiii] and “If Young Metro don’t trust you, I’m gon’ shoot you;”[xiv] to “Young Metro! Young Metro! Young Metro!; Metro be boomin!; Ayy Lil Metro on that beat!”[xv] – his presence is hard to miss.
Another producer, Murda Beatz has used “Murda on the beat so it’s not nice”[xvi] and a simpler “Murda”[xvii] at the beginning of some songs that he has produced. Murda Beatz stated that at the beginning of his career, he was using a producer tag to protect himself then later discovered that by using the tags, “it was helpful branding.”[xviii]
A potential drawback to the rise of tags is that if every song on the radio has them, (mainly hip-hop and now pop songs) then the tags may become too repetitive or may even lose their significance. Producer Bangladesh mentioned that there are newer producers who are tagging their beats while not being skilled in producing. Tagging in this scenario would be detrimental to the producer as they are not producing quality beats.[xix]
Regardless, producer tags’ popularity have been migrating outside of the U.S.[xx] With the steady increase in interest in the use of tags, producers may want to seek protection of over them — especially since the attraction has been rising due to producers wanting to protect their work from unauthorized use.[xxi]
Trademarks vs Copyrights
When it comes to protecting sounds, trademark and copyright law are the applicable legal mechanisms available. Trademark law — through the Lanham Act — protects marks that identify the source of a good or a service.[xxii] The Copyright Act of 1976 protects original works of authorship that are fixed in a tangible form of expression — such as literary works, musical compositions, pictorial, graphic and sculptural works, motion pictures, and sound recordings.[xxiii] Courts have set precedent as to when intellectual property should be protected under trademark law versus copyright law.
First, in Dastar Corp. v. Twentieth Century Fox Film Corp., the U.S. Supreme Court held that the Lanham Act does not prevent unaccredited copying of uncopyrighted work.[xxiv] The Court declined in stretching the application of the Lanham Act, as it would “cause it to conflict with copyright law,” as copyright law is the branch of intellectual property that specifically grants the public the right to copy a work once the copyright has expired.[xxv] If the Court recognized the trademark action here, then the provisions of the Visual Artists Rights Act that allows an artistic work’s author “the right to claim authorship,” would become meaningless.[xxvi]
Another notable case in distinguishing copyright law from trademark law is Phoenix Entertainment Partners, LLC v. Rumsey.[xxvii] In this case, the U.S. Court of Appeals for the Seventh Circuit held that consumer confusion which results from a pub’s unauthorized playing of digital copies does not involve passing off a tangible good sold in a marketplace.[xxviii] The Court distinguishes again between copyright and trademark by stating that the aim of copyright is to foster creative work, whereas the aim of trademark is not aimed at promoting creativity, but rather competition.[xxix] This Court followed Dastar’s ruling in that a trademark claim cannot be invoked to assert what is really a copyright infringement claim.[xxx]
Trademarks
“You know how if you buy a [pair of] Jordans, you want the Michael Jordan sign on the side to show that you paid money for those shoes? It’s the same with tags.”[xxxi] -Zaytoven
Producer marks allow individuals to identify the creator of a beat, which is why protection for producer beats should fall under trademark, as opposed to any other form of intellectual property. Trademarks are used to identify and distinguish a source of a good from one party to another.[xxxii] Tags on beats allow listeners to distinguish a beat from one producer to that of another, allowing listeners to know “that they’re getting that certain quality.”[xxxiii] Given the rise in the popularity of tags, if others try to imitate another producer’s beats, they could potentially be stealing consumers and listeners by intentionally ripping off the goodwill and reputation of that producer. Trademarks also have the benefit, unlike copyright, of never expiring, so long as the required trademark maintenance is upheld. If so, a producer tag can always have protection.
Sound Marks
Trademark law allows for the protection of sound marks. Sound marks are not as common as, for example, word marks or design marks and present their own unique difficulties when it comes to federal registration. The U.S. Trademark Manual of Examining Procedure (“TMEP”) §1202.15 identifies sound marks as marks that “identify and distinguish a product or service through audio rather than visual means.”[i] Sound marks are source indicators when they assume a “definitive shape or arrangement.” In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).[ii] Sounds must be “arbitrary, unique or distinctive” and “can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even anonymous, source.” In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009). There is a distinction between sounds that imitate “commonplace” sounds which must be shown to have acquired distinctiveness and those sounds which are unique, different or distinctive. Gen. Electric Broad. 199 USPQ at 563 (TTAB 1978). Some examples of commonplace sounds are alarm clock sounds and the ringing of telephones.
In an application for a sound mark, the applicant is not required to submit a drawing.[iii] Instead, the applicant should indicate that the mark is a “Non-Visual mark.”[iv] TMEP §807.09. Since drawings are not listed in the record of a sound mark, a description of the sound “is the only means for presenting the essence of a mark.”[v] As a part of a trademark application, a specimen is required. For a sound mark, an applicant must submit a specimen that contains a sufficient portion of the audio or video content to show how the mark is used in connection with a good or service.[vi] TMEP §904.03(f).
Sound is unique as a trademark because it depends on the perception of the listener, and it requires a level of distinctiveness for an individual to subliminally associate a source.[vii] As mentioned earlier in In re Gen. Electric Broad. Co., the TTAB has split sounds into two categories: distinctive or commonplace. Moreover, sound marks must be deemed to not have a functional purpose as used in connection with the underlying goods or services in order to be protected as a trademark. A sound mark will be considered functional when: “(1) it is essential to the use or purpose of the goods or services; or (2) if it affects the cost or quality of the goods or services, such that the exclusive right to use the sound would put competitors at a disadvantage.” In re Vertex Grp. LLC, 89 USPQ2d 1694, 1702-03 (TTAB 2009). Additionally, sound marks for goods that make sound in their ordinary course of operation are only registerable upon a showing that the sound has become distinctive through substantially exclusive and continuous use.[viii] Examples of functional sounds include signals, telephone sounds, and alarms.[ix] The TTAB refused to register an alarm sound used with a personal safety device because the proposed mark was functional as the use of an audible alarm was essential to the use or purpose of the applicant’s products. In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009).
The National Broadcasting Company (NBC) was the first recipient of a sound mark for its chimes on radio broadcasting in 1947 and then later obtained a registration for the chimes on its broadcasting services in 1971.[x] Despite the first sound mark being obtained in 1947, there are only around 234 sound trademarks that are actively registered as of February 2020, in which about 36 consist of familiar sounds.[xi]
As producer tags are distinctive and indicate the source of a good, they should be able to overcome the difficulties that come with registering a sound mark, since they would not be considered ‘commonplace sounds’ under Gen. Electric Broad. There is a slight difficulty when a producer has several identifying producer tags, as is the case for Metro Boomin. Multiple trademark registrations would have to be made for each individual tag that the producer uses to ensure maximum protection, as well as a consistency for each use. In order to overcome any registration refusals for failure to function as a trademark, producers should be mindful that their tags are applied for within the relevant classes of goods and/or services they associate their tags with (e.g., Class 9 for recorded/downloadable music or Class 41 for entertainment services, namely, music production).
Infringement of a Sound mark
If a producer’s sound mark is infringed upon, what legal recourse could a producer take? The only case involving a sound infringement is Ride the Ducks, LLC v. Duck Boat Tours, Inc.[xii]’[xiii] The plaintiffs at issue claimed that the defendants had infringed on the quacking noises that were used in their respective duck boat tour company — the defendant held a similar business that was competing with plaintiff’s. [xiv]The court utilized the distinctiveness test that was used in In re General Electric Broadcasting Company, Inc. and found that the quacking sound was not inherently distinctive and that the evidence of secondary meaning was insufficient.[xv] The Court found that: (1) Plaintiff had not shown that it had used the quacking sound in the market long enough for the sound to be able to acquire a secondary meaning in the minds of tour customers, and (2) plaintiff’s advertising with regards to the sound did not establish it as “representative of Plaintiff’s tour operations.”[xvi]
This area of trademark law is underdeveloped, but when it comes to producer tags, infringement would likely be easier to prove, assuming a likelihood that the producer tag’s sound would be considered distinctive. If the producer is popular, it would be easier to prove the sound mark’s respective popularity, and that the infringer not only would have access to the mark, but would also intend to use it to ride on the producer’s goodwill.
Conclusion
Albeit difficult, registering a sound mark is not impossible. In 2020, Pitbull received two trademark registrations for his signature yell, “EEEEEEEYOOOOOO” used in music — one for “entertainment services in the nature of live musical performances” and another for “musical sound recordings; musical video recordings.”[xvii]’[xviii] This is a rare win for a sound trademark, as this registration is likely the first of its kind for being a sound mark on the Principal Register for musical sound tags.[xix] Hopefully this demonstrates an upcoming trend in registering sounds. Producers have been using tags for a long time in order to both protect against individuals who steal beats, as well as create a brand for themselves. Registering a sound mark would further all of their aims and ensure protection, which is especially important given the increasing popularity of tags. This is a potentially significant avenue for those in hip-hop to take advantage of and maximize their intellectual property value.
Citations
[i] See for example, Suge by DaBaby
[ii] https://www.coolaccidents.com/news/10-best-hip-hop-producer-tags
[iii] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[iv] https://medium.com/bandbasher/super-producers-dont-know-how-to-feel-about-tags-either-f49d37de54f9
[v] https://www.complex.com/music/2010/11/bangladesh-tells-all-the-stories-behind-his-biggest-hits/
[vi] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[vii] Id.
[viii] https://medium.com/bandbasher/super-producers-dont-know-how-to-feel-about-tags-either-f49d37de54f9
[ix] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[x] https://www.youtube.com/watch?v=wuO4_P_8p-Q
[xi] https://knowyourmeme.com/memes/if-young-metro-dont-trust-you
[xii] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[xiii] See for example, Ghostface Killers by 21 Savage, Offset & Metro Boomin ft. Travis Scott,
[xiv] See for example, Father Stretch My Hands Pt1 by Kanye West; Rap Saved Me by Offset, 21 Savage & Metro Boomin ft. Quavo
[xv] See for example, Hercules by Young Thug
[xvi] See for example, November Rain by Kris Wu
[xvii] See for example, Motive by Ariana Grande (ft. Doja Cat)
[xviii] https://variety.com/2020/music/news/are-producer-tags-on-hip-hop-songs-a-trademark-of-quality-or-just-noise-1234845887/
[xix] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[xx] See for example, Eternal Sunshine by Epik High (Prod. SUGA)
[xxi] https://daily.redbullmusicacademy.com/2016/04/if-young-metro-dont-trust-you
[xxii] https://www.law.cornell.edu/wex/lanham_act
[xxiii] https://www.copyright.gov/circs/circ01.pdf
[xxiv] Dastar Corp. v Twentieth Century Fox Film Corp., 539 US 23, 123 S Ct 2041, 156 L Ed 2d 18 [2003].
[xxv] Id. at 23.
[xxvi] Id. at 23.
[xxvii] Phoenix Entertainment Partners v Rumsey, 829 F3d 817 [7th Cir 2016].
[xxviii] Id.
[xxix] Id. at 825.
[xxx] Id. at 826.
[xxxi] https://www.mic.com/articles/147403/if-young-metro-don-t-trust-you-charting-the-rise-of-beat-tags-from-bangladesh-to-atlanta
[xxxii] https://www.uspto.gov/trademarks/basics/trademark-patent-or-copyright
[xxxiii] Id.
[i] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e2927.html
[ii] Id.
[iii] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-800d1e1656.html
[iv] Id.
[v] Kawasaki Motors Corp. v. H-D Michigan. Inc., 43 U.S.P.Q.2d 1521 (T.T.A.B. 1997).
[vi] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e763.html
[vii] See In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).
[viii] https://thetmca.com/whats-that-sound-it-might-just-be-a-trademark/
[ix] Id.
[x] https://www.natlawreview.com/article/sound-marks#:~:text=The%20first%20registration%20for%20a,for%20broadcasting%20services%20in%201971.
[xi] https://jipel.law.nyu.edu/eeeeeeeyoooooo/
[xii] Ride the Ducks, L.L.C. v Duck Boat Tours, Inc., CIV.A. 04-CV-5595, 2005 WL 670302 [ED Pa Mar. 21, 2005].
[xiii] Christopher Greene '21, "Metro Boomin Want Some More" Intellectual Property Rights: Why Producer Tags Can & Should Be Protected by Trademark Law, 53 Creighton L Rev 603, 610 [2020].
[xiv] Id.
[xv] Ride the Ducks, L.L.C. v Duck Boat Tours, Inc., CIV.A. 04-CV-5595, 2005 WL 670302, at *8 [ED Pa Mar. 21, 2005].
[xvi] Id. at 9.
[xvii] https://www.radio.com/music/pop/pitbull-has-trademarked-a-sound-hear-his-signature-yell
[xviii] https://www.lexology.com/library/detail.aspx?g=b7d585c9-bcff-4c00-a3a2-3177138d7c6e