– Draeke Weseman, Weseman Law Office, PLLC
Musicians love their trademarks. Whether its Taylor Swift, applying to register everything imaginable in connection with her album “1989,” or Lionel Richie, wondering about Adele’s use of the word “Hello,” musicians seem delighted by the prospects of owning the English language.
You’ve got to approach a band like it’s a business. A lot of musicians, they have the art side down, but not the business side. For the business aspect, you get the right side brain usage. For the music, the art, you get the left brain creative side.
As front man of a Detroit hard rock band called Slight Return, Kassa has been a busy businessman, building a brand around the phrase “Welcome to the D.” In addition to operating a website at welcometothed.com, where he sells t-shirts and other items with “Welcome to the D” on it, he hosts an online talk show called the “Welcome to the D Show.” His band’s latest album was titled “Welcome to the D.” Kassa even owns trademark registrations for the phrases “The D” and “Welcome to the D” in connection with clothing and live music performance. Unfortunately, Kassa also appears to believe he owns part of the English language – at least as far as “Welcome to the D” is concerned.
When the Detroit Tigers made it to the World Series in 2012, the Detroit Metro Convention & Visitors Bureau put up banners throughout the city like the one here:
Later, Detroit Metro used similar banners for the USA Volleyball Open National Championships.
So, Kassa sued. His complaint alleged that Detroit Metro infringed his trademark rights to the phrase “Welcome to the D” by displaying the banners around Detroit without his permission.
My guess is that Kassa doesn’t read DuetsBlog. If he did, he’d know about the dreaded D-word, and he’d have grasped the irony of trying to defend “Welcome to the D.” I don’t want to discourage musicians from registering trademarks, but what Kassa and other musicians fail to grasp is that just because they own some trademark rights to some words in connection with live music performance or clothing doesn’t mean that they own – and get to completely control – a part of the English language. Trademarked words or phrases can still be used by anyone, anywhere, in non-trademark ways to refer to their commonly understood descriptive meanings. It was therefore not surprising to learn that on December 9, the court dismissed Kassa’s case.
As the court explained:
If a defendant is not using a mark as an identifier, then the mark is being used in a ‘non-trademark way’ and trademark infringement laws, along with the eight-factor analysis, do not even apply.
The court went on to find that Detroit Metro did not use the phrase “Welcome to the D” to identify the source of any goods or services, but rather as a greeting to those arriving in Detroit. This conclusion was supported by the other logos on the banners and the inclusion of the phrase “Where Champions Are Made And Championships Are Played,” which established that “the “D” in “Welcome to the D” referred to a geographic location, “a purely descriptive reference” to Detroit. This type of greeting, the court held, is a non-trademark use.
The court didn’t stop there. Invoking the D-word a second time, the court held that Detroit Metro also prevailed on its affirmative defense of fair use. Fair use can be established whenever a mark is used descriptively in good faith:
In evaluating a defendant’s fair use defense, a court must consider whether the defendant has used the mark: (1) in its descriptive sense; and (2) in good faith. . . . [T]he holder of a trademark cannot prevent others from using the word that forms the trademark in its primary or descriptive sense.
This is true even if the mark is used in a commercial setting (thus implying use as a mark) where there may be some degree of consumer confusion; and as the court noted, it is a second and independent basis for defense against infringement. With these two grounds established, the court had little trouble dismissing Kassa’s complaint.
The outcome of the “Welcome to the D” case is not particularly surprising, but it does remind us how important the big D-word is in settling a trademark dispute. For that reason, it’s a great a case with a lesson that applies to more than just the over-reaching by some musicians.