Trademark v. Copyright - CAGE MATCH

In a recent story, the Carolina Hurricanes™1 got into a spat with a local rapper named Tyrone Banks over a song he wrote in tribute to the Hurricanes. The story goes, that Banks wrote the song, which was subsequently adopted by the Hurricanes as some sort of "official anthem." It was apparently played at games frequently, usually highlighting Mr. Banks in the crowd and giving him the appropriate credits on the video monitor.2 It seemed everything was peachy, until this week. Apparently the Hurricanes didn't care for the way Mr. Jones was promoting himself, making an implied connection between the two seem too strong for their liking.3 The "official anthem" became unofficial on Mr. Banks's website.4 The Hurricanes, however, apparently continued to play the song at games.5 This irritated Mr. Banks, as he had implicitly withdrawn his permission for them to do so.6 So now you have people suing each other over basically the same song but different causes.

The trademark/brand protection claim by the Hurricanes has now tacked on a copyright infringement issue. In the words of Borat, "Very Nice!"

First, to the brand and trademark protection. Be definition, a trademark is a source designator,7 and the Hurricanes hold a trademark in the team, the name, the logo, etc.8 So they are certainly within their rights to control who can make use of the Hurricanes logo or promote their brand. I've seen rap videos where the rappers are wearing sports team paraphernalia, but it's been blurred out to reduce the likelihood that a viewer will assume the team endorses the rapper in question. So far so good (I think) on the likelihood of confusion. I think the Hurricanes probably decided things were getting too cozy and pulled the plug on the connection, totally within their rights as a trademark holder.

Then we get to Mr. Banks's claim, and this is one that certainly has piqued my interest as of late. As a recent attendee to Lollaplooza this summer has reinforced in my mind, performance rights are certainly one that any musician must be aware of and control, as they are currently the basis of his/her livelihood. In general, music copyrights are bifurcated into 1) a musical work and 2) sound recordings.10 The difference between these is significant in their base nature and the rights ultimately afforded them. Musical works are the compositions of the musical songs themselves, an arrangement of notes, melodies, etc. Sound recordings are actual recordings of a person performing the musical work. The Copyright Act provides different rights to each, namely an exclusive public performance right to a composer of a musical work, but only an exclusive digital public performance right to the owners of sound recording copyrights.11 So to me, the ultimate question here is did Mr. Banks write the song? If that's the case and he's a composer (in addition to hip-hop artist), he has that exclusive right to publicly perform AND authorize the performance of12 his musical work that was for a short time the Hurricane's anthem. So if we take it to the logical conclusion (and boy do I love a logical conclusion), if Mr. Banks is the composer, the Hurricanes may have overstepped the bounds by playing his song without his permission. If he is not, the Hurricanes may have still played an unauthorized public performance, but they need to be speaking with someone else. All this could be avoided with a little forthought...

I'll watch this one carefully, as I always enjoy a Trademark/Copyright mix-up. Or is that a mixtape?

1: See http://www.carolinahurricanes.com (last visited Aug. 11, 2009). The Hurricanes are currently North Carolina's NHL® franchise. http://www.nhl.com (last visited Aug. 11, 2009).
2: Mike Baker, A Bad Rap? Hurricanes Sue Hip-Hop Artist over Song, available at http://sports.yahoo.com/nhl/news;_ylt=AhwW9hjTGec1jkGd_o4qltl7vLYF?slug=ap-hurricanes-song&prov=ap&type=lgns.
3: Id.
4: Id.
5: Id.
6: Id.
7: 15 U.S.C. § 1125(a)(1) (2006); see also Anheuser Busch, Inc. v. Stroh Brewery, Co., 750 F.2d 631, 648 (8th Cir. 1984) (discussing the importance of looking to the trademark's purpose as a source designator when analyzing a trademark claim).
8: See http://www.carolinahurricanes.com (last visited Aug. 11, 2009).
9: 17 U.S.C. § 101 (2006).
10: See 17 U.S.C. § 106.
11: Id. at 106(4), (6) (providing sound recording copyright holders an exclusive right to public performances only in the instance of digital transmissions, i.e., webcasting).
12: Id. at 106.

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