Words/Phrases for song

'Is it legal', 'can I do this' type questions and discussions.
Post Reply
caniuseit77
New Member
New  Member
Posts: 3
Joined: Mon Jan 24, 2022 6:16 pm

Words/Phrases for song

Post by caniuseit77 »

Hello! :)

I am seeking advice regarding using specific words and phrases in a new song I would like to produce and distribute in a commercial capacity. I am unsure where I stand but from what I have researched it seems it would be fine to use these words/phrases however I am not confident. I searched on the usual copyright and trademark sites and thought I would ask here.

The first word is for the title of my song. It is 'Robosapien' which I understand is trademarked as 1) a robot toy 2) a book. I don't know for certain if I can use this word as my song title or not.

The second part to my query is words extracted from a movie and I have put them into my own phrase which is 'Terminator hasta la vista' which will be used either once or a few times in the song and is not the chorus or any main part, rather just the middle eight or ending part. I saw that 'hasta la vista baby!' is trademarked by the movie producer, but not the phrase 'Terminator hasta la vista'.

Any advice is greatly appreciated
User avatar
AndyJ
Oracle
Oracle
Posts: 2664
Joined: Fri Jan 29, 2010 12:43 am

Re: Words/Phrases for song

Post by AndyJ »

Hi caniuseit,

There are no fixed rules about how many words may be copied from one copyright work into another before infringement is said to occur. If you were copying lyrics from another song, I would advise great caution, because the music industry is particularly prone to litigation over alleged copying. But as in this case you want to use short snippets of film dialogue within a song, the crossover between two different types of media reduces the risk even more. Clearly the words hasta la vista are extremely common in Spanish speaking countries and so there is no question of them being considered original enough to attract any copyright. And Robosapien, although much more original, is just a single word, and as such it is also most unlikely to qualify for copyright protection.

The use of trade marks presents a slightly different problem, or perhaps no problem at all. A trade mark is only infringed if it is used in the course of trade, so for instance, in adverts or promotional material or on packaging for a rival product or service. Just using a word like Robosapien in a song shouldn't cause any problems because it can't be said to be there to promote the sale of something in a way that would confuse the public about the origin of the product. But I do see a problem with using the word as the title of the song because that is the way the song is identified to the public - often in textual form - and therefore genuine confusion could exist if someone was, for instance, searching for a product made by the WowWee Group Limited (owners of the trade mark) and came across your song thinking it was part of the promotional material for WowWee's products, whatever they might be. In fact, in the UK the mark Robosapien is registered in several wide ranging classes of goods including audio products, which makes your use of the word as a title even more risky.

The same cannot be said for hasta la vista which as you correctly say is registered in the UK as a trade mark (by a Swedish company called We & Wine AB in classes 32 and 32 covering beers, wines and spirits). Since your proposed use of something similar to this trade mark would only be buried deep within the lyrics and clearly would normally only be perceived by a listener in aural rather than textual form, that use cannot be said to be in the course of trade, especially when there is a significant difference between a song, and beers, wines and spirits.

The number of times you re-use the words within the song is not really relevant; if they do infringe copyright (and I don't think there is a realistic chance that either of them do) then a single use of the phrase would be sufficient to trigger a claim. Similarly if it was found that there was trade mark infringement, it wouldn't matter how many time the phrase(s) was used, once would be enough to lead to a claim.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
caniuseit77
New Member
New  Member
Posts: 3
Joined: Mon Jan 24, 2022 6:16 pm

Re: Words/Phrases for song

Post by caniuseit77 »

Hi Andy,
Many thanks for the reply and advice. I noticed that a guy has released a music album spelled 'Robo-Sapiens'' which is obviously different from the trademark 'Robosapien' and I'm wondering if I spelled this word somewhat different whether that would cover my back? like if I reversed the r like 'Яobosapien' or, put a Z on the end instead? 'Robosapienz'. I can't seem to find a trademark for 'Robosapienz' although an electronic shop in India is called it. The use of 'Terminator, hasta la vista' as a short part of my lyrics seem to be ok as you say but is there any way I can get a definite legal stance on this without breaking my bank account? Do you know of a reasonably priced legal advisor who specialises in this that I could contact because I'd really like to use all of these words if possible and without the worry of getting sued later down the line. I could ask some advice from my distributor also but I imagine they'll tell me to seek advice from a lawyer..
Thanks in advance :)
User avatar
AndyJ
Oracle
Oracle
Posts: 2664
Joined: Fri Jan 29, 2010 12:43 am

Re: Words/Phrases for song

Post by AndyJ »

Hi caniuseit,

I would be wary about adding small tweaks to an existing trade mark, as mere similarity can in certain circumstances still be enough to trigger a claim. What many trade mark owners want to avoid is the so-called dilution of their mark so that it becomes generic (think of the verb to hoover meaning the use of any make of vacuum cleaner). For this reason some owners can be over-zealous in warning off users of similar marks before they can become established in the marketplace, by which time the damage (assuming there is any) will have been done.

It would certainly be wise to get a second opinion on the trade mark risks. I suggest that you approach a trade mark attorney. They are specialist lawyers. The Chartered Institute of Trade Mark Attorneys runs a free advice clinic. Details here. The British Library also offers free advice on intellectual property issues, but their service is mainly aimed at small businesses and start-ups, so they may refer you back to the CITMA.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
caniuseit77
New Member
New  Member
Posts: 3
Joined: Mon Jan 24, 2022 6:16 pm

Re: Words/Phrases for song

Post by caniuseit77 »

Hi Andy,
I see. It seems to be a tricky area to navigate so I will definitely get legal advice and have approached CITMA. I appreciate all your help and advice on my query. Thanks for your time. Best regards, Steve
Post Reply