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Red Hot Chili Peppers could struggle in 'Californication' lawsuit

LA rockers Red Hot Chili Peppers are suing the network behind TV hit Californication, alleging that the title is stolen from their 1999 single and album. But the group may struggle because it failed to protect its brand, according to a legal expert.21 Nov 2007

Advert: Pinsent Masons seeks another Trade Mark Attorney, based in London, Leeds or BirminghamAnthony Kiedis, Chad Smith, John Frusciante and Michael 'Flea' Balzary, doing business as Red Hot Chili Peppers, are suing Showtime Networks and others. They argue that the creation and marketing of the TV series "constitutes a false designation of origin, and has caused and continues to cause a likelihood of confusion, mistake, and deception as to source, sponsorship, affiliation, and/or connection in the minds of the public".

The album Californication sold 14 million copies and was listed among Rolling Stone magazine's Top 500 Albums of All Time. The group say that the US series, starring David Duchovny, dilutes the quality of their brand. They are seeking unspecified damages and a new name for the TV show.

The lawsuit notes that a recurring character in the TV show is called 'Dani California'. That is also the name of a character who is the subject of or mentioned in three songs by the Chili Peppers, including the song Californication. The band also wrote a hit single called Dani California.

The lawsuit does not mention it, but according to Wikipedia, a character in one episode narrates the line, "It's the edge of the world and all of western civilization," a lyric from the song Californication.

Further, the lawsuit notes that a search on 'Californication' in Apple's iTunes Music Store retrieves the band's works and the TV show's compilation albums. The band says that causes confusion.

However, Showtime Networks is expected to argue that the band did not coin the word, a portmanteau of California and fornication. It first appeared in print in Time Magazine in 1972, in an article called The Great Wild Californicated West. Time reporter Sandra Burton wrote, "Legislators, scientists and citizens are now openly concerned about the threat of 'Californication'—the haphazard, mindless development that has already gobbled up most of Southern California."

Kim Walker, head of intellectual property at Pinsent Masons, the law firm behind OUT-LAW.COM, said that the band should have registered Californication as a trade mark. Instead, the only trade mark application was filed in April in the US, by Showtime Networks. The mark has not yet been registered.

"Successful songs, albums and movies can become brands in themselves. What's really surprising is how few songs and albums are properly protected," said Walker. "The Chili Peppers could almost certainly have registered a trade mark for 'Californication', notwithstanding Time's article. They made the word famous, but it doesn't automatically follow that they can stop its use in a TV show."

"If they had registered the title as a trade mark covering entertainment services, I very much doubt we'd have seen a lawsuit. The TV show would have been called something else," he said. "As it is, the band faces an uphill struggle."

A quick search on Rolling Stone's Top 10 Greatest Albums of All Time at the trade mark registries of the US and UK shows that none of the album titles are protected by the artists or their record companies.

An individual applied to register Highway 61 Revisited, the Bob Dylan album that appears at number 4 in Rolling Stone's list; but that application was abandoned. Rubber Soul, ranked number 5,  is registered as a mark, but not to The Beatles. And Sgt. Pepper's, the top-ranked album, is registered as a footwear brand by a company in Spain and as a pepper spray brand in the US.

David Bowie appears to be more savvy than most of his counterparts, though: he has registered Ziggy Stardust as a trade mark for music and entertainment services. The Rise and Fall of Ziggy Stardust and the Spiders From Mars is ranked at number 35 in Rolling Stone's list.

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