Online Music Comparisons: A Practical Guide,
By David M. Given & Elizabeth L. Musser
From Entertainment and Sports Lawyer, Volume 18, Number 3 (Fall 2000)
Online companies selling music, whether CDs shipped to buyers or downloadable MP3 files, often inform customers about artists in their catalogs by alluding to works by artists other than the ones requested. These comparisons appear in a variety of forms.
For example, listen.com, a portal for downloadable music, provides a "sounds-like" section with links to "similar artists" -- some of whom have tracks available to download for free -- and a genre guide that includes browsable sections for, say, jazz fusion or rap. Each artist page features a section inviting consumers to investigate other artists, for instance: "If you like Steely Dan, you may also like The Doobie Brothers or Blood Sweat and Tears."
Cdnow.com recommends albums based on the customer's previous album selection, under a link called "album advisor," listings such as "similar artists," "roots and influences," and "had influence on" appear.
Licensemusic.com, a direct music licensing site, allows users to search for music that "sounds like" another artist or style. However, the site contains the express disclaimer that the resulting musical selections are not necessarily related and "are in no way intended to mislead the listener or misrepresent the origin, performer, or composer."
Do such comparisons run afoul of the law by implying endorsements or suggesting objective similarities among artists? This concern arises in instances when a site invokes the name of a well-known artist to describe the music style or sound of a lesser known artist, so that the latter benefits (perhaps unfairly) by association.
Comparisons of this kind can be trademark infringements if the name of the band or artist is an identifying mark protected under the Lanham Act or registered with the United States Patent and Trademark Office. The "essential question in a trademark infringement case is whether the alleged infringement creates a likelihood of confusion." 1 Artist comparisons provide customers with helpful information and usually do not create consumer confusion. There may also be certain First Amendment fair-use considerations relevant to this inquiry. 2 Nevertheless, sites must be careful to clarify that the comparisons are provided for information purposes only and are not intended to suggest sponsorship of or endorsement by a particular artist. The average consumer must be able to recognize that the suggestions are subjective information, provided to help the consumer make a purchasing decision.
Steely Dan by Any Other Name
When names of individual artists and bands appear on a web site, the names typically identify the artists themselves, not a third party or its products. This is nominative use: the name refers to the band itself. "The Rolling Stones" refers to the Rolling Stones and the Rolling Stones' music, and "New Kids on the Block" identifies only this group and its music. 3
In general, nominative use is permissible so long as it does not confuse the consumer by implying sponsorship or endorsement where none exists. 4 In a case involving New Kids, one court held that USA Today could refer to "New Kids on the Block" in a readership survey without violating the band's exclusive right in the name. 5
New Kids established a three-part test to determine whether nominative use of a name constitutes infringement of that name. 6 The first requirement is that the product or service is readily identifiable by using only the name. Second, the party using the name must use only as much of it as is necessary to identify the applicable product or service. Finally, there must be no inaccurate suggestion of sponsorship or endorsement. 7
Music companies usually use artist and band names for comparative purposes in ways that satisfy all three parts of this test. Bands and artists are not readily identifiable without the use of their names; to refer to artists at all, the site must use an individual's or a group's name. If a site uses only the name of a band or artist, as opposed to a distinctive logo, color, or lettering, then it is arguably using only as much of the name or mark as is necessary for identification.
Most music Web sites do not incorrectly imply that the artists mentioned for comparison sponsor or endorse other bands or promote the site's services. To be absolutely clear, however, a site should specifically disclaim such sponsorship or endorsement.
Comparative Advertising: "Steely Dan Sounds Like.."
Comparing several brands, products, or musical groups for noncommercial purposes, in an academic article for example, is always permissible. Most music Web sites, however, exist to make money. In commercial situations, comparing brands, products, or musical groups is permissible only if the comparison is truthful and does not confuse the consumer as to source, sponsorship, or endorsement of the product. 8 The law generally views comparative advertising as creating healthy competition; it is not unfair to refer to another product to win customers. 9
Reviews in trade publications regularly make use of comparative information to describe the sound or style of an album or artist. New albums do not replace or supplant existing albums in the same way that Lady Q spray perfume's bargain price "version" of Chanel No. 5 could replace sales of Chanel's. Steely Dan's 2000 release of Two Against Nature does not render the band's 1974 classic album Pretzel Logic obsolete. Nor would purchasing an album by the High Llamas make Steely Dan's Katy Lied redundant.
On the other hand, providing comparisons could cause certain consumers to purchase or license material through a Web site and forgo possibly more expensive works of well-known artists. For example, the director of an independent film putting together a soundtrack might opt for a High Llamas song rather than one by Steely Dan to save money. Moviegoers, however, would realize the difference, whereas the dinner companion of a woman wearing Lady Q might believe he's caught a whiff of Chanel No. 5.
Replacing a product with a cheaper yet similar one is always a possibility, and the law is likely to view product suggestions as something to be encouraged in a healthy, competitive market place. 10 Similar-sounding artists should have a fair opportunity to compete for business. If sites are truthful and straightforward about the products and music they provide, there probably is no strong claim of infringement or unfair competition.
Pretend This is Steely Dan
A few court cases have addressed the issue of an artist who actually imitates the voice or musical style of another artist. 11 Midler v. Ford Motor Corp. defined voice misappropriation as imitating the "distinctive voice of a professional singer ... to sell a product."12 In Waits v. Frito Lay, the defendants deliberately searched for a singer who sounded like Tom Waits for an advertisement, evidently to make consumers think Waits endorsed the product. 13 The Waits court found that a "deliberate imitation of Waits' voice" in a product endorsement without his permission violates the Lanham Act. 14
Most music web sites, however, do not encourage musicians to imitate or deliberately sound like popular bands or singers; they simply market existing works or acts to consumers.
In voice-imitation cases, the most important question is whether the consumer was confused or deliberately deceived. 15 As long as sites clarify that they provide comparison information to assist customers in purchasing or licensing decisions, there likely will be no strong argument for consumer confusion.
Even potential confusion about the roles of artists at a commercial site can be avoided by including a disclaimer on the home page or another obvious location. The disclaimer should state that the use of artists' names is intended for consumer information only and does not imply sponsorship or endorsement by the non-performing artist. Some courts have viewed a disclaimer alone as sufficient evidence that the use of a name for comparative advertising purposes was not confusing. 16
Web Site Considerations
From a user's standpoint, a "sounds like" or equivalent category provides concise, useful information, that might not be conveyed easily in another form. To avoid consumer confusion, a simple and straightforward presentation is preferable to one that is more complex. Sites adopting the measures in this article should cover the following points.
- The "sounds like" category used by listen.com is simple, straightforward, and easily recognized as a comparison. However, other phrasings would work at least as well, "similar musical style" or "looking for a sound like [Bob Dylan]? Try [The Band]."
- Sites should prominently display the name of the actual performer with the title of the particular work, so there is no confusion about who performs it.
- When a visitor enters the name of an artist or song currently unavailable on the site, the site should state explicitly that those works are not available. For example: "Unfortunately, we have no (Wynton Marsalis) tracks available for purchase. However, you might be interested in these similar artists or sounds." Divisions such as "similar musical styles" and "additional (jazz) artists" can provide both narrow and broad references for comparison.
- Sites should include a disclaimer in a central location, either as part of a general description of services or near a search box. The disclaimer should read as follows: "Comparisons with other artists are provided for informational purposes only and do not represent sponsorship of or endorsement by those artists of another's music."
Web sites can safely provide consumers with some types of comparison information. It is typical music industry practice, both on the Internet and in media, to describe musical acts. Even categorizing music by genre is not the same as a direct comparison; many musical styles are not easily defined, and many acts fall into a number of different genres. Listening to music is an experience, comparison using a parallel is often more effective than even the most sophisticated description.
- Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th Cir. 1984).
- See, e.g., Given, First Amendment Protection for Trademark Use, PLI Intellectual Property Course Handbook Series, 445-49 (1998).
- See New Kids on the Block v. New Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).
- Id. at 308; see also Abdul-Jabbar v. general Motors Corp., 75 F.3d 1391, 1397 (9th Cir. 1996).
- New Kids, 971 F.2d at 307.
- Id. at 308.
- See Conopco, Inc. v. May Dep't Stores, 46 F.3d 1556 (fed. Cir. 1994), cert. denied,514 U.S. 1078 (1995) (finding permissable an advertisement inviting the consumer to compare a store brand to a major national brand).
- See Saxony Prods. v. Guerlain, 513 F.2d 716, 721 (9th Cir. 1975) (suggesting that comparative advertising is permissible so long as the advertiser takes "sufficient precautions" to ensure that "reasonable" consumers are not likely to be mistaken or confused, Smith v. Chanel, 402 F.2d 562 (9th Cir. 1968) (holding that comparative advertising is permissible so long as it is truthful and not deceptive or confusing).
- See Chanel, 402 F.2d at 567.
- See Waits v. Frito Lay, 978 F. 2d 1093, 1098 (9th Cir. 1992); Midler v. Ford Motor Corp., 849 F.2d 460, 463 (9th Cir. 1988).
- Midler, 849 F.2d at 463.
- See Waits, 978 F.2d at 1097-98.
- See id. at 1107.
- See Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 25.52 (4th ed. 1999) (citing G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837 (3d Cir. 1983); Upjohn Co. v. American Home Prod. Corp., 598 F. Supp. 550 (S.D.N.Y. 1984)).