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Intangible Karaoke: Explaining the Tangibility Requirement of Trademark

A night of karaoke is often just what the doctor ordered to unwind with some friends. You’re probably just like me, having long since realized your voice likely violates some part of the Geneva Conventions and adapted a strategy of songs that require no ability to sing—my go-to is “Baby Got Back.” You probably also constantly wonder about the intellectual property status of karaoke tracks, just like me. Even if you haven’t considered it before, the courts have recently addressed that very issue and in doing so addressed tangibility—a rarely discussed requirement of trademark law. In doing, so they’ve given me an excellent opportunity to share my strange love of intellectual property law by explaining some of the finer points of trademark law.

The case pits Pheonix Entertainment and Slep-Tone, producers and distributors of karaoke accompaniment tracks, against a number of pubs out of Illinois. Slep-Tone argued that the pubs were violating their trademark by making unauthorized copies of their karaoke tracks, then playing them. Slep-Tone argues that, because the karaoke tracks bear their “Sound Choice” trademark on their display screen, karaoke singers are confused into believing they are hearing authentic Slep-Tone karaoke tracks. Thus, Slep-Tone alleges that these pubs have infringed their trademark and trade dress by passing off their unauthorized versions as Slep-Tone tracks.

The court, however, was having none of it and promptly shut down Slep-Tone’s trademark claims. First, because of their lack of tangibility. Second, because of what the lawsuit really is—a copyright lawsuit trying to masquerade as a trademark suit to overstep Slep-Tone’s rights.

Trademark Tangibility

Just to start with the most basic of the basics, a trademark is any word, name, symbol, or device, or any combination thereof, used to identify a person’s good and to distinguish it from those goods manufactured or sold by others. Trade dress is essentially businesses’ recognizable overall image and appearance—commonly found in the context of packaging or the appearance of premises. Trademark or trade dress infringement occurs under federal law where somebody uses a registered trademark without permission in a way that confuses the average consumer as to source or sponsorship. State law can sometimes expand this protection where a mark or trade dress is not registered, but Slep-Tone had long registered both its mark and dress.

In most cases, a trademark infringement claim will hinge on the strength and validity of the mark as well as whether consumers were actually confused. In this case, the focus was on whether a karaoke track is a good such that it could be protected by a trademark in the first place.

Case law has established that it is a consumer’s confusion about the source of a tangible good sold in the marketplace by a defendant accused of infringement that gives rise to a claim of trademark infringement.  The pubs didn’t sell anything, they just played the unauthorized tracks.  The only thing that a consumer might interact with is the intangible content of the karaoke tracks, not the physical discs the tracks come on.  When a customer hears a song, they at most think that the music on the track is from Slep-Tone—which it is.  There’s no confusion about the tangible good the track is on, so there cannot be trademark infringement.

Some non-tangible things, such as a plumbing service, can have their brand protected by something called a service mark. However, that didn’t apply to Slep-Tone’s products and they had no service marks to protect.

I should also clarify that just because a good is digital does not mean it isn’t a tangible good. From iTunes tracks to Kindle Books, many digital products are sold in manner that qualifies them as a tangible good.  However, the bars that are being sued aren’t selling copies of the karaoke tracks. They also aren’t showing their patrons the digital files of the tracks and passing them off as their own. While somebody picking a karaoke track would see Slep-Tone’s Sound Choice trademark as they select their track through the display component of the karaoke tracks, this wouldn’t confuse them as to source of the actual tangible good here the physical discs containing Slep-Tone’s tracks.

Trying to Trade Trademarks with Copyright

It’s not surprising that Slep-Tone’s claim has such a tortured fit to trademark. To be frank, Slep-Tone is essentially trying to use trademark to bring what amounts to a copyright claim for infringement through derivative works. Attempts to use trade mark and trade dress to essentially duplicate copyright protection have become more frequent in recent years—even the lawsuit discussed here is only one of over 150 identical suits brought by Slep-Tone. This is no surprise because, while Slep-Tone does own a trademark, they do not own a copyright on any of the works that are on their karaoke tracks. Were one of these lawsuits ever successful, the precedent it set would be a serious problem as trademark is an intellectual property tool with essentially unlimited duration. Copyright, while congressional extensions may seem to make the duration unlimited, has defined limits on how long it can last.

Beyond the scope of protection issues, trademark and copyright also serve very different goals. The aim of copyright is primarily to promote creativity by offering a reward to those who create new works. Trademark, on the other hand, is aimed not at promoting creativity and invention but instead it is a commercial tool to ensure fair competition by preventing deceptive use of source identifying marks.

Copyright certainly protects against unauthorized reproductions and performances of a protected work. If Slep-Tone owned any copyrights they would have a heck of a case.  However, they own no copyrights and have instead attempted to overreach the bounds of their trademark.  Copyright and trademark each have their own body of law for a reason.  If trademark is allowed to bleed into the realm of copyright law, the unending duration of the protection on trademark will consume copyright whole and expand the protections of a trademark far beyond the appropriate bounds. Fortunately, Slep-Tone has been shut down here.  Here’s hoping they get shut down in their other 149 plus cases.

Jonathan Lurie


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