Trademark Issues with "Kodachrome®" -- Songs with brand names in UK

From another thread...rcb30 said:

As soon as I read that, it made me think of that 1973 legal fiasco involving the use of Kodak's registered trademark of Kodachrome by CBS Records. Someone in Columbia's legal department really dropped the ball on that one. Apparently no one noticed that they were blatantly using a registered trademark of another major corporation...not just saying the word, but printing it on their product!

As wholesalers we moved many thousands of these 45's. At first each label had the title "Kodachrome" with no mention of its being a trademark. That's where the trouble started. So, soon afterwards shipments of the 45's had little white stickers applied to the hit-side that said "Kodachrome® is a registered trademark for color film". This was a very labor intensive procedure for CBS. Later shipments got really sloppy. CBS used standard 25/200 lot boxes for singles, and they would just throw several hundred loose stickers in each box ...expecting someone else to apply their stickers. Well we were under no obligation to do that, so most went out with the trash.

Later pressings were released with all the required text printed directly on the label. (see below). I know in our case about 90% of the ones that we distributed were either ®-free, or white-stickered. However, now just about every copy I see is like the one below, with pre-printed ® info. I would have thought that version would have been more rare than the previous version. Our supply came from Pitman. Maybe they didn't make the change until much later than other plants. Anyone know? ....W.B.?

My early pressing of the LP There Goes Rhymin' Simon is ®-free, but that's not at all rare. Since then, it's always been a little habit of mine to look for that registered trademark on subsequent albums which include that song. I've never come across any omissions since the original 1973 mess.

I've heard that in the UK, "Kodachrome" was used as a b-side because of a pre-existing BBC policy of not playing songs that endorse brand names in the lyrics. That is, even if CBS had gotten proper clearance to use the trademarked name, it still wouldn't be played there. I believe that's why The Kinks changed the lyrics to "Lola". Can anyone confirm if this BBC policy is still in effect? That is...It would surprise me if all the songs mentioned in the current brand-names thread were banned or had to be edited there. Right?

If anyone can answer these questions....or add any details....or correct any inaccuracies, please do so. Also I wanted to point out that Kodak wasn't just being a big jerk in this case. Unlike with copyright violations, trademark infringements have to be contested in order to keep the trademark active. Isn't that correct?

 

Anyone got a scan of the label with the sticker on it? The above scan is the only label I have ever seen.

In a few years, I wonder what will happen if Kodak actually phases out Kodachrome. Wouldn't it be a moot point?

 

I had planned on sending a scan of the original version, but all I could find was a promo of "Loves Me Like A Rock". I can't even find my pack of little stickers that I saved. I'll keep looking...

 

Actually, that wording cited was one variation. The other variation on the label read:

I don't know if this was second or third pressings of the single which had this more specific wording. But both notice variations were also on the There Goes Rhymin' Simon album. (I've yet to see a non-® label variation of this LP - well, from Pitman, anyway.)

As for me . . . I have two original copies without the notice pre-printed on the label - and which had a sticker with that notice. (I was able to take it off the label of one of the copies without damaging it, and placed it on the sleeve. The other, I wasn't so lucky.) Those are the only copies I've seen. And my copies were both from Pitman.

 

I remember hearing that song early on and wondering about the use of a trademarked product name in the title. I didn't go out and buy the record, but I do remember seeing it listed somewhere (perhaps a radio station hits list, perhaps a jukebox title strip) as "Koderchrome". My assumption was that "that was the way around the trademark". Later, when I finally acquired a copy of the album (a quad version), it clearly said "Kodachrome" and had the trademark disclaimer.

Am I dreaming, or was there really some semi-official use of the non-word "Koderchrome"?

 

That "Koderchrome" spelling - which I took to be a typo - was from a jukebox title strip printed by Sterling Title Strip. I should know, I have a copy of such strip.

 

Thanks for that confirmation, W.B. I didn't think I was crazy - and I'll bet it might have been intentionally spelled that way so as not to implicate one "Sterling Title Strip Company" in any possible infringement problems!

 

Actually, Sterling did misspellings on some other records (both titles and artists, and sometimes record label names); there's a thread within this forum about jukebox title strips. But there could be a possibility as to your scenario . . .

 

Thanks...I'm sure my sticked copies say that too. It's the way I first typed it in the original post. When I couldn't find my copies (or the pack of stickers), I grabbed that image from a website. When I noticed the different wording, I assumed my memory was failing. I was almost certain the sticker contained the word "Kodak", but I changed my post to agree with the scan. Guess I should have trusted my memory.

Actually I was referring to the front cover...sorry for the confusion. Isn't the non-® version of the jacket (front and inside) rather common?

 

Strange... I can think of another song that used that name...

The Alan Parsons Project, "Psychobabble".

Not one brand name, but two IIRC:

"Tell you about a dream that I have every night
it ain't Kodachrome and it isn't black and white..."

and

"Tell you about a dream that I have every night
it's in Dolby Stereo, but I never hear it right..."

So I'm confused (as usual).

 

I'm confused too. Where is the legal issue? Using the name of a product in an article, a book or a song does not infringe the trademark. At most, using it on the front cover could be considered infringing if there was a likelyhood in people associating the record with the company Kodak.

Why didn't Janis Joplin have problems with "Mercedes Benz"? Was she sponsored?

 

On thing that always seemed odd to me about this 45 is how the letters in the song title seem to be double spaced and appear as "K O D A C H R O M E". Was this deliberate, or some sort of goof on the typesetter's part?

 

Well I tried to upload the entire label but it was too large, so here's just the sticker....
I hope.

It was place in the same spot as in the scan above.

 

Good question. IIRC, trademark issues are mostly related to print or images. right? So using a trademarked word within in a song, might not be an issue. As far as the Joplin song...maybe there's a slight difference in the title vs the trademarked word..."Mercedes Benz" vs. "Mercedes-Benz". Just a wild guess, but I'm sure there is an answer out there.

I think the "Kodachrome" single was such a high-profile use of its trademark that it forced Kodak to act. During that summer, you couldn't turn on a radio without hearing that song.

 

Hi,

Using trademarks in songs and song titles is a prohibited practice by the BBC. Jimmy Buffett had to change "I got my Hush Puppies on" to "I got my hiking shoes on" on Come Monday. There are a few others.

 

Could be. Allowing a trademark to be used freely (called "dilution" in trademark law) means the owner loses the right to defend his trademark in other cases. But again, as the word wasn't used as a trademark (to designate products) but only in the title of a song, there was low risk of dilution.

On the other hand, Kodak did not forbid Paul Simon to use the word on cover, but requested a sticker on the records explaining that Kodachrome is a trademark. So they were not really enforcing the trademark.

The info on Wikipedia doesn't seem plausible, because the trademark protection could certainly not prevent the song being played on the radio:

http://en.wikipedia.org/wiki/There_Goes_Rhymin'_Simon

BTW, "Mercedes Benz" vs. "Mercedes-Benz" wouldn't make a difference, they are considered similar in trademark law.

 

Thanks for the explanation. The seems logical for a public service, as the songs could be considered as being disguised commercials.

 

Just curious...Does that mean none of the songs from the growing list in this thread have ever been played on the BBC?...without being altered? I'm assuming that those brand names are all trademarked...or that the policy is for all brand names. Either way, that's a lot of songs for possible BBC exclusion.

 

The typesetters at Columbia's Pitman plant often spaced individual letters just as far apart on one-word titles of other releases by other artists, apparently to fill out space. I've such an example with a Columbia/Pitman pressing of Carly Simon's "Anticipation" (Elektra EKS-45759), f'rinstance. They've done this with one-name artists, as well. So it ain't a goof . . .

Some U.S. radio stations banned "Kodachrome®" - not for trademark issues, but for language (the opening line of the first verse, "When I think back on all the **** I learned in high school . . . "). This, about the time of the Supreme Court's "Seven Dirty Words" decision.

 

I'll bet Kodak just wanted some free print advertsiment out of that song being on 45s and LPs.

They should be so lucky to have the name mentioned in a Paul Simon song.

 

Hi again.

As far as the BBC policy goes about brand names and trade marks in songs. They are banned from Airplay. Some record companies had special versions for the UK and Europe. Those could be played on air. Those companies who didn't got those tracks banned from air play. The beeb was very strict on standards and practices. One reason why pirate radio flourished for some years. Also, the British musician's union agreement also limited the amount of phono records played on air.

 

From what I understand the Beeb's rationale was that mention of a product in a lyric constituted free advertising.

 

So, if it's a registered trademark, did the record company or Paul Simon pay a fee to Kodak for its use or do they pay royalities based upon many times it is used?

 

It was not used as a trademark by Columbia Records. Kodak could only stop its use on a product or service or license its use if it was being used in conjunction with a product or a service. The trademark is an indication of a product's or service's source. Thus Copyright law does not apply for this use. Thus Kodak would have no recourse when one of its trademarked names is used as the title of a song or part of a song's lyrics. Columbia Records, part of a corporation that respects trademarks, decided to change the label out of the goodness of its heart, not because it was compelled by existing US and international trademark law.

Richard.

 

I think we can all agree that CBS wasn't trying to use the trademarked word...such as, they were not creating a new label called "Kodachrome Records". That would be another issue completely. But one that CBS might succeed in, because of the vast difference in the products. The issue Kodak had with CBS was entirely different.

Richard's explanation has zero-ed in on the issue, however it may have gone a bit too far in saying that CBS's addition of the notification was done out of the goodness of its heart. Let's look at some of the factors before I make my point:

1) "Kodachrome" is the title (not just a lyric).

2) The entire song is full of photographic imagery, metaphors, ect. If the title was the same, but it told the story about growing up in the small town of Kodachrome, Kentucky that might be different. But it's obvious the song is referring to the film's name.

3) The word is repeated throughout the song (not just mentioned once).

4) The song was a big hit. A large segment of the population was likely to hear it

The combination of these factors forced Kodak to act. If the records were not changed, the argument could be made that people might think the term Kodachrome was not a trademark, but just a generic term for film. This is a constant battle in maintaining a trademark's use for a specific brand.

Sometimes a trademarked name is accepted by the public as a general term...most people say "Jell-O" (not gelatin desert) or "Band-Aid" (not medical bandage). This is a double-edged sword...it's the best advertising in the world...but the trademark's owner is forced to constantly point out that the name is trademarked for that specific brand. "Jell-O Brand Gelatin" is often said in their ads...even though it sounds odd.

Kodak didn't want Kodachrome to become a generic term that other film companies could use at a future date. They had to make this point on the 1973 record to keep the term exclusive in future years...not for any immediate benefit. It was obvious that CBS could have been sued by Kodak if they had refused to comply with the accepted practice of including the registered trademark symbol. Kodak never tried to prevent the use of the word (they couldn't). They only insisted that proper wording be used on the record so as not to damage their future exclusive use of the word as a brand name of film.

None of this answers Claude's question about Joplin's "Mercedes Benz". Many factors are similar. I'll bet if that song was first released after 1973, it would carry the ® symbol, due to the learning experience from "Kodachrome". Though it's probably too late for the car company to object now.