“The primary similarity between the two works – and the one highlighted repeatedly by the plaintiffs in Stone v. Carey – is the identical title. But is the title of a work protectable on its own?”
Headline-grabbing copyright infringement complaints are nothing new – especially recently. Robin Thicke, Ed Sheeran, and Dua Lipa have all faced copyright infringement lawsuits seeking eye-popping damages claims. At a quick glance, the $20 million lawsuit filed this month by Andy Stone against Mariah Carey, co-writer Walter Afanasieff, and Sony Music is just one more in a string of these cases. But a closer look at the Complaint, and a comparison of the 1989 Vince Vance & The Valiants song, “All I Want for Christmas is You,” with Mariah Carey’s 1994 song of the same name, raises more questions than answers.
The first question is why is this Complaint being filed 28 years after the Mariah Carey song was released? This is a hard question to answer and may be addressed if the case survives through the pleading stage. One theory is that Stone only recently realized the potential value of such a lawsuit. Over the past few years, Mariah Carey’s “All I Want for Christmas is You” has become the undisputed Queen of Christmas – with her song topping the Billboard charts seemingly every holiday season. In addition, Kelly Clarkson recently recorded a cover of Stone’s “All I Want for Christmas is You” for her 2021 album, When Christmas Comes Around, around the time Stone alleges he first reached out to the defendants. It may be that, having had one successful license, Stone was interested in another.
The second question is, what is this case really about? Many media sources have reported this as a vanilla copyright infringement case. One reported this as a case in which Andy Stone is claiming he wrote Mariah Carey’s “All I Want for Christmas is You.” While the Complaint does make a claim of copyright infringement, it doesn’t make the traditional allegations of a claim that one work borrows a substantial portion of a prior work, or improperly samples a prior work. A quick listen to the two songs (both available on YouTube) makes it clear that, other than the title, the two songs don’t share many similarities at all.
The primary similarity between the two works – and the one highlighted repeatedly by the plaintiffs in Stone v. Carey – is the identical title. But is the title of a work protectable on its own? The Copyright Office has taken a clear stand on the registrability of titles, as set out in its Circular 33: “Words and short phrases, such as names, titles, and slogans, are uncopyrightable because they contain an insufficient amount of authorship.” Indeed, a search of the Copyright Office’s Catalog as of this writing reveals 179 different works registered with the Copyright Office with the same title of “All I Want For Christmas Is You”. It isn’t the title of the work that is protectable but the content of the work itself. Unfortunately, the Complaint in Stone v. Carey doesn’t include an element-by-element analysis of the two works; instead, it alleges only broadly that the defendants used the plaintiff’s work.
At first glance, the trademark claim in the Complaint faces a similarly difficult path. The U.S. Patent and Trademark Office (USPTO) instructs that: “The title of a single creative work is not registrable on either the Principal or Supplemental Register.” However, through the right amount of publicity, marketing, and fame, a song title can create sufficient secondary meaning to be protectable as a trademark. “Yellow Submarine” and “Ziggy Stardust”, for example, are both trademarks registered in connection with musical sound recordings. In 2007, the Red Hot Chili Peppers sued Showtime over the use of the word “Californication” as the title of a television series. In 2018, The Eagles filed a trademark opposition against a hotel’s use of the name “Hotel California”. It is possible for a song title to acquire the distinctiveness necessary for source-identification and a trademark claim. Unfortunately again, the Stone v. Carey Complaint does not include allegations as to why trademark protection should be extended to the phrase “All I Want for Christmas is You”.
Survival is Uncertain
The Stone v. Carey Complaint also includes an allegation that “Defendants’ acts were designed to exploit the popularity and unique style of Plaintiff,” although, again, the Complaint does not include allegations as to what that unique style is, how it is recognized by consumers, or how the defendants in the case have allegedly tried to co-opt that style. The Complaint is very likely to meet with a motion to dismiss. If Stone’s Complaint can survive, we may learn more about all of these allegations. If not, Mariah Carey will no doubt continue her reign as the Queen of Christmas.
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