TCS Daily

The Rooster That Roared

By Renee Cordes - March 10, 2003 12:00 AM

Shortly after 11 a.m. on a recent Thursday, a rooster crowed in the otherwise somber grande salle at the European Court of Justice in Luxembourg.

It was not a live bird, of course, but a recording of one - just like the one that Amsterdam-based intellectual property firm Shield Mark uses in software programs and commercials. Interpreters were standing by.

A couple of years ago a rival Dutch company named Memex copied the idea in its own software programs and commercials. Like Shield Mark, Memex also began airing commercials touting its services using the first nine notes of Beethoven's Für Elise. That infuriated Shield Mark, which ultimately won a court injunction stopping Memex's mimics.

Though that legal dispute is ancient history, Shield Mark is now urging Europe's highest court to allow sounds to be registered as trademarks, or 'sound marks,' throughout the European Union - a move it claims would offer greater legal protection than firms currently enjoy. While it should have a fairly easy time convincing the court of this general principle, the hard part will be coming up with a list of requirements for the registry application.

Do you register the Beethoven melody, for example, as 'the first nine notes of Für Elise,' list the notes in letter form (E, D#, E, D#, E, B, D, C, A), use the actual musical score or all of the above? And with the other sound is it enough to give a description such as 'the sound of a rooster crowing' or 'Kukelekuuuu," the Dutch equivalent to "Cock-a-doodle-doo"?

These may seem like silly questions to the public, but this is serious stuff in the intellectual property world.

As the non-profit International Trademark Association (INTA) points out in its letter to the court supporting Shield Mark, sounds can be an important element in branding and corporate identification, helping consumers distinguish one service or product from another. Just think of the roar of the MGM lion and the three chimes of the National Broadcasting Corp., both of which are registered trademarks in the U.S.

In Europe, some jurisdictions - such as Germany, France and Italy - already grant trademark protection to sounds. But the Benelux trademark office in The Hague does not, so Shield Mark wasn't able to register the melody and animal noise in question as sound marks. Instead, it had to register them as 'word marks' or 'device marks,' the latter of which applies to anything that cannot be depicted by letters or numerals. Because Shield Mark couldn't file a trademark infringement case against its rival, it was forced to pursue legal action under general tort law - presumably a lengthier and costlier process. Shield Mark may have won its case, but it has a vested interest in keeping such copycats at bay in the future, not just for itself but also its clients.

The company shouldn't have too much of a problem convincing the ECJ to accept sounds as trademarks, given that several EU governments, the European Commission and INTA all argue the same thing. Last December, in another case referred to as Sieckmann, the ECJ ruled that a trademark may consist of a sign not capable of being perceived visually - provided it can be represented graphically, especially by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In Sieckmann, the court acknowledged that odors can be registered as trademarks though pointed to the limitations of doing so.

And "if smells can be trademarks, I'm sure sounds can be," said T. Cohen Jehoram, the lawyer representing Shield Mark.

First, it's easier to describe sounds than smells. Second, sounds and noises can be easily reproduced, as Cohen Jehoram demonstrated at the court with his boombox, on which he played a cock crowing, a penny spinning on a hard surface and the opening of a can containing a carbonated beverage. Shouldn't it therefore logically follow that sounds can enjoy legal protection as trademarks? The notes to the Beethoven tune and onomatopoeia for a rooster's crow and any other animal noises should cover all the necessary registration requirements, the lawyer maintains.

Not so fast, says N.A.J. Bel, the attorney representing the Dutch government. He warned the court that 'Kukelekuuuu' will only be understood by a Dutch person. Moreover, the musical stave for the first nine notes of Für Elise may not be without its problems either, as tones can change in pitch over time. "Precision is vital here," he told the judges.

All parties seemed to agree the ultimately these are matters to be resolved by national courts.

It was clear from the judges' questions that there are still many questions to be answered before a decision can be reached. If someone wants to check whether a particular melody is registered, for example, must he or she bring someone to the trademark office who can read music - or worse, who can play it right there on the spot? Irish Judge Fidelma O'Kelly Macken said she makes no assumptions as to whether the public at large can read music. And her Portuguese colleague, Judge José Narciso de Cunha Rodrigues, also rightly notes that a rooster makes different sounds in different languages. Can you tell me what a Spanish or Greek representation of a cock crowing is? he asked, without getting an answer.

These issues are likely to keep EU copyright experts awake until the rooster crows for a long time yet to come. One can only hope that the court will be able to bring some order to the cacophony when its legal expert issues his recommendation to the panel April 3. The Shield Mark rooster may not be as prestigious as the MGM lion, but shouldn't it be entitled to similar protection from imposters?

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