Mariah Carey was served with a lawsuit alleging both trademark and copyright infringement over her 1994 Christmas classic “All I want for Christmas is You.” The hit pop song is often referred to as the unofficial beginning of the holiday season and has only increased in popularity over the years. It has topped the Billboard Hot 100 chart every year since 2019, a difficult feat for a song that came out over 25 years earlier.
Andy Stone, the songwriter suing Carey, claims that he co-wrote and released a song with the same title five years earlier in 1989 under the name Vince Vance and the Valiants. Stone is not claiming in the complaint that the melody or lyrics are anywhere similar (one is a country ballad the other a pop song), but he is claiming copyright and trademark infringement on the use of the title of the song.
Stone is seeking at least $20 million in damages against Carey, claiming she exploited his “popularity and unique style” and that her “derivative” song version caused consumer confusion and has “reaped undeserved profits.” Currently, there are 177 copyrighted songs with the title “All I want for Christmas is You,” dozens of which came out even before Vince Vance and the Valiants’ version.
The complaint alleges both copyright and trademark claims. Copyright law is a type of intellectual property, and protection occurs as soon as an author of the original work “fixes” it in a tangible form of expression. For music, “Fixation” happens when a song is recorded in an audio file or if a musical work is notated in either sheet music or a digital file. Copyright law can protect lyrics and melodies but usually cannot be applied to the title of the song. A general rule of thumb is the more words an artist uses, the harder it will be for another artist to replicate exactly without copying. Therefore, short phrases, such as song titles, don’t generally fall under the protection of copyright law.
A trademark, on the other hand, must be formally registered, as codified under the Lanham Act, 15 U.S.C. §§ 1051 as amended. Trademarks protect the consumer by preventing consumer confusion. For trademarks, individuals and companies can apply to trademark short phrases, unlike copyright law, and therefore a song title can be trademarked.
Musicians have been able to trademark their song titles; for example, David Bowie successfully trademarked “Ziggy Stardust.” But many artists struggle to do the same. In 2011, a California federal judge rejected Madonna’s claim that she had a trademark over the term “Material Girl” from a hit song released in 1985. Madonna had been in a legal battle with a Los Angeles clothing brand, LA Triumph, which had successfully registered “Material Girl” as a trademark in 1997. Judge S. James Otero wrote that her argument that she “created the ‘Material Girl’ mark through her performances fails as a matter of law” and that “the singing of a song does not create a trademark.”
There are two basic requirements for trademark eligibility; a mark must be in use in commerce and be distinctive. There are four categories of distinctiveness under the Act: arbitrary/fanciful, suggestive, descriptive, and generic. For an individual to claim trademark infringement they must show they have a valid and legally protectable mark and that the use by others causes a likelihood of confusion.
Trademark or copyright law aside, this case also begs the question of statutes of limitations. For a song that is known as the unofficial opener of the holiday season and has had record-setting success, it becomes difficult to believe that an individual in the music industry hadn’t heard this song until now.
Stone filed the suit in New Orleans after buying a copy of Carey’s 1994 album “Merry Christmas” in April 2022, a year after Stone’s team reached out to Carey’s legal team and sent a cease and desist letter to stop using the song title. He is suing Carey, her co-writer Walter Afanasieff, and Sony Music Entertainment for copyright infringement and misappropriation. However, for copyright infringement, the statute of limitation is three years from the date of the last act of infringement. And for trademark infringement, the statute of limitations is four years from the date of the encroachment, unless it is part of an unfair competition claim, in which case it must be filed within two years.
