American rapper, singer and songwriter Pitbull (Armando Christian Pérez) has successfully trade marked his tell-tale yell “EEEEEEEYOOOOOO!” that features heavily in most of his songs. It is one of the many famous Pitbull-isms, along with rhyming ‘Kodak’ with ‘Kodak’, or calling himself Mr. Worldwide and Mr. 305. The U.S. Patent and Trademark Office (USPTO) in October last year, registered two trade marks for Pitbull’s yell, in both sound recordings and for live performances.
For those unfamiliar with the sound, this YouTube video helpfully contains a compilation of Pitbull’s “EEEEEEYOOOOOO!” sound from several of his songs.
The sound is actually called a ‘grito’. This is a traditional Mexican loud shout, signalling joy or excitement, that is used culturally by mariachi artists and others.
Leslie José Zigel, Pitbull’s general counsel, stated in an interview with the New York University (NYU) Law Journal that Pitbull uses his grito as a sign that he is about to start rapping, and is known in the music industry for using it to introduce himself.
NYU’s Journal of IP & Entertainment Law published an article on April 17 2020 by Pitbull and his lawyers, in which they discuss his ‘iconic’ yell that ‘sets him apart from all other artists, giving him a distinctive sound’. In the same interview, one of Pitbull’s other lawyers Justin McNaughton explained that in registering the trade mark, they submitted a declaration from Pitbull himself as well as evidence of it’s wide-use.
The article also details the praise that Pitbull received for his guest appearance in the song ‘Mi Gente’ by J Balvin and Willy William – when in fact he had not appeared in the song. The article explains that the source of confusion was due to the song’s use of a similar grito, heard at 00:52.
This experience would have undoubtedly motivated Pitbull to seek registration of his two trade marks. He also released a remix of Mi Gente within a few weeks, that begun with a loud “EEEEEEEYOOOOOO!”.
Sound trade marks in Australia and the USA
Registering a sound trade mark in the USA is largely similar to the process of registration in Australia. A sound trade mark must meet the same requirements as any other sort of trade mark. In order to proceed to registration, the mark must signify the trade source of the goods or services for which it is to be used.
According to Section 1202.15 of the USPTO’s Trademark Manual of Examining Procedure: “Sound marks function as source indicators when they assume a definitive shape or arrangement and create in the hearer’s mind an association of the sound with a good or service.” There are currently about 234 sound trade marks registered in the US. When a sound is familiar or commonplace (such as a yell), an applicant must be able to show that the sound has acquired significant recognition among consumers in order to be registered.
Similarly, in Australia, the Trade Marks Act allows for the registration of a sound as a trade mark in the same way any other mark may be registered. IP Australia’s Manual of Practice & Procedure notes that “sounds which are not functional or common to the trade when considered in respect of the goods/services claimed are adapted to distinguish the applicant’s goods” and are therefore registrable (Part 21).
There are currently 58 active sound trade marks registered with IP Australia. Some popular sounds that have been successfully registered in Australia include the O’Brien sound trade mark owned by the O’Brien glass repair company, which consists of the vocal harmonisation of the letter ‘O’ followed by the word ‘O’BRIEN’ rendered as ‘O’, ‘O’, ‘O’, ‘O’BRIEN’. (Trade mark number 1051140). I am sure we have also all heard the ‘Ahh McCain you’ve done it again’ phrase that became a registered trade mark over 20 years ago (Trade mark number 759707).
It therefore seems that Pitbull’s grito would be a good contender for registration in Australia, given the strong evidence Pitbull’s lawyers were able to adduce in the USPTO. His lawyers in the NYU article describe how the sound ‘puts his stamp of ownership on a song..’ and is used ‘as a sort of sonic signature’.
Implications for the music industry
This registration may be a signal to other artists that registering a trade mark for their distinctive sounds is a viable form of protecting their branding in the future. While copyright is the key protection mechanism for the work of musical artists around the world, the potential to use trade mark law to protect an artist’s sound is a relatively new right that appears to have been under-utilised in circumstances where many artists use catchphrases or sound bites of their name for branding. Perhaps this high profile example will serve to open the door for more sound trade mark applications from players in the music industry? Ryan Kairalla, one of Pitbull’s lawyers, certainly thinks so. He sees Pitbull’s successful registration as ‘the start of something’.
The extent to which Pitbull will choose to enforce his protected trademark, and against whom, remains to be unseen. In the meantime, let’s all enjoy Mr. Worldwide’s recently released ‘I Believe That We Will Win‘, an anthem recorded in order to inspire us all during the coronavirus pandemic.
This article was prepared by Bridie Egan and Katerina Armstrong.