SUGAR ADDICTION: TIWA SAVAGE’S SONG COVER AND THE DOCTRINE OF TRADEMARK DILUTION
Growing up in the late 2000s, in Nigeria where we only heard songs on radio, TV, or from club mix CDs produced at Alaba, an album or song cover art rarely mattered. In fact, only hit songs from the album did, never the art. So, it was not uncommon to see an artiste with a face cap, against a red background with the album title printed in ALGERIAN font to his right, and that was all – album ti set. The creativity involved in a cover art in those years were quite minimal, compared to now.
Today, cover arts are released and marketed way before the songs or album because of its role in music distribution. From the first sale in 1997 to the creation of Napster and iTunes in 1999 and 2003 respectively, digital music sales and streaming platforms have contributed to the significance of album covers. In a world where books are judged by their covers and seeing is believing, album covers give an audience insight into the entire body of work. Their aesthetic effects are also noteworthy. And for folks who love to send screenshots of their playlist to WhatsApp statuses, album covers instill some level of pride – at least you are streaming and not pirating from 9ja-unloaded.net.
Moving away from all that background info, Tiwa Savage promised an album in May and as the queen of Nigerian music that she is, she delivered a hit single yesterday. Talmabout talk and do! However, it has become too glaring to escape our notice that Tiwa Savage has a soft spot for sugary things. From releasing an EP titled “Sugarcane”, to her cover art for the new single, “Dangerous Love”, Tiwa Savage loves sugar.
At about half-past 8pm on the 8th of July, Tiwa took to her Twitter page to announce a new profile picture which doubled as the song art for her new single. The song art was an adaptation of the popular St. Louis sugar package design. Despite the ban on the importation of foreign produced sugar brands, including St. Louis, as far back as 2013, the brand still has a remarkable popularity and remembrance among Nigerian consumers. Asides being Nigeria’s trusted cubed sugar brand for years, it was the go-to example for Mathematics teachers trying to illustrate the shape of a cube. In other news, St. Louis was so much of a known brand, it did not even have to advertise.
Now, from IP perspectives, Tiwa Savage’s cover art may be a little bit of an issue, especially if she lacks the authorization to revamp St. Louis sugar’s trade dress. A trade dress is a form of intellectual property that protects the “look and feel” of a product or put differently, the design and packaging of the product. A trade dress can be protected by registration or by virtue of long usage under common law where it can be proven that such trade dress is distinctive and non-functional. It can then safely be concluded that the St. Louis sugar trade dress consists of the visual appearance Tiwa Savage adapted into her cover art. Is this a form of infringement? Most likely. IP practitioners call it Trade dress dilution.
Trade dress dilution is a very similar concept to trademark dilution. Trademark dilution is a form of intellectual property infringement that occurs when a producer uses a popular mark to market a product entirely dissimilar from that which the mark is famous for. What dilution does is to lessen the uniqueness of a trademark, service mark, or a trade dress. Dilution can occur even if there is no competition or if the probability of confusion in the market for both products is low, or in this case, non-existent. There are two forms of dilution: tarnishment and blurring, the former being a form of dilution which tarnishes the original meaning associated with the mark while the latter involves merely using the mark for other reasons asides its original usage.
To sweeten this with few cubes of legal sugar, a Delhi High court in the case of Daimler Benz Aktiengesellschaft v. Hybo Hindustan [AIR 1994 Del 239] held that usage of the mark “Benz” on underwear will weaken the uniqueness and integrity of the mark. The court noted that this was notwithstanding the mark’s international reputation in the automobile industry was was largely unrelated to underwear.
Put into perspective, a picture of a sitting lion (or lioness, gender does not really matter) in a rounded square callout box with a blue background creates two impressions: St. Louis sugar and Dangerous Love. This will, without doubt, weaken the reputation and distinctiveness of St. Louis sugar’s pre-existing trade dress. Under common law, owners of a diluted mark can be granted an injunction to prevent the continued usage of the mark where the owners can prove that the mark is famous, distinctive, and non-functional. Without more, the St. Louis trade dress fulfils these requirements.
While there is the fair usage exception to the laws on dilution, Tiwa Savage’s usage is purely commercial and would not avail her. In all, there is a valid cause of action. What remains unknown is whether Tiwa Savage has permission to use the trade dress or whether the legal representatives of St. Louis sugar are willing to “May I” and “approach without being forward” before My Lord at the Federal High Court.
Author: Research Team