Katy Perry is undoubtedly one of the biggest stars – and biggest brands – in the entertainment world today. Her position in the firmament was cemented by her recent half-time performance at Super Bowl XLIX which, as Rolling Stone put it, ‘more than made up for a sleepy affair on the field.’

However, it was a member of Perry’s supporting cast that really made a ‘splash’ on social media.

In case you have managed not to encounter him (or, perhaps, her) already, meet ‘Left Shark’:

Click here to view image.

Left Shark – so named to distinguish her (or him) from the shark dancing on the other side of Ms Perry during her performance of Teenage Dream – gained instant fame after apparently losing track of the choreography in front of over 110 million US viewers. The hash-tag ‘#leftshark’ immediately started trending on Twitter, where (of course) some wag created an account and profile for the character (‘I may be left shark, but I’m the right shark for you’).

‘Viral’ content and IP rights

This kind of fan involvement and creativity is all fun and games until somebody decides that their intellectual property rights have been infringed. Within days, an artist in Orlando, Florida, named Fernando Sosa had created a 3D-printed model of ‘Left Shark’ that he was selling for US$24.99 via online marketplace Shapeways. This prompted lawyers for Katy Perry to send a cease-and-desist letter, claiming that the models infringe copyright in the shark costume. At the time of writing, questions have been raised as to whether the costume is sufficiently original to attract copyright protection and, if so, whether Katy Perry is able to establish ownership of the copyright. With these questions unanswered by Perry’s lawyers, it appears that – for now, at least – Sosa’s sharks are back on sale at Shapeways.

In the latest development, Katy Perry’s company Killer Queen, LLC has filed applications at the US Patent and Trademark Office (USPTO) to register LEFT SHARK, RIGHT SHARK, DRUNK SHARK and BASKING SHARK as trademarks in respect of goods and services including cell phone covers, stickers, mugs, various clothing items, plush toys, figurines and live musical and dance performances.

Can Katy Perry really ‘own’ LEFT SHARK?

This raises the question of whether Perry can really claim proprietorship of these terms, or if this latest intellectual property land grab is a bridge too far for the pop star?

It is pretty clear that Katy Perry did not coin the term LEFT SHARK. There are well in excess of 100 million witnesses to the fact that, at the time the name was gaining currency on social media, Ms Perry was on a stage in Phoenix, Arizona, largely oblivious to the antics of the costumed dancer to her right, let alone the interest it was generating on Twitter.

However, this is not in itself a barrier to trade mark ownership. In contrast to patent rights, there is no ‘novelty’ or ‘inventiveness’ requirement for a trade mark, and unlike copyright a trade mark need not be ‘original’ or meet any minimum standard of substantiality. A common word, like APPLE, or the name of an ancient Greek goddess, like NIKE, can be legitimately adopted as a trade mark.

What is a trade mark?

The definition of a trade mark that appears in the Australian Trade Marks Act 1995 is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.’ A very similar definition appears in the US law.

The point is that, in order to function as a trade mark, a word or phrase must be capable of communicating to the relevant consumers the origin of the goods or services to which it is attached or associated. The challenge for Katy Perry, therefore, is to establish that the phrase LEFT SHARK (or any of the other terms she is seeking to register) will be recognised by consumers as a trade mark, i.e. as a sign distinguishing goods and services provided by Perry’s Killer Queen, LLC from the goods and services of other traders.

In more usual circumstances, this would probably not present a problem. Imagine (if you can) a world in which the Super Bowl, and Left Shark’s adorably uncoordinated dance moves, had never taken place. The term LEFT SHARK would then make no obvious reference to any particular person, costume or event. In the absence of existing connotations, it does not appear to be descriptive of cell phone covers, figurines, live musical and dance performances, or any of the other goods covered by Katy Perry’s trade mark applications. In all likelihood, it would be registrable.

So is one event – no matter how widely viewed – and a social media meltdown sufficient to change the nature of a phrase like LEFT SHARK such that it is no longer capable of acting as a trade mark on behalf of a particular proprietor?

Trade mark treatment of ‘viral’ words and phrases

There have been other recent examples of attempts to register, as trade marks, terms popularised on social media, most notably I CAN’T BREATHE (a reference to the last words of Staten Island resident Eric Garner, who had a heart attack and died in November while being arrested) and JE SUIS CHARLIE (the slogan of solidarity with the French satirical magazine Charlie Hebdo following the attack on its offices on 7 January 2015).

In Europe, the Office for Harmonisation in the Internal Market (OHIM), which is responsible for examination and registration of European trade marks, took the unusual step of issuing a statement on 16 January 2015 to explain why it would ‘probably’ not accept applications to register JE SUIS CHARLIE. In particular, it stated that ‘the registration of such a trade mark could be considered “contrary to public policy or to accepted principles of morality” and also … as being devoid of distinctive character.’ The French Intellectual Property Office had issued its own statement (in French) a few days earlier, explaining why it would not accept any application for registration of JE SUIS CHARLIE.

In Australia, the Trade Marks Office last year rejected an application to register MH370 (a reference to the flight number of the Malaysian Airlines flight that disappeared on 8 March 2014 while flying from Malaysia to China), although a combination of two letters and three digits would normally be considered distinctive in the absence of some established meaning. An Australian application to register JESUISCHARLIE as a trade mark in respect of publishing services was filed on 12 January 2015, and subsequently withdrawn prior to examination following adverse coverage in the media.

Applications recently filed in the US seeking registration of I CAN’T BREATHE and JE SUIS CHARLIE have, at the time of writing, yet to be examined. However, my expectation is that all such applications will be rejected. In earlier cases, the USPTO has treated popular slogans including OCCUPY WALL STREET, BOSTON STRONG and HANDS UP DON’T SHOOT as ‘informational matter’ that is not registrable under US trade marks law.

Conclusion – the fate of Katy Perry’s SHARK marks

Overall, then, it seems likely that Katy Perry will encounter some difficulty in registering LEFT SHARK as a trade mark. The term is already being widely used to describe a range of products and images bearing a greater or lesser similarity to the blue-and-white dancing fish, and may therefore fall foul of the USPTO’s practice of rejecting ‘informational matter’.

She may also encounter similar difficulties with RIGHT SHARK (the obvious complement to LEFT SHARK) and DRUNK SHARK (a term that has also been widely used on social media). The prospects of registration may be better for BASKING SHARK since, other than being descriptive of a species of shark, it does not have any existing association with the various goods and services specified in the application.

It will, in any event, be interesting to see how these applications play out, and whether Katy Perry persists with her attempts to monopolise an internet meme!

On a final note, it is perhaps just as well for Katy Perry that the trend of seeking to tie up aspects of performance and authorship via trade mark rights is relatively recent. Had the practice been common back in 1974, she might have found herself having to answer to the estate of the late, great Freddie Mercury for her choice of company name, Killer Queen, LLC. It may be true that Pop Will Eat Itself although, if Katy Perry has her way, any attempt to consume her contribution will result in somebody choking on her trade mark rights!