If I were administering Taylor Swift’s estate, I would have to continuously monitor her trademarked lyrics “This sick beat”, “Party like it’s 1989” and “Cause we never go out of style”, amongst others.  Generally, artistic works involve copyright to protect it from being used and sold by others.  But, as song titles and lyrics are not protected by copyright, Taylor Swift turned to trademark law to protect these valuable assets.

A trademark includes words, sounds, or designs that are used to distinguish the goods and services of one person from others in the marketplace (think of the apple with a bite out of it on the back of your iPhone).  A trademark can be incredibly valuable, and when an estate owns a trademark, the executor has the fiduciary duty to the beneficiaries to protect it from being used by others.  A trademark provides legal protection over the identifying elements of a business and it both prevents others from trying to pass off the goods and services of others as their own and it enhances the reputation of the business.  An executor in charge of an estate’s trademark needs to understand the laws that apply in the relevant jurisdiction.  Different jurisdictions have different rules about whether a trademark must be registered to provide protection or not.  In Canada, the legislation that applies to trademarks is the Trademarks Act. 

What makes a trademark a unique form of intellectual property is the general rule that “if you don’t use it, you lose it.”  The owner of the trademark (which could be the executor of an estate), must prevent competitors from causing consumer confusion, riding on the goodwill of the business, or from harming the brand’s reputation.   If I were administering Taylor Swift’s estate, I would need to stop anyone who manufactured and sold clothing using her trademarked lyrics.  If I failed to stop them, her Estate would risk losing its valuable trademark rights because her official merchandise would not be distinguishable from her competitor’s products.  In China, I would need to police anyone trying to sell merchandise under her name, as “Taylor Swift” is a trademark in that jurisdiction.   To prevent competitors from selling knock-off products under her name, she launched a clothing line specifically targeted at that market.  To prevent confusion with unofficial merchandise, her products include an authentication feature to allow customers to verify online whether their product is legitimate or not.  I would need to understand the nuances in China’s trademark laws, which includes that China has a first-to-file rather than a first-to-use trademark system.  Taylor Swift cannot sell bathing suits under her name because a competitor filed for that trademark first.

Often, intellectual property is not fully understood or leveraged, which can lead to economic loss.  Take the kiwi as an example.  In 1924, a New Zealand horticulturalist developed a new type of kiwi fruit, which has become the most commercially successful variety of the fruit.  As the inventor did not secure any legal protection over the new variety, other growers quickly began to produce and sell it without his permission or compensating him.  As a result, he lost his commercial advantage.

As technology progresses, the number of estates that include intellectual property rights as assets is going to increase.  Industries that never had to worry about intellectual property protection may need to do so at some point.  Using the transportation system as an example, a ride share company disrupted the taxi business, and part of their success is based on the fact that their app is protected by patents and industrial design.  When valuable intellectual property is involved in an estate, it is important to choose an executor who has the knowledge, skill and experience to help them carry out their fiduciary responsibilities.

Written by Holly LeValliant, Scotiatrust