Similar to songs titles, there seems to be an infinite number of band names to pick from. However, unlike song titles, band names can be protected. Trademark protection is a tricky but hot topic these days. With the numerous licensing opportunities presented to successful bands and musicians the protection of a band or artist’s performance name is extremely important.
Bob Marley is a perfect example. Marley has become more than just a musician’s name. People who know Marley’s music immediately associate it with Reggae, Jamaica and a certain “laid back” lifestyle. Over several decades, the Marley name has been exploited by thousands of people for millions of dollars. A protectable name has gone unprotected.
Bob Marley’s estate recently reached a global licensing deal with Hilco Consumer Capital, a major private equity fund that licenses well known brand names to equally well known merchants. The Marley family had grown tired of the millions of dollars it lost out on thanks to sales by unlicensed dealers across the globe. Think of all the Marley paraphernalia that can be bought on the street or in your local head shop. Not to mention the schwag manufactured in China and India that finds its way into the US and European markets.
After years of sitting by and allowing trademark infringers to profit off of the Marley brand, the Marley’s took appropriate action. Hilco with hits large corporate infrastructure and influence will be able to secure specific approved relationships with merchants. Any sales that are occurring outside a relationship developed by Hilco will be an obvious infringer and can be dealt with accordingly. Bootleggers will be less likely to sell their unlicensed goods to retailers. That is not to say that you will no longer be able to pick up a Jamaican Flag with Marley’s face on it at Panama City beach during Spring Break ’09. However, you will not be able to walk into Spencer’s Gifts at your local mall and pick up a “Bob Marley, Legend” t-shirt or hemp necklace. The family through its new corporate partnership have taken the necessary steps to register all things related to Bob Marley and his musical goods and services. Those trademarks can now be policed and enforced if need be through the court system or the mere threat of a law suit.
Most likely, you and your band are not fielding offers from Hilco or other major license distribution companies. Chances are you are not worried about having your band’s name emblazoned on backpacks or hoodies at the mall without your permission. Yet, get a little bit of buzz going and unlicensed merch will start popping up online and even at your shows. Bootleggers love to capitalize on new bands because most do not know how to protect their rights. That’s why you should be prepared.
Registering your band’s name as a trademark will give you statutory protection. Statutory protection will allow you to enforce the rights you have through your unique band name or logo (assuming its unique). By registering your band’s name as a trademark, you can take the steps necessary to stop infringers from using the name or logo, recover monetary damages from those who infringe those rights and even, in specific cases, get the attorney’s fees that you spent to enforce your rights back from the infringer.
Sounds great, right? It is, but like most things with the government, the trademark process is not exactly easy. You have to do your research first. You can’t just pick a name that you think is rad without determining if someone else beat you to the punch. You also cannot profit off of another band’s name and notoriety. While Jon Bovi may think they are the “opposite of Bon Jovi”, chances are, Bon Jovi doesn’t think so. If there is a likelihood that the public will be confused as to the source of where the music is coming from, the government is not going to approve your application. Our friends from SNL may think that they have nothing to do with the actual band, but there is no way they could ever make it with a name that is so similar to the original.
Find out if there are any other bands using the name you want for your band; see if that band registered its name with the United States Patent and Trademark Office. Do a MySpace and Google search. Go to www.allmusic.comand look up your chosen name. While there are a lot of variables to determine if a band name is trademarked or protectable, if you find a band name that is still being used by a band today or was registered in the past, its time to go back to the drawing board for your own band name. Do not start a marketing campaign, release an album or start multi-state tour with a band name until you are sure you are the only ones out there using it. As with most things involving the law, its always a good idea to talk to a lawyer to help you out with the process.
Recently I attended the Q-Tip and Cool Kids concert at House of Blues. During a bumping version of Bointa Appelbaum, my friend Aaron, taking a brief break from bobbing his head off-beat, asked me how can Q-Tip play this song without the rest of Tribe? Relishing the opportunity to spread my music and law knowledge I began explaining to him how copyrights work and wondering aloud whether a Tribe Called Quest had a band member agreement. Aaron, much like most people I talk to about the law, immediately glazed over and went back to doing his version of the electric slide.
I figure, however, if you are reading this blog, you may want to know how Q-Tip was able to publicly perform some of Tribe’s greatest hits or how Roger Waters could sing Dark Side of the Moon or how Phil Lesh and friends can delight fields of the unshowered with Sugar Magnolia. These artists have the ability to dig deep into their former band’s repertoire for several reasons.
Most of us have been to a concert where the headliner covered another song. Bands can play other bands material at a concert so long as they register the performance (oftentimes after the fact) with ASCAP, BMI or SEASAC. But the Q-tip situation is a bit different. Q-Tip was treating the crowd to set full of classic songs made famous by his former group. If Phife Dawg was on tour, could he ask if he “Can Kick It” (click on the link to see who holds the copyright)?
The answer, unfortunately, is that it depends on how organized the band was. If they had a band member agreement (see https://lawyer4musicians.com/2008/08/ for more about band member agreements) it undoubtedly contained provisions for an eventual band break up. Issues that may seem unnecessary today may have a huge impact later. A leaving member or termination provision will have an invaluable effect on how your band’s brand is treated after the life the of the band is over. If properly written, the termination provision will ensure that the band’s name and its value are not diluted. It will set out who can use the songs, who can tour under the band’s name and who can re-issue recordings.
Think of it this way: Smashing Pumpkins break up (for like the 5th time) but James Iha and Billy Corgan want to tour with new members using the Smashing Pumpkins band name and the Pumpkins’ catalog of music. If there is no agreement between the members of the Pumpkins, and both try to tour under that name, they will both most likely fail or at least end up in court fighting for the right to use the name and songs.
For independent artists that are not quite at the band member agreement phase there are steps to take to ensure that this type of confusion and conflict do not occur. First, just talk to your band mates about it; get a sense for where everyone is on the issue of song ownership. Second, register your copyrights in your recordings. The copyright registration will allow you to designate the author of each song you register. That way, if there is a debate down the road you can at least point to the copyright to show who owns what and who has to get permission from whom before a song is performed or recorded. Third, trademark your band name. The trademark registration will allow you to claim ownership of your band name and logo. Finally, suck it up and put everything in writing. Keep in mind your first agreement can be amended and modified as many times as you want.
SHAMELESS SELF PROMOTION OF THE WEEK: WHATZISFACE