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July 14th, 2006
What’s in a Name?
If you are an individual artist or group in the music industry, there are numerous assets within your professional name, such as goodwill, commercial recognition, and valuable intellectual property rights. The reputation and recognition of an artist’s music is built around the artist’s professional name, which is what consumers use to identify the artists they enjoy.
Therefore, an individual artist or group pursuing a career in the music industry should take the necessary steps to protect his, her or its professional name. This protection can be obtained through the use of trademark law. Having trademark protection gives the artist the knowledge that he, she, or it is legally entitled to use the professional name in a commercial setting without the fear that another artist or party has a claim of ownership for that name – Dinosaur Jr., Green Jelly, Death From Above 1979, and Suede are just a few examples of artists that were forced to change names due to trademark issues. Additionally, trademark protection can prevent others from using the same or similar professional name in the music industry.
Background On Trademark Law
A trademark or service mark is a word, name, or symbol that informs the public of the source of the goods or services being offered, and assures the public of the legitimacy and quality of the goods or services being offered. Generally referred to as just “trademarks,” service marks are used to identify services offered to the public, while a trademark, on the other hand, distinguishes the words, names, or symbols used on tangible physical goods. An artist’s professional name may function as a service mark for entertainment services if it is used to identify and distinguish the service of providing live performances from other artists or as a trademark for a series of musical recordings or other merchandise such as t-shirts, stickers, and posters.
In the United States, trademark and service mark rights are created by use in commerce and the resulting development of “secondary meaning” – the public’s recognition and association of the mark with a source of goods or services. Because rights are based on use, an artist need not register his, her or its name in order to claim rights in or protection for that name as a mark. The artist must only be the first party to continuously use the name in commerce for the specific goods and services offered under that name.
Although it is not required to protect a mark, federal registration of a trademark or service mark provides certain statutory benefits that are not provided by an unregistered or “common law” mark. Registering the professional name as a trademark or service mark is truly the best way to protect it because registration prevents third parties and departing group members from capitalizing on the name. Unlike common law marks, if the artist intends to use a name in commerce but has not done so, the artist may apply for trademark registration based on that intent, and receive priority over any subsequent users. Essentially, although an artist may have a common law trademark or service mark in its name because of its prior use of that name, it is always advisable to register the mark with the United States Patent and Trademark Office because such registration demonstrates the validity of the trademark and gives the artist exclusive ownership over the name.
In order to claim trademark or service mark rights in its professional name, the most significant thing an artist can do is to deliberately and continuously use the mark in public over a geographically extensive area to identify itself. This use must be continuous, as it is possible that if an artist held trademark rights to its name and ceased touring, making and releasing records, and receiving royalties, it would be deemed to have ceased use of its name because the public would no longer identify the artist with activities in the music industry. Therefore, an artist must actively perform and offer, or at least collect royalties for, records, CDs or other merchandise under its professional name to maintain trademark or service mark status.
Choosing and Clearing the Artist’s Name
Like any other trademark, when selecting an artist’s professional name it is important to adopt a name that is distinctive and unique. The more distinctive the name, the more effective the protection the name has as a trademark. Moreover, an artist not only wants a distinctive name to protect its own identity, but the artist needs to avoid infringing upon other parties’ names. Because the likelihood of confusion between two marks is the hallmark for trademark violations, a new artist should not choose a professional name that is identical to or even similar to an existing name in the music industry. Litigation over the proper ownership of the name requires both time and money, and there is a risk that the artist could lose the right to use the name. Because the goodwill in its name is all a new artist has when starting its foray into the music industry, starting over is not an option! Therefore, it is extremely important for an artist to clear his, her, or its professional name prior to significant use in the industry.
There have been numerous instances where an up and coming artist had to change its name due to trademark issues. For example, “Dinosaur Jr.” (formerly “Dinosaur”), “The Hopefuls” (formerly “The Olympic Hopefuls”), “Green Jelly” (formerly “Green Jello”), “Death From Above 1979” (formerly “Death From Above”), and “The Verve” (formerly “Verve”) all had to change their professional names due to various trademark issues, the latter two involving similar record label names rather than other artist names. Moreover, it is not only unknown artists that have to change their professional names, as commercially successful artists can be trumped by the “little guy” that has priority over the professional name. A recent example involved CBS’ rock band reality show Rock Star: Supernova, wherein the band, comprised of famous musicians and the show’s winner, was called “Supernova.” A lawsuit filed by a lesser known band called “Supernova” forced the reality band to change its name (not too creatively to “Rock Star Supernova”). Even the U.S. Postal Service was not pleased to see that there was an artist called “The Postal Service,” but an amicable resolution allowed the artist to retain its name.
Because the music industry is global, artists must also choose a name that will not infringe on foreign artists’ marks if the artist desires to go abroad. In the mid-1990’s, popular British bands “Suede” and “The Charlatans” were forced to change their names for the U.S. market due to artists’ prior uses of those names in the United States. “Suede’s” change to “The London Suede” and “The Charlatans” change to “The Charlatans U.K.” may have harmed both bands’ chances at widespread U.S. success, as they could not rely on the goodwill associated with their famous name back home. So it is important for an artist to search the music industry worldwide in order to avoid conflicts when going abroad.
That being said, it is not enough to take a trip to the local record store to clear an artist’s name. An artist must check numerous sources to survey the global music industry, such as the databases of the performing rights societies (e.g., ASCAP, BMI, SESAC) and musicians’ unions (such as the American Federation of Musicians), music magazines, and review popular music websites such as MySpace, PureVolume, Pitchfork, All Music Guide, and The Band Register.
Finally, having the clear right and title to an artist’s professional name is necessary if the artist seeks to sign a recording contract. Because record labels will need to use the name in connection with the marketing and sale of pre-recorded audio, they will generally not sign an artist unless that artist owns the rights to its name, free and clear of any third party rights.
Protection of Artists’ Names
Recognizing the value of an artist’s name as a mark, courts have frequently applied trademark law to protect the professional names of artists. Rights to an artist’s professional name and the right to perform under that professional name are significant rights in the music and recording industry. Such rights are monetarily valuable to both the artist and record companies alike, and preventative legal measures should be taken in order to ensure protection for the name.
Regardless of whether it’s registered or not, the artist’s professional name will only have trademark protection in the field for which the mark is used, plus in the logical zone of expansion of that field. For artists, this field will primarily be entertainment services and pre-recorded audio and video. Ancillary goods, such as posters and t-shirts, may be within the logical zone of expansion, but the artist’s professional name often needs to achieve secondary meaning in order to have trademark protection for such goods.
Once the artist’s professional name is properly used as a trademark or service mark, the artist must enforce its rights to that mark. No other party in the industry should use or exploit the professional name without permission, if at all. Not protecting the name could be perceived as demonstrating the inherent weakness of the artist’s name as a mark. Therefore, the artist must prevent other parties in the music industry, including artists or bootleg merchandisers, from using or exploiting his, her, or its valuable mark.
Artists should also register their professional name as an Internet domain name. While this is not a substitute for trademark registration, operating a website at that domain name would go a long way to show use of the name as a mark in commerce and would put others on notice of the artist’s use of the name in the music industry.
In addition to the use of trademark law to protect the artist’s name, state right of publicity laws can offer additional protection. These laws generally protect a person’s name, picture, likeness, or voice from being commercially appropriated, and have been extended to an artist’s professional name – be it the artist’s actual name or stage name. The band Weezer recently sued Miller Brewing Co. and its advertising agency under both right of publicity and trademark laws for using the name Weezer in advertisements promoting Miller’s beer, arguing that its name was being commercially appropriated without authorization.
Because artists often license their names and likenesses for commercial exploitation, the artist has a strong interest in preventing unauthorized use of their professional names and can do so through both rights of publicity and trademark laws.
The rights in an artist’s professional name are extremely important. The artist’s professional name is a valuable commodity that helps consumers identify the artist’s goods and services. Therefore it is imperative that an artist clear his, her, or its professional name before offering goods or services under that name, and protects the name once it is used in commerce. While it may seem like an expensive proposition during the start-up phase of an artist’s career, obtaining trademark protection is well worth the effort if an artist plans on having a lasting career in the industry.
This article first appeared in The Deli Magazine in 2006.
Please feel free to contact Christopher Chase if you have any questions or comments. This article is only a background discussion regarding trademark issues, but is not legal advice, and may not be applicable in all situations. Since trademark law is quite complex, it might be useful to consult an attorney who can assist with the search and registration process for an artist’s name as a trademark or service mark.
Other Published Articles
Professional Negligence in New York
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A Historical Retrospective on New York’s Right of Publicity Law: 115 Years of New York Court of Appeals Jurisprudence
The New York State Bar Association's Entertainment, Arts and Sports Law Journal published Edward Rosenthal and Barry Werbin's article “A Historical Retrospective on New York’s Right of Publicity Law: 115 Years of New York Court of Appeals Jurisprudence.” Originally published in Volume 29, Number 3 of the Entertainment, Arts and Sports Law Journal (Fall/Winter 2018), a publication of the Entertainment, Arts and Sports Law Section of the New York State Bar Association.
January 2 2019
Entertainment Promotion Gets The Same First Amendment Protection As The Content Promoted
The Association of Media & Entertainment Counsel published Rick Kurnit's article "Entertainment Promotion Gets The Same First Amendment Protection As The Content Promoted" in their Fall 2018 magazine.
December 17 2018