Bands and Brands: Essential Trademark Law for Musicians April 29, 2009 Michael Atkins Washington Lawyers for the Arts

Road Map Trademark basics Selecting and clearing trademarks Trademark ownership Licensing basics Right of publicity Developing a trademark strategy

Trademark basics

Selecting and clearing trademarks

Trademark ownership

Licensing basics

Right of publicity

Developing a trademark strategy

Definition of trademark A word, name, symbol, device, or other designation, or a combination of such designations, that is used in commerce in a manner that distinguishes the goods or services of its owner from those of others It’s an identifier of source Includes names and logos

A word, name, symbol, device, or other designation, or a combination of such designations, that is used in commerce in a manner that distinguishes the goods or services of its owner from those of others

It’s an identifier of source

Includes names and logos

Trademarks symbolize goodwill “Goodwill” is the good feeling consumers have when they see, hear, or think of a seller or its trademark In economic terms, it is the probability that, based on this good feeling, consumers will come back in the future e.g. , Consumer hears song on radio, wants to buy CD

“Goodwill” is the good feeling consumers have when they see, hear, or think of a seller or its trademark

In economic terms, it is the probability that, based on this good feeling, consumers will come back in the future

e.g. , Consumer hears song on radio, wants to buy CD

Acquiring trademark rights Use the mark in connection with good or service United States, England, Australia Automatic rights in geographic area where mark is used Registration expands rights to entire U.S. By registering Most countries Important if performing, selling outside U.S.

Use the mark in connection with good or service

United States, England, Australia

Automatic rights in geographic area where mark is used

Registration expands rights to entire U.S.

By registering

Most countries

Important if performing, selling outside U.S.

What are trademark rights? Exclusive use In relevant geographic area Tied to specific goods/services Right to enjoin others Prevent other users from using same or confusingly similar mark Limited by area, goods/services

Exclusive use

In relevant geographic area

Tied to specific goods/services

Right to enjoin others

Prevent other users from using same or confusingly similar mark

Limited by area, goods/services

Basic trademark principles TM law protects against “likelihood of confusion” (infringement) In conflict between mark owners, first to use mark in commerce generally wins “ Senior” user has priority over “junior” user “ Use” means in connection with good/service sold Use as a domain name not sufficient Trademark rights last forever if continuously used Rights presumed abandoned after 3 years of nonuse

TM law protects against “likelihood of confusion” (infringement)

In conflict between mark owners, first to use mark in commerce generally wins

“ Senior” user has priority over “junior” user

“ Use” means in connection with good/service sold

Use as a domain name not sufficient

Trademark rights last forever if continuously used

Rights presumed abandoned after 3 years of nonuse

Selecting a trademark Must distinguish your services from others For practical purposes, should be memorable and unique Tells consumers who you are Strong trademarks are “fanciful” (DECEMBERISTS, YEAH YEAH YEAHS) or “arbitrary” (BLACK LIPS, SWAN LAKE) Weak trademarks are “descriptive” (PETER BJORN AND JOHN) Strong marks get more protection than weak marks

Must distinguish your services from others

For practical purposes, should be memorable and unique

Tells consumers who you are

Strong trademarks are “fanciful” (DECEMBERISTS, YEAH YEAH YEAHS) or “arbitrary” (BLACK LIPS, SWAN LAKE)

Weak trademarks are “descriptive” (PETER BJORN AND JOHN)

Strong marks get more protection than weak marks

Clearing a trademark Goal is to avoid adopting trademark that’s likely to confuse consumers with prior mark Similarity in marks Sight, sound, meaning is most important Similarity in goods or services If you sell live performances, CDs, and t-shirts, avoid other musicians, record labels, venues, musical equipment makers, clothiers Similarity in distribution channels Will goods be sold under same roof? Will goods be advertised in same medium?

Goal is to avoid adopting trademark that’s likely to confuse consumers with prior mark

Similarity in marks

Sight, sound, meaning is most important

Similarity in goods or services

If you sell live performances, CDs, and t-shirts, avoid other musicians, record labels, venues, musical equipment makers, clothiers

Similarity in distribution channels

Will goods be sold under same roof?

Will goods be advertised in same medium?

Clearing a trademark Research prior marks by searching: Patent and Trademark Office database http://www.uspto.gov/main/trademarks.htm  Search ASCAP http://www.ascap.com/ace/search.cfm?mode=search Google (20+ screens) iTunes, Amazon.com, Myspace, Wikipedia Domain names http://www.whois.net/

Research prior marks by searching:

Patent and Trademark Office database

http://www.uspto.gov/main/trademarks.htm

 Search

ASCAP

http://www.ascap.com/ace/search.cfm?mode=search

Google (20+ screens)

iTunes, Amazon.com, Myspace, Wikipedia

Domain names

http://www.whois.net/

Avoid the band name graveyard BLINK  BLINK 182 DINOSAUR  DINOSAUR JR SYBIL  KILL SYBIL SUEDE  THE LONDON SUEDE THE CHARLATANS  THE CHARLATANS U.K. THE OLYMPIC HOPEFULS  THE HOPEFULS THE BROKEDOWN  THE BROKEN WEST Your band name  Your new band name

BLINK  BLINK 182

DINOSAUR  DINOSAUR JR

SYBIL  KILL SYBIL

SUEDE  THE LONDON SUEDE

THE CHARLATANS  THE CHARLATANS U.K.

THE OLYMPIC HOPEFULS  THE HOPEFULS

THE BROKEDOWN  THE BROKEN WEST

Your band name  Your new band name

Trademark ownership Ownership occurs through use If group uses mark, group as a whole probably owns it Not lead singer, manager, or record label What happens when group breaks up? Deal with this issue before it occurs: Agree who gets to continue record and perform using mark (or agree that no one gets to). E.g ., “If we break up, [lead singer] gets to keep using [band’s name].” Get agreement in writing, signed by all members, and keep in safe place

Ownership occurs through use

If group uses mark, group as a whole probably owns it

Not lead singer, manager, or record label

What happens when group breaks up?

Deal with this issue before it occurs:

Agree who gets to continue record and perform using mark (or agree that no one gets to).

E.g ., “If we break up, [lead singer] gets to keep using [band’s name].”

Get agreement in writing, signed by all members, and keep in safe place

Licensing basics License is permission to a third party to use your mark e.g. , Band gives t-shirt maker right to sell shirts with band’s name and/or logo Upside to musician is $$ Downside is must follow law or license can result in abandonment of mark

License is permission to a third party to use your mark

e.g. , Band gives t-shirt maker right to sell shirts with band’s name and/or logo

Upside to musician is $$

Downside is must follow law or license can result in abandonment of mark

Common licensing terms Parties (licensor and licensee) Description of mark Restrictions on use (including restriction on goods/services) Territorial scope Exclusive/nonexclusive Sublicensable/nonsublicensable

Parties (licensor and licensee)

Description of mark

Restrictions on use (including restriction on goods/services)

Territorial scope

Exclusive/nonexclusive

Sublicensable/nonsublicensable

Common licensing terms Goodwill inures to licensor’s benefit Means benefits of TM use will flow to musician Ownership Right/duty to enforce TM rights Termination Taxes, indemnity, insurance

Goodwill inures to licensor’s benefit

Means benefits of TM use will flow to musician

Ownership

Right/duty to enforce TM rights

Termination

Taxes, indemnity, insurance

Common licensing terms Quality control Crucial term Musician must inspect and approve goods/services offered with licensed mark Failure to exercise quality control is called “naked licensing” Leads to abandonment (forfeiture) of all trademark rights

Quality control

Crucial term

Musician must inspect and approve goods/services offered with licensed mark

Failure to exercise quality control is called “naked licensing”

Leads to abandonment (forfeiture) of all trademark rights

Right of publicity RCW 62.60 (plus about 20 other states) Property right in the use of your name, voice, signature, photograph, or likeness Can sue for unauthorized use Can be licensed or assigned to third parties Right exists after you die, so heirs can exploit your right

RCW 62.60 (plus about 20 other states)

Property right in the use of your name, voice, signature, photograph, or likeness

Can sue for unauthorized use

Can be licensed or assigned to third parties

Right exists after you die, so heirs can exploit your right

Musician’s trademark strategy Think globally U.S. trademark law not only law at issue If perform or sell music in Canada, Europe, or Japan, need to worry about their laws Both in clearance and acquiring TM rights Nirvana (UK) complained about Nirvana (Seattle) when Seattle band came to England Most countries require registration

Think globally

U.S. trademark law not only law at issue

If perform or sell music in Canada, Europe, or Japan, need to worry about their laws

Both in clearance and acquiring TM rights

Nirvana (UK) complained about Nirvana (Seattle) when Seattle band came to England

Most countries require registration

Musician’s trademark strategy Consider U.S. registration Expands rights to entire United States Prevents later-comers from registering confusingly similar marks Evidence of mark’s ownership $325+ for one class of goods/services (plus attorney’s fees) Class 9 (covers sound and video recordings) Class 41 (covers live performances)

Consider U.S. registration

Expands rights to entire United States

Prevents later-comers from registering confusingly similar marks

Evidence of mark’s ownership

$325+ for one class of goods/services (plus attorney’s fees)

Class 9 (covers sound and video recordings)

Class 41 (covers live performances)

Musician’s trademark strategy Register domain name (.com) Also get Myspace, Facebook, Twitter, etc., accounts in your band’s name before someone else does Need to “police” mark Failure to enforce TM rights eventually can result in loss of those rights Police with “cease-and-desist” letter

Register domain name (.com)

Also get Myspace, Facebook, Twitter, etc., accounts in your band’s name before someone else does

Need to “police” mark

Failure to enforce TM rights eventually can result in loss of those rights

Police with “cease-and-desist” letter

Legal issues you can avoid Claims of trademark infringement e.g. , Wailers (Tacoma) sues Wailers (Jamaica) Solution : Search and clear mark before adopting it Claims of ownership of trademark Former member, manager, record label claim ownership Solution : Have written agreement defining rights Claims of right to use trademark by affiliate Solution : Have written license agreement defining rights

Claims of trademark infringement

e.g. , Wailers (Tacoma) sues Wailers (Jamaica)

Solution : Search and clear mark before adopting it

Claims of ownership of trademark

Former member, manager, record label claim ownership

Solution : Have written agreement defining rights

Claims of right to use trademark by affiliate

Solution : Have written license agreement defining rights

Legal issues you can avoid Use of trademarks in music Mattel v. MCA Records Aqua’s use of BARBIE trademark ok “The parties are advised to chill.” Parks v. LaFace Records Outkast’s use of Rosa Parks’ name as song title less clear when song not about Rosa Parks Parody ok, courts temper concern about TM rights with concern about free speech

Use of trademarks in music

Mattel v. MCA Records

Aqua’s use of BARBIE trademark ok

“The parties are advised to chill.”

Parks v. LaFace Records

Outkast’s use of Rosa Parks’ name as song title less clear when song not about Rosa Parks

Parody ok, courts temper concern about TM rights with concern about free speech

Legal issues you can avoid Loss of trademark rights Through 3+ years of nonuse Through naked license Through failure to police trademark rights Through failure to obtain rights in registration-based countries

Loss of trademark rights

Through 3+ years of nonuse

Through naked license

Through failure to police trademark rights

Through failure to obtain rights in registration-based countries

Questions? Michael Atkins Graham & Dunn [email_address] (206) 340-9614 SeattleTrademarkLawyer.com

Michael Atkins

Graham & Dunn

[email_address]

(206) 340-9614

SeattleTrademarkLawyer.com