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August 1, 2018 Vol. 73 No. 13 Back to Bulletin Main Page

Brand on the Run—Why Bands Need a Trademark Strategy

In June 2017, the United States Supreme Court issued its decision in Matal v. Tam, Case No. 15-1293, ___ U.S. ___ (June 19, 2017). The Court unanimously decided that the disparagement clause in the Lanham Act (15 U.S.C. §§ 1051, et seq.) violated the right to free speech protected by the First Amendment of the U.S. Constitution. The decision was reported in the July 1, 2017, issue of the INTA Bulletin and is available here. At the center of the case was Simon Tam’s trademark application, which sought registration of the name of Mr. Tam’s dance-rock band, THE SLANTS, as a mark with the United States Patent and Trademark Office (USPTO).

Mr. Tam’s application sparked an unusual dispute, the resolution of which may affect trademark owners in a variety of fields. However, he seems to have avoided some of the more common trademark disputes that plague bands, namely, disputes among existing and/or former band members related to the right to use and control the use of the band name as a mark. Analyzing some of the cases in which bands have litigated these disputes will enable practitioners to glean some tips for avoiding or limiting disputes in the future.

Making the Right Choice
Though probably not forefront in the minds of artists when forming a new band, musical groups should consider their ability to exert control over the band name as a mark when selecting a band name. One issue to consider is the ramifications of using a personal name or surname as a band name. Marks that are primarily merely surnames will be refused registration on the Principal Register without a showing of acquired distinctiveness. 15 U.S.C. §§ 1052(e)(4), 1052(f). Furthermore, bands may be unable to constrain other family members from using the same name for other goods or services. Depending on the nature of merchandizing activity the band has conducted and/or the fame of the band (and therefore the mark), it may be difficult to stop someone from making use of his or her own name in connection with goods and services that are arguably unrelated to those offered by the band. This could have consequences for the band’s plans.

In ELVH, Inc. v. Van Halen, Case No. 2:13-cv-07524 (C.D. Cal. Jan. 7, 2015), ELVH, the entity that owns the trademark rights for the band name VAN HALEN, sued the ex-wife of a band member for infringement when she began using her full name, Kelly Van Halen, as a mark in connection with furniture, pillows, blankets, clothing, and construction and interior design services. Ultimately, the case settled, and Ms. Van Halen was not only free to use her name on these goods, but she was able to register the mark for those goods as well (though she did need cooperation from ELVH in the form of a written consent in order to overcome the USPTO’s initial likelihood of confusion refusal for her application to register the mark). Id.; see also prosecution history for Registration No. 5048013 for KVH BY KELLY VAN HALEN. The band might have avoided this issue had they chosen a band name that was not comprised of the surname of two band members.

Define Ownership Early
Ownership and control of the band’s name is important, especially as the band’s name may function as a trademark for a variety of goods and services. Disputes that arise because of a fundamental disagreement about who owns the band name or mark may persist for years. For example, the widow of a music executive fought for over a decade against a promoter of doo-wop groups over ownership and use of the mark THE DRIFTERS in Marshak v. Treadwell, 595 F.3d 478, 481 (3d Cir. 2009). In 2009, she was able to enforce a previously issued injunction against him and his associates acting in concert with him. Id. Addressing the question of ownership early, before the band has achieved significant commercial success, may help prevent or limit disputes in the future.

Who owns the band name must be determined before filing an application to register the band name as a trademark with the USPTO. The first clause of the Lanham Act states that “[t]he owner of a trademark used in commerce may request registration of its trademark.” 15 U.S.C. § 1051(a)(1). If the applicant files the application on an intent-to-use basis, the applicant must file an amendment to allege use or a statement of use that includes a statement that the applicant is the owner of the mark before the application may proceed to registration. 15 U.S.C. §§ 1051(c), (d). In an application based on a foreign registration, the applicant must own the foreign registration (or the application for that registration) on the date the U.S. application is filed. 15 U.S.C. §§ 1126(b), (c). Service marks are subject to these requirements as well. 15 U.S.C. § 1053. This means that only the true owner of the band’s name may file the application to register it with the USPTO.

Ownership Structures
Ownership structures vary according to the circumstances of each musical group. If one individual put the band together, like Mr. Tam, it may not be surprising that he or she will claim full ownership or control of the band name as a mark. Sometimes the owner is not a band member, but instead a company in the business of forming and promoting musical groups.

For example, HEC Enterprises Limited is an English company that promotes and manages musical artists and groups. It formed a band comprised of five individuals who all entered into a services agreement with HEC. HEC named this musical group Deep Purple and sought trademark registration for the mark. See HEC Enterprises, Limited et al. v. Deep Purple, Inc. et al., 1980 U.S. Dist. LEXIS 17054; 213 U.S.P.Q. 991 (C.D. Cal. Oct. 3, 1980).

A combination of band members often jointly controls the band name as a mark, either as a partnership or as a registered entity. For example, a partnership comprised of band members of The Doors (and the estates of Jim Morrison and his widow) owns federal registrations for the mark THE DOORS for use with clothing and musical sound recordings, as established in Densmore v. Manzarek, et al., 2008 Cal. App. Unpub. LEXIS 4367 (Cal. Ct. App. May 28, 2008).

Brother Records, Inc. is a corporation formed by the original band members of The Beach Boys. It owns registrations for the mark THE BEACH BOYS for use with entertainment services, clothing, and recordings (see description of case below). Brother Records, Inc. v. Jardine, 318 F.3d 900, 901 (9th Cir. 2003).

If ownership is held by a partnership or a corporate entity, the partners or owners of the entity should reach agreement on the use, control, and exploitation of the band name as a mark. For example, will the mark be licensed for merchandizing purposes? Can/how/for how long may band members who leave the band use the mark? How does the death or departure of a band member affect ownership and/or use of the mark? To what extent, if at all, may a subset of the original group of band members use the mark? Will decision-making authority reside with one particular office holder, be made by consensus, or require unanimity? What other marks will be registered by the same owner (for example, titles of songs or albums that may acquire secondary meaning through use as a series of titles or otherwise)?

Negotiating and memorializing these points in a written agreement may be helpful in avoiding or resolving future disputes. Sometimes these agreements place severe restrictions on use of the mark. For example, early agreements among the band members that made up The Doors partnership required unanimity in management decisions. In Densmore v. Manzarek, the court affirmed the trial court’s injunction against two members of the band The Doors from holding themselves out as the musical band The Doors when they did not have permission to do so from the full partnership that owned and controlled the mark THE DOORS. Densmore v. Manzarek, et al., 2008 Cal. App. Unpub. LEXIS 4367 (Cal. Ct. App. May 28, 2008). The factual background in Densmore recounts that the partners who jointly controlled the mark THE DOORS sometimes disagreed over when and whether to license use of their intellectual property rights to third parties for commercial purposes. Thus, it is important to keep in mind how this ownership structure could make it more or less difficult for a band to maintain a certain artistic purity and avoid commercialization (or, conversely, hinder or prevent the band from capitalizing on commercial opportunities). Even agreements that are the result of thoughtful advance planning and consideration cannot always prevent disputes from arising.

Dealing with a Break Up
Disputes often concern use of the mark in some way by a departed band member, or by some subset of the group that once performed together. For example, two of the original band members of The Doors decided to perform with two other individuals after one of the original band members had died and another had decided his health did not permit him to perform. The non-performing member consented to one performance under THE DOORS mark with the new combination of individuals; however, this newly formed group continued performing, communicating to the media that they were still The Doors, and promoting themselves as “THE DOORS for the 21st Century.” After litigating the issue, the two performing band members were enjoined from using the mark in ways that violated the contractual restrictions (though they could still relay factual information about having been in The Doors band). Id.

Similarly, in Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003), one of the original Beach Boys band members (who was also a shareholder and director of Brother Records, Inc.), performed under the name “Beach Boys Family and Friends” without permission from Brother Records, Inc. The corporation sued him for infringement. Ultimately, the appellate court affirmed the district court’s finding that the band member’s use was infringing because he was not using the band name in a nominative or descriptive sense or to relay factual information about himself.

Commodores Entertainment Corporation sued Thomas McClary, a former band member who had not performed with the musical group The Commodores for decades, when he started performing with a group named “The Commodores featuring Thomas McClary.” The court enjoined Mr. McClary from using Commodores Entertainment Corporation’s marks in a manner other than those deemed a fair use. Commodores Entertainment Corporation v. McClary, et al., Case No. 6:14-cv-01335, Dkt. Nos. 56, 364 (M.D. Fla. Aug. 25, 2016). The court later confirmed that using the band name in larger font and placing it at the beginning of the name of Mr. McClary’s performing group violated the injunction and created the misimpression of endorsement by the original Commodores. Commodores Entertainment Corporation v. McClary, et al., Case No. 6:14-cv-01335, Dkt. No. 378 (M.D. Fla. Nov. 11, 2016). An appeal from this decision is pending before the U.S. Court of Appeals for the Eleventh Circuit.
Had the defendants in these examples used the marks in ways that simply relayed information about the performer’s personal history, the outcomes might have been different. Even if a partnership or corporation addresses the rights and obligations of band members clearly and in detail, that does not empower the trademark owner to prevent former band members from identifying themselves as such. Reasonable limits on the power of trademark ownership still apply.

For example, in Kassbaum v. Steppenwolf Prods., Inc., 236 F.3d 487, 488 (9th Cir. 2000), founding and former band member Nicholas Kassbaum indicated that he was a former member of the band Steppenwolf in advertisements for his solo performances and performances with other groups even though he had signed a contract agreeing not to use the band name in connection with recordings and performances. Nevertheless, the court ruled that truthful statements about his former association with the band neither breached the agreement nor violated federal trademark law. As the court in McClary later noted when clarifying the scope of its injunction against a former band member, Kassbaum relayed the factual information by placing the historical reference before the name of the band and the band name was not more prominent than the other words. Commodores Entertainment Corporation v. McClary.

Let the Musicians Focus on the Music
Musicians forming a band may not always consider the legal ramifications of their decisions, especially when coming up with the name of the band. Nevertheless, identifying the proper owner of the band’s name as a mark, carefully selecting a band name that will afford the maximum opportunity for trademark control, and memorializing the restrictions on use of the mark in writing are all best practices that may limit the range of disputes band members face down the road so they can focus on the music.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association