THOUGHTS ON PATENT- ARE YOU (OR YOUR BOSS) PERSONALLY LIABLE DO DOCUMENTS GENERATED BY AN BASHING, OBVIOUSLY FOR YOUR COMPANY’S PATENT INFRINGEMENT? INVENTOR HAVE TO BE CORROBORATED?

www.iptoday.com I. P. Today, 381 W. Northwest Hwy., Palatine, IL 60067 A Publication of Omega Communications

April, 2007 $9.00 Volume 14, No. 4

By Christopher R. Chase, Esq. of Frankfurt Kurnit Klein & Selz, P.C. use of the artist’s brand by third parties. How the Band Protects Its Brand: Part II will present an overview of the use of trademark law in the music industry, including examples of artists that were The Use of Trademarks to Protect forced to change their professional name due to trademark concerns and a discussion of issues that are particular to group artists and Promote the Musical Artist in the industry. Part II will also focus on an additional tool that helps artists protect Third parties, including record compa- BY CHRISTOPHER R. CHASE, ESQ. OF their brand – state right of publicity laws. nies and advertisers, also want to be a part This Article advocates development of a FRANKFURT KURNIT KLEIN & SELZ, P.C. of that brand. For example, because the eco- useful trademark strategy to establish, nomics of the music industry are changing, Mr. Chase is an intellectual property and protect, and extend the artist’s brand, and record companies themselves are now in the concludes that the artist’s professional entertainment attorney with Frankfurt “music” business rather than the “record” name is a valuable commodity in the music Kurnit Klein & Selz, P.C. in New York. He business, as “music” includes much more industry and must be protected with the use can be reached at [email protected]. The than recorded music, such as touring, mer- of an effective trademark strategy. author thanks Marc Handelman, Brian G. chandising, and publishing.5 Many record Murphy and Alexandra VonHockman for labels are creating multiple-platform ven- THE BRANDING OF A BAND their insightful comments. tures with artists, as the labels are looking Artists in the music industry no longer beyond declining CD sales for new sources focus only on their live performances and This article was published as a two-part of revenue.6 EMI Music has been a big recorded music – they are now extending series in the March & April 2007 issues of player in this area, and has signed multiple- their art to a brand. The “band as a brand” 7 Intellectual Property Today. platform deals with artists such as KORN, concept operates on two levels. Not only are ROBBIE WILLIAMS,8 and the estate of artists themselves developing their own DEAN MARTIN in order to forge a number brands, but third parties frequently partner hat’s in a name? If you are an indi- of relationships “with artists around the with artists to help promote corporate brands vidual artist or group in the music world to oversee non-recording aspects of – thereby extending the reach of the artist’s W industry, there are numerous assets musicians’ careers.”9 Even more signifi- name from recorded music to other fields. within your professional name, such as cant, Rhino Entertainment has actually goodwill, commercial recognition, and taken charge of the complete GRATEFUL Artists Promoting Their Own Brand valuable intellectual property rights. The DEAD brand – exclusively managing the Much like Proctor & Gamble selling reputation and recognition of an artist’s band’s intellectual property portfolio, toothpaste or General Mills selling cereal, music is built around the artist’s profes- including the name, likenesses, and trade- the artist is also selling its branded product sional name, which is what consumers use marks, as a whole.10 Third parties see the – sound recordings and live musical perfor- to identify the artists they enjoy. value in artists’ brands and want to exploit mances. The artist’s name plays an impor- Traditionally, the artists’ name or logo iden- such value and recognition.11 tant role in these branded products. For tified their musical performances and Therefore, an individual artist or group example, if you liked MADONNA’s last recorded music, but now these names, and pursuing a career in the music industry album, chances are that you will purchase her next album based on the fact that it is increasingly, an artist’s logo, are doing should take the necessary steps to protect “Madonna” who released it.12 Artists, how- much more, a fact that has not gone unno- his, her or its professional name and logo in ever, are now selling more than just their ticed by the artists themselves.1 order to safeguard the “brand.” This pro- two core products. In the past, artists in the music industry tection can be obtained through the use of As artists need to find revenue streams generally only relied upon revenue from trademark law. Prior to diving into the music industry, an artist should develop a to supplement the royalties from their their recorded music and live perfor- trademark strategy – from choosing a pro- recorded music, selling merchandise mances. The landscape of the music indus- fessional name, logo, and other branding becomes a valuable tool and can become an try has changed, however, in recent years. elements to clearing and registering his, artist’s most reliable source of income.13 As artists in the music industry become her, or its trademarks. This puts the artist in Merchandise can be just as important to an more reliant upon ancillary streams of rev- a position to prevent others from using con- artist’s career as the music that the artist 2 enue rather than record sales alone, they fusingly similar professional names and creates, as it is both promotional and mon- must seek out other opportunities for trademarks, license merchandise, and etarily valuable. By creating merchandise, income and can use their names and logos avoid trademark infringement claims. In artists can turn their logos and names into to do so.3 Not only do artists want increased the ever changing music industry, an artist profits.14 In addition, not only does mer- income, they also want a broad amount of should have continuity in its name and logo chandise help an artist’s bank account, but consumer recognition – and can do so with in order to maintain the selling power that the promotional value in merchandise is non-recording activities,4 such as merchan- attaches to such property. invaluable – such as when a fan buys an dising or third party sponsorships. Artists Part I of this two-part Article discusses artist’s t-shirt and wears it around town or are now using their names and logos to the branding of an artist in the music indus- puts a sticker of the artist’s logo on a note- stand for more than just their music. Thus, try, from the perspective of the artist devel- book. Moreover, unlike their recorded the musical artist has become a “brand.” oping its own brand as well as the extensive music, which may be dictated to some

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 35 extent by the record label for which the goods and services with those of a popular or services,51 most notably TOM WAITS52 music is being created, one of the few areas musical artist in order to connect with that and JOHN DENSMORE of THE DOORS.53 that an artist can still retain stylistic and artist’s fan base or perhaps just to associate Thus, artists can use their own brand to creative control is with merchandising.15 their goods or services with hip, cool, or promote others’ brands. If the product of Take KISS for example. While many iconic artists.34 Using the artist’s name to the artist’s brand is hip, interesting music, artists in the music industry have used their form that association is very important for then third parties will want to trade off of name and logos to sell merchandise, no such third parties.35 that brand.54 At the same time, the artist artist may be more prolific in merchandis- Sponsorships or product tie-ins can be receives valuable commercial exposure for ing than KISS.16 The group’s name and mutually beneficial for both the third party its music. Certainly, in order to protect logos, as well as the individual members’ and the artist – the third party can associ- themselves, artists should try to retain some painted faces,17 have been used for action ate itself with the artist while the artist control over where their music, name or figures, clothing, comic books, condoms, often receives much needed monetary sup- likeness will be placed and how the rela- DVDs, board games, coffee, food, coffee port for tours,36 instruments, recording tionship between the third party and the mugs, beauty products, necklaces, stickers, costs,37 or necessities such as clothing.38 artist is established.55 puzzles, pinball machines, video games, Corporate brand partners can help launch credit cards, trading cards, lighters, and an album by providing marketing support THE USE OF TRADEMARK LAW TO even a custom-made coffin with band in return for having the artist’s music fea- PROTECT AN ARTIST’S BRAND imagery!18 In addition to their flamboyant tured in a commercial campaign.39 As discussed in Part One, musical stage performances, KISS’ merchandising Moreover, the line between corporate artists are becoming brands used to pro- prowess has helped them become one of the brands and artists may become more mote their own, and others’, goods and ser- most recognized names in the music indus- blurred, as a corporate brand may align vices. So how do artists protect their brand? try, as well as a significant brand. itself with a record label to develop and Through trademark law. Current artists have also gone beyond market an artist in connection with the simple promotional merchandising to help launch of a product.40 Trademark Law in the Music Industry market their music career and have pushed The most typical way for artists to pro- A trademark or service mark is a word, their “brand” into such ancillary and dis- mote third party brands is by licensing their name, symbol, or device56 that informs the parate fields as cologne, shoes, bottle open- music.41 It is now commonplace for artists public of the source of the goods or services ers,19 skateboards, skin care products,20 to license their work for use in television being offered, and assures the public of the wallets, watches, handbags,21 bed, bath, programs, movies, and advertising cam- legitimacy and quality of the goods or ser- and other home products,22 and hair dye.23 paigns,42 and consumers have become more vices being offered. Generally referred to More often than not, pop and R&B artists, accustomed to hearing their favorite artist’s on the whole as just “trademarks,” service rather than rock artists, tend to expand out- music being used for commercial pur- marks are used to identify services offered side of the music field24 – from SEAN poses.43 Artists need to gain exposure to the public, while a trademark, on the JOHN UNFORGIVEABLE cologne25 to and/or stay relevant in a fast-moving indus- other hand, distinguishes the words, names, JESSICA SIMPSON hair extensions26 to try, and placing music in commercials, tele- symbols, or devices used on tangible phys- ANDRE 3000 as a cartoon.27 Some artists’ vision programs or movies is one significant ical goods. In the music industry, an artist’s brands have been dissected from their way to do that.44 At the same time, third professional name may function as a ser- music careers, and for many artists, their parties receive the benefit of having con- vice mark for entertainment services if it is “brand” has become equally or more sig- sumers associate a particular song with the used to identify and distinguish the service nificant than their music.28 For example, third party’s products or services.45 of providing live performances from other 57 JIMMY BUFFETT29 not only promotes his Rock legends THE ROLLING STONES artists or as a trademark for a series of music, he also promotes a laid back, MAR- and THE WHO have had their music fea- musical recordings or other merchandise 58 GARITAVILLE30 lifestyle that has taken on tured in commercials, television programs, such as t-shirts, stickers, and posters. 46 a life of its own without Buffett’s live per- and films for years. By having their music In the United States, trademark and ser- formances.31 repeatedly played on the big and small vice mark rights are created by use in com- Nevertheless, while extending the screens, both bands have been able to stay merce and the resulting development of 47 59 artist’s brand is important, both for mone- relevant to current consumers. On the “secondary meaning” – the public’s tary and promotional purposes, artists other hand, some artists have been able to recognition and association of the mark should avoid diluting their brand with over- use the commercial licensing of their music with a source of goods or services. Because 48 exposure. With the move into non-music to gain exposure. Both MOBY and THE rights are based on use, an artist need not fields, the great concern is that “the brand CHEMICAL BROTHERS are artists who register his, her or its name in order to will supersede what it was originally gained great exposure after licensing their claim rights in or protection for that name 60 intended to support – the music.”32 music for advertising campaigns and have as a mark. The artist must only be the first become go-to artists for music to promote party to continuously use the name in com- Artists Promoting Others’ Brands third party products and services.49 Of merce for the specific goods and services There are a number of ways that artists course, licensing music for commercial pur- offered under that name.61 promote third party brands – from the poses is a relatively new phenomenon that Nevertheless, although it is not required licensing of the artist’s music in commer- has only occurred in the past twenty years or to protect a mark, federal registration of a cials, television programs, or movies33 to so50 and there are still a few artists that trademark or service mark provides certain having a corporate tour sponsor or product staunchly refuse to allow use of their name statutory benefits that are not provided by tie-in. Third parties want to associate their and music to promote third parties’ products an unregistered or “common law” mark,

36 INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 such as 1) prima facie evidence as to the Choosing and Clearing the Artist’s Name 1990’s, popular British bands SUEDE and validity of the registered mark;62 2) validity Like any other trademark, when select- THE CHARLATANS were forced to change of the registration itself;63 3) the regis- ing an artist’s professional name it is impor- their names for the U.S. market due to trant’s ownership of the mark;64 4) con- tant to adopt a name that is both distinctive artists’ prior uses of those names in the structive notice of the registrant’s claim of and unique. The more distinctive the name, United States.94 SUEDE’s change to THE ownership;65 and 5) the exclusive right to the more effective the protection the name LONDON SUEDE and THE CHARLA- use the mark in commerce on the goods or has as a trademark. Moreover, an artist TANS’ change to THE CHARLATANS U.K. services specified in the registration certifi- should not only choose a distinctive name to may have harmed both bands’ chances at cate.66 Registering the professional name protect its own identity, but the artist needs widespread U.S. success, as they could not as a trademark or service mark with the to avoid infringing upon other parties’ rely on the goodwill associated with their United States Patent and Trademark Office names.84 Because the likelihood of confu- famous name back home. Therefore, it is (“USPTO”) is truly the best way to protect sion between two marks is the hallmark for imperative that an artist conduct a global it because registration prevents third par- trademark violations, a new artist should not music industry search in order to avoid any ties and departing group members from choose a professional name that is identical potential trademark conflicts. to or confusingly similar to an existing name It is simply not enough to take a trip to capitalizing on the name.67 Essentially, in the music industry. Litigation over the the local record store to clear an artist’s although an artist may have a common law proper ownership of a name requires both name. An artist must check numerous trademark or service mark in its name time and money, and there is a risk that the sources to survey the global music industry, because of its prior use of that name, it is artist could lose the right to use the name. such as the databases of the performing always prudent to register the mark with the Because the goodwill in its name is all a rights societies (e.g., ASCAP, BMI, SESAC) USPTO because such registration pre- new artist has when starting its foray into and musicians’ unions (such as the sumes the validity of the mark and gives the the music industry, starting over is an unat- American Federation of Musicians), music artist a stronger right to prevent confusingly tractive option. Therefore, it is extremely magazines including Rolling Stone, Spin, similar uses of such mark by others in the important for an artist to clear his, her, or its and Billboard,95 and review popular music 68 United States. professional name prior to significant use in websites such as MySpace, PureVolume, In order to claim trademark or service the industry. Pitchfork, All Music Guide, and The Band mark rights in its professional name, the There have been numerous instances Register. most significant thing an artist can do is to where an up and coming artist had to Finally, having the clear right and title to deliberately and continuously use the mark change its name due to trademark prob- an artist’s professional name is necessary if in public over a geographically extensive lems. For example, DINOSAUR JR. (for- the artist seeks to sign a recording contract area to identify itself.69 This use must be merly DINOSAUR),85 THE HOPEFULS or license its name for merchandising pur- continuous, as it is possible that if an artist (formerly THE OLYMPIC HOPEFULS),86 poses. Because record labels will need to held trademark rights to its name and GREEN JELLY (formerly GREEN use the name in connection with the mar- ceased touring, making and releasing JELLÖ),87 AL FATZ (formerly FAT AL),88 keting and sale of pre-recorded audio and records, and receiving royalties, it would be DEATH FROM ABOVE 1979 (formerly other merchandise bearing that name, they deemed to have stopped use of its name DEATH FROM ABOVE),89 and THE will generally not sign an artist unless that because the public would no longer identify VERVE (formerly VERVE)90 all had to artist owns the rights to its name, free and the artist with activities in the music indus- change their professional names due to var- clear of any third party rights96 and will try.70 Therefore, an artist should actively ious trademark issues, the latter two involv- require that the artist in the record contract perform and offer, or at least collect royal- ing similar record label names rather than represent and warrant to this effect.97 ties for, records, CDs or other merchandise other artist names. Moreover, commercial Protection of Artists’ Names under its professional name to maintain success does not guarantee litigation suc- Recognizing the value of an artist’s trademark or service mark status.71 cess: relative unknowns have forced suc- name as a mark, courts have frequently Finally, the following are well-known cessful artists to change their professional 91 applied trademark law to protect the pro- examples of the various types of trademarks names. A recent example involved CBS’ rock band reality show Rock Star: fessional names of artists.98 As noted in the and service marks available in the music Supernova, wherein the band, comprising Part One of this article, rights to an artist’s industry: 1) group names such as LED famous musicians and the show’s winner, professional name and the right to perform ZEPPELIN,72 PEARL JAM,73 and SPICE would be called SUPERNOVA. A lawsuit under that professional name are signifi- GIRLS;74 2) individual performer names filed by a lesser known band called cant rights in the music and recording 75 76 such as SNOOP DOGG and PRINCE; SUPERNOVA forced the reality band to industry.99 Such rights are monetarily valu- 3) individual artists who perform under change its name (not too creatively to able100 to both the artist and record compa- their real names such as MICHAEL ROCK STAR SUPERNOVA).92 Even the nies alike, and preventative legal measures JACKSON77 and DAVE MATTHEWS;78 4) U.S. Postal Service was not pleased to see should be taken in order to ensure protec- music industry logos such as THE that there was an artist called “The Postal tion of the name. ROLLING STONES “LIPS” logo,79 the Service,” but an amicable resolution Regardless of whether it is registered or ARISTA “A” logo,80 and even the faces of allowed the artist to retain its name.93 not, the artist’s professional name will only the members of KISS;81 and 5) music Because the music industry is global, have trademark protection in the field for industry companies’ names such as the artists must also choose a name that will not which the mark is used, and in the logical GHOSTLY INTERNATIONAL82 record infringe on foreign artists’ marks if the artist zone of expansion of that field.101 For label and the VIRGIN83 record label. desires to reach foreign markets. In the mid- artists, this field will primarily include

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 37 musical performances and pre-recorded ager is legally appropriate where the public Also, when confronted with the issue of audio and video. Ancillary goods, such as associates with the concept group charac- departing group members who use the posters and t-shirts, may be within the log- teristics or a style that is or are controlled name of their former group, courts have ical zone of expansion, but the artist’s pro- by the producer, promoter, or manager.110 determined that members of a group do not fessional name often needs to achieve Ownership of the concept group’s name retain rights to use the group’s name when secondary meaning in order to have trade- is extremely important, because the owner such members leave that group.118 mark protection for such goods.102 essentially owns the shell of the group itself However, the former members may properly Once the artist’s professional name is and just rotates performers in and out with- refer to themselves as a “former member of properly used as a trademark or service out necessarily changing the group’s overall [group]” or “original member of [group]” mark, the artist must enforce its rights to identity. Successful concept groups not only when advertising his or her new entertain- that mark. No other party in the industry generate a substantial amount of money ment services or sound recordings.119 should use or exploit the professional name through their live performances and sound Because of the difficult issues that face without permission, if at all.103 Not protect- recordings, but also make considerable dissolved groups or the departing members ing the name could be perceived as demon- sums of money with merchandising and of groups, it is important to have an agree- strating the inherent weakness of the ancillary goods. For example, NEW KIDS ment among the members of the artist artist’s name as a mark. Therefore, the ON THE BLOCK sold nearly $75 million regarding the use of the group’s name.120 artist must prevent other parties in the in concert tickets and over $1 billion in Often a group will be a partnership or music industry, including other artists or merchandise during the group’s heyday in incorporated entity; therefore, all group bootleg merchandisers,104 from using or 1990.111 Also, Epic Records recently partnership or internal corporate agree- exploiting his, her, or its valuable mark. acquired an equity stake to re-launch the ments should specifically outline the rights Artists should also register their profes- Latino concept group MENUDO, in order to to the group name and what will happen to sional name as an Internet domain name.105 resurrect the brand by offering a new album that name upon dissolution of the group or While this is not a substitute for trademark and a reality show in 2007. 112 The current the departure of a member. Another way to registration, operating a website with that concept group money leader is AMERICAN prevent the problem of departing members domain name would go a long way to show IDOL, which in 2004 alone generated more using the group’s name is to have the group, use of the name as a mark in commerce and than $900 million in sales of TV advertise- as a partnership or incorporated entity, fed- would put others on notice of the artist’s ments, sound recordings, merchandise, and erally register the name as a mark. If the use of the name in the music industry. concert tickets,113 and was conservatively group as a whole owns the registered mark, then the group can prevent any departing Trademark Issues for Group Artists valued at the start of 2007 as a $2.5 billion franchise.114 Therefore, the ownership of member from using such name, while con- CONCEPT GROUPS such concept group names becomes a sig- tinuing to protect the name of the group 121 Because the owner of trademark rights is nificant point because such owner will con- against other third party uses. the person or entity that controls the qual- trol the nature and quality of the goods and ity of the goods or services offered under services being offered under that name, RIGHTS OF PUBLICITY UNDER STATE LAW the mark,106 the owner of trademark rights even if the individuals in the group have In addition to the use of trademark law in an artist’s name is not always the artist. changed or the group has been dormant for to protect the artist’s name, state right of This is especially true with “concept a number of years. publicity laws can offer additional protec- groups” – those groups that are the cre- tion.122 Although trademark law tends to ations of a producer, promoter, or manager DISSOLUTION AND/OR overlap with state right of publicity laws, and whose members are essentially inter- MEMBERSHIP CHANGES these state laws generally protect a person’s changeable parts.107 In group situations, the dissolution name, picture, voice, or likeness against Generally speaking, a concept group is and/or change of membership of the artist commercial appropriation regardless of created by a producer, promoter, or manager presents difficult problems of ownership of whether one of these attributes serves a who (essentially) hires performers to play the trademark rights in the artist’s profes- source identifying function123 or not.124 the roles in the group and directs the sional name. There have been numerous Such rights have been extended to an group’s performances.108 Examples of such lawsuits regarding ownership of a group artist’s professional name125 – be it the concept groups include NEW KIDS ON name either following the dissolution of the artist’s actual name or stage name.126 For THE BLOCK, MENUDO, THE MONKEES, group or when former members attempt to example, two popular artists have recently SPICE GIRLS, BACKSTREET BOYS, and use the name, while the original group con- sued third parties for unauthorized use of N*SYNC. While not necessarily a group, tinues to use it.115 the artists’ names, images, and likenesses. AMERICAN IDOL is one of the most recent A group that disbands does not immedi- The band WEEZER sued Miller Brewing and most popular concept phenomenons. ately abandon exclusive rights in its Co. and its advertising agency under both Where the producer, promoter, or man- name.116 Thus, a subsequent artist should right of publicity and trademark laws for ager of the concept group controls the qual- not use such name, because the subsequent using the name WEEZER in advertise- ity of goods and services associated with artist cannot assume that the name is no ments promoting Miller’s beer, arguing that that group, such person is the valid owner longer being used by the original artist.117 its name was being commercially appropri- of the trademark rights in the group’s name, It is often the case that a group continues to ated without authorization.127 Also, the even if this person is not in the group sell sound recordings and collect royalties singer JACKSON BROWNE sued itself.109 Courts have found that ownership even if it is not performing, and therefore Bloomingdale’s and clothing manufacturer of a concept group’s professional name in continues to use the name as a mark in Natalie and Friends under both right of the name of the producer, promoter, or man- commerce. publicity and trademark laws for using

38 INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 Browne’s name and image on t-shirts sold t-shirts and hats. Once registered, the artist ered a “naked license” and may result in at the department store.128 will have to maintain the trademark regis- the an abandonment or tarnishment of the Because artists often license their tration in order to keep the registration licensor’s trademark.139 names and likenesses for commercial “alive” in the USPTO.138 Nevertheless, the Additionally, licensing the “brand” may exploitation,129 the artist has a strong inter- most important thing that an artist can do to include the artist’s rights of publicity. est in preventing unauthorized use of their maintain trademark rights in its name is to Under state law, a written release is gener- publicity rights and can do so through both use the name consistently and continuously ally necessary whenever a person’s rights of 130 right of publicity and trademark laws. in commerce over a geographically exten- publicity, e.g., name, picture, voice, or like- sive area for the goods and services that the ness, are used in advertising or for the pur- DEVELOPING AN EFFECTIVE artist provides. poses of trade.140 Like licensing a TRADEMARK STRATEGY Once the artist has started accruing trademark, when an artist is licensing his, In order to successfully protect its pro- trademark rights in its name, the artist will her, or its rights of publicity there are a few fessional name, the artist should develop an have to begin policing the name for the use effective trademark strategy – from choos- of confusingly similar names in the indus- key points on which the artist should focus: ing a professional name to enforcing the try. This will include issuing cease and 1) the grant of the rights, including the spe- rights included in such name – as well as desist letters to any other party thought to cific attributes of the artist being licensed; protecting his, her, or its rights of publicity. be using a confusingly similar or potentially 2) the type of media where the artist’s As noted above, when choosing a profes- diluting name. If necessary, the artist may rights will be used, such as television, sional name, an artist should keep in mind need to enforce its rights in the name by radio, print, and the internet; 3) the manner that the more distinctive the name, the more bringing opposition or cancellation pro- of use of the artist’s rights; 4) the geo- effective the protection the name has as a ceedings in the USPTO, or lawsuits in fed- graphic territory where the rights will be trademark.131 Prior to choosing a name, the eral or state courts. used; 5) the breadth of the artist’s termina- artist should not only perform internet All of these steps are necessary precur- tion rights; and 6) the artist’s creative con- searches and review music industry web- sors to licensing an artist’s “brand,” as trol over the use of the rights, including sites and publications to determine whether third parties will not want to associate approval rights for any use. Because the another artist or music industry player is themselves with a weak or diluted brand or artist wants to ensure that his, her, or its 132 using a confusingly similar name, but the one that may lead to lawsuits based on a image will not be tarnished in any way, the trademark claim. When a third party is artist should also conduct a preliminary grant of rights clause may be the most sig- search of the USPTO online database.133 interested in licensing the artists’ trade- nificant provision, as it should be very spe- Such a search would give the artist an idea mark as part of the brand, the artist should cific as to each and every attribute being of whether the name appears clear from a take care to create a licensing agreement granted. trademark perspective.134 It may also be that is both monetarily valuable and suffi- useful to order a comprehensive search from cient to protect the artist’s rights. Although While this section is not an exhaustive a trademark search vendor in order to gain there is no one “correct” way to structure a list of steps to take in order to protect an a clearer picture of the possibility of using trademark licensing agreement on behalf of artist’s trademark rights, it should be the name as a mark, as these searches gen- the artist, the following are a few helpful viewed as a helpful summary when estab- erally cover both federal and state trade- tips to consider when drafting the agree- lishing a trademark and right of publicity marks, common law trademarks, corporate ment. The licensor of the trademark, which strategy. names and trade names.135 Nevertheless, could include the artist, should focus on: 1) since trademarks in the United States exist ensuring quality control over the use of the CONCLUSION by virtue of use rather than registration, no trademark; 2) specifically defining the The rights in an artist’s professional search is completely effective. rights being licensed; 3) retaining approval name are extremely important. Artists not After the artist has evaluated the risks rights for how and on which products the only promote corporate branding but they associated with the results of the trademark trademark are used; 4) assessing the risk of searches and has decided to go forward inadvertent creation of a franchising agree- themselves have become brands. The using a specific professional name, apply- ment; 5) licensing the trademark for a short artist’s professional name therefore is a ing for federal registration of the name as a term, in a limited territory, and with a broad valuable commodity that helps consumers trademark and service mark should be the termination right; 6) including a provision identify the artist’s goods and services. It is next step.136 Trademark applications with allowing the licensor to terminate the imperative that an artist develop a strong the USPTO are filed within specific classes agreement if the licensee has not reached trademark strategy, which includes clearing of goods or services.137 The artist should certain sales goals; 7) including a his, her, or its professional name before apply for a trademark for its name in Class “licensee estoppel” provision that prevents offering goods or services under that name, 9, which covers sound recordings and the licensee from challenging or interfering and protecting the name once it is used in audio-visual recordings, and Class 41, with the licensor’s rights to use and/or reg- commerce. While it may seem like an ister the trademark; and 8) requiring the which covers live performances, production expensive proposition during the start-up services, and services offered through the licensee to carry product liability insur- phase of an artist’s career, obtaining trade- artist’s website. Other relevant classes of ance. The quality control provision may be goods for merchandising purposes include the most important provision for a licensor, mark protection is well worth the effort if Class 16, which covers printed material as a trademark license that does not contain the artist wants a long lasting career in the such as books, magazine, posters, and such a provision, or under which no quality industry. By doing so, the artist will protect stickers, and Class 25, which includes control has been exercised, may be consid- his, her or its identity and brand. IPT

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 39 ENDNOTES chandising, ringtones, a cartoon series, and other his band, stated “Merch sales are what kept us branded revenue streams). going. Even now [after the band had one platinum 1. Alternative rocker Evan Dando recently put his 6. Leeds, supra note 5 (“Lately, the major labels record and two gold records], we’re still not mak- group, THE LEMONHEADS, back together in have in effect tried to move into the talent man- ing our living from playing the shows. Merch is order to preserve the legacy of the group’s name. agement business by demanding that new artists where we make our profit.” Allen, supra note 3. Tom Lynch, Evan Dando Lives, NEW CITY seeking record contracts give their label a cut of During that same year, BRITNEY SPEARS’ U.S. CHICAGO, December 5, 2006, available at concert earnings or T-shirt and merchandise rev- tour would have made $125,000 per show in mer- http://www.newcitychicago.com/chicago/5979.ht enue – areas that had once been outside the chandise sales alone, $50,000 to $60,000 of ml (regarding the reason he got the band back labels’ bailiwick.”); Light, supra note 5; see also which would have been hers, had the tour not together, Dando stated “[B]ecause I did put a lot Conniff, supra note 2 (According to the CEO of a been cancelled. Id.; Conniff, supra note 2 (at the of work into the band, the trademark, that name. I leading merchandising and licensing company: shows that actually occurred during that tour, mer- think we could have done a little better. Leave a “The world of the record royalties and significant chandise sales averaged $150,000-170,000 per better legacy.”). earnings from records is down dramatically.”). night, reaching a high of $180,000 at the Los 2. See Tamara Conniff, Spears tour merchandise 7. KORN agreed to a multiple rights venture with Angeles show; sales for Spears’ tour merchandise sales lead female acts, THE HOLLYWOOD EMI Music, making EMI a partner in the band’s reached a total of $30 million for her tours REPORTER, April 26, 2004 (According to the CEO overall business, which includes KORN’s pub- between June 1999 and April 2004.). See also of a leading merchandising and licensing com- lishing, touring, merchandising and multimedia New Kids, 971 F.2d at 304 (discussing the various pany, “The world of the record royalties and sig- activities. Light, supra note 5. goods on which the NEW KIDS name and logo nificant earnings from records is down 8. ROBBIE WILLIAMS signed a multiple rights appeared). dramatically.”). contract with EMI Music, where the label “will 15. See Allen, supra note 3 (Popular singer-songwriter 3. See Joseph Allen, Concert merchandise – not take a share of the profits from his commercial JOHN MAYER said of merchandise: “Besides the ticket sales – is where bands make the most activities outside of record sales” – i.e., his non- money, it’s about having one more way to make money, ROLLING STONE, July 14, 2004 (Popular recording activities, which include touring, pub- your mark stylistically and thematically. You’re singer-songwriter JOHN MAYER said of mer- lishing, and merchandising. EMI Group Press not making that much money off records any- chandise sales: “You’re not making that much Release, supra note 5; Paul Gallagher, Record more…merch is one of the last bastions of indi- money off records anymore…merch is one of the Deal Will Keep EMI Rocking, THE SCOTSMAN, viduality, commerce, and style that an artist has last bastions of individuality, commerce, and style October 3, 2002. left.”); Salter, supra note 3 (noting that JOHN that an artist has left.”); Conniff, supra note 2 9. EMI Group Press Release, EMI Enters Into LEGEND protects his brand by retaining control (“Merchandising also is becoming many music Worldwide Partnership with Dean Martin Trust, over the relationship between his fans and his stars’ answer to lackluster record sales.”); see October 30, 2006 at www.emigroup.com/Press/ music; he has created an online operation to sell generally Chuck Salter, Way Behind the Music, 2006/press67.htm (EMI Music will now act as the merchandise, promote his tour and recordings, FAST COMPANY, February 2007 (discussing how exclusive licensing agent for DEAN MARTIN’s and communicate with his fan clubs). artists today can use the Internet to not only dis- name, image, likeness, as well as the marketer for 16. See Sandra O’Loughlin, Rock ‘n Roll Band KISS tribute music, but to sell merchandise and estab- Martin’s recording catalogues). To Launch Fragrance Brand, BRANDWEEK, lishing fan clubs). 10. In July 2006, the GRATEFUL DEAD signed an February 13, 2006 (“KISS has licensed its name 4. Close to fifteen years ago, Federal Appellate Judge exclusive licensing agreement with Rhino to more than 2,000 product categories, from lunch Alex Kozinski noted the significance of artists’ Entertainment to manage all of the band’s intel- boxes and comic books to credit cards and con- non-recording careers. “No longer are entertain- lectual property – the name, likenesses, logos, doms to become nearly a one-billion-dollar ers limited to their craft in marketing themselves web site, and merchandise. Unlike the EMI “part- brand.”). to the public. This is the age of the multi-media nerships,” Rhino is managing the coordinated 17. See Part II, Rights of Publicity under state law, publicity blitzkrieg: Trading on their popularity, intellectual property portfolio rather than dealing infra regarding protection for an individual’s like- many entertainers hawk posters, T-shirts, badges, with a piece by piece approach to the individual ness through state right of publicity laws. coffee mugs and the like – handsomely supple- intellectual property rights – Rhino is actually 18. See O’Loughlin, supra note 16 (noting the various menting their income while boosting their public managing the whole brand. Light, supra note 5. goods and services offered under the KISS name, images.” The New Kids on the Block v. News 11. See Light, supra note 5 (discussing the KORN and including a beauty and fragrance collection, lunch America Publishing, Inc., 971 F.2d 302, 304 (9th GRATEFUL DEAD deals); see also Greg Levine, boxes, comic books, credit cards, and condoms); Cir. 1992). Just imagine what Judge Kozinski SFX Founder to Manage Elvis Presley Estate, Lauren David Peden, KISS Rocks on With New would think of the “multi-media publicity FORBES.COM, December 16, 2004; Press Release, Fragrance and Coffeehouse, FASHION WIRE blitzkrieg” of 2007. Robert F.X. Sillerman and Elvis Presley DAILY, June 8, 2006 (discussing the KISS fran- 5. See Jeff Leeds, Squeezing Money from the Music, Enterprises Announce Partnership, at grances and KISS coffeehouse); Press Release, N.Y. TIMES, December 11, 2006 (“[T]he big www.elvis.com.au/presley/news/printer_lisa_mari Official ‘KISS® Kaskets’ let KISS® Fans Rock record companies, whose fortunes are still over- e_presley_sells_elvis_rights.shtml (Robert F.X. and Roll for Eternity, June 12, 2001, available at whelmingly tied to CD sales, are taking a far more Sillerman and his company CKX, Inc. purchased www.signa turesnetwork.com/press.php?diary_id expansive view of how to carve out pieces of the an 85% share of all trademark rights to ELVIS’ =13&mode=view, (discussing the casket offered music economy … including recording sales, name and likeness, as well as other intellectual by KISS’ merchandising company Signatures music publishing, concert ticket and merchandise property, from Lisa Marie Presley for $53 million Network, a leading merchandise licensor). Along sales and other sources of revenue.”); Alan Light, in cash and other payments including preferred the way, the band and its members have registered A Resurrection, of Sorts, for the Grateful Dead, stock and debt repayments). with the United States Patent & Trademark Office N.Y. TIMES, July 10, 2006 (According to a vice 12. Unlike toothpaste and cereal however, most artists their names, logos, and even the individual mem- president at Rhino, “The music industry has to evolve over time – in both musical style and bers’ painted faces as trademarks for most of these change. We can’t just put CD’s out to retail. We appearance. An artist’s “brand” may be precisely goods and services, all in addition to their musical need to be more involved with protecting the that – the artist’s adaptation and reinvention. performances. See USPTO Trademark Reg. No. legacy of the artists.”); EMI Group Press Release, 13. Allen, supra note 3 (“[M]any touring rock bands 1055765 (musical performances); USPTO Robbie Williams and EMI Sign Groundbreaking find that their most reliable sources of income are Trademark Reg. No. 1153088 (registered logo for, Deal, October 2, 2002, at www.emi from selling T-shirts, posters, stickers and other inter alia, necklaces, comic books, greeting cards, group.com/Press/2002/press7.htm (regarding the merchandise while they’re on the road.”). A posters, stickers, pins, and puzzles); USPTO Robbie Williams deal, the press release stated: founder of a merchandise manufacturing and dis- Trademark Reg. No. 3167370 (action figures and “The deal continues a trend towards an integrated tribution company stated that “merchandising, for dolls); USPTO Trademark Reg. No. 3008602 relationship in the entertainment business that a lot of our artists, is an important part of their (shirts, T-shirts, jackets, and caps); USPTO will provide a multi-platform approach to the income, sometimes more so than record sales.” Id. Trademark Reg. No. 2106028 (comic books); and respective elements of recording, live work, film See also Salter, supra note 3 (discussing the USPTO Trademark Reg. No. 2596687 (shirts, T- and television.”); Ayala Ben-Yahuda, Epic to Sign importance of merchandise sales for an artist’s shirts, jackets, and caps). Menudo; MTV Plans Reality Show, BILLBOARD, career). 19. See USPTO Trademark Reg. No. 2912756 October 13, 2006 (Epic Records purchased an 14. In 2004, singer-songwriter Chris Carrabba of (KORN, which is owned by the rock group KORN equity stake in Menudo Entertainment, which DASHBOARD CONFESSIONAL, while dis- for various goods and services unrelated to enter- gives Epic a cut of the re-launched Latin boy band cussing the importance of merchandise sales to tainment services). MENUDO’s by-products such as touring, mer-

40 INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 20. See USPTO Trademark Reg. No. 2878296 not let Buffett’s laid-back persona fool you – he 36. See Mike Beirne, Rolling Rock Rolls with Rock ‘n (GLOW BY J. LO, which is JENNIFER LOPEZ’s aggressively enforces his trademark rights Roll, BRANDWEEK, January 23, 2006 (discussing fragrance and skin care line). throughout the country. Id. (discussing a long-run- Rolling Rock’s sponsorship and donations for the 21. See USPTO Trademark Reg. No. 3142477 (J. LO. ning legal battle with an individual selling “Garage Rock” club shows, Little Steven Van JENNIFER LOPEZ). Buffett-labeled items over the Internet); Singer Zandt stated that “[t]he cost for a new rock band 22. See USPTO Trademark Serial No. 78690920 Buffett Sues Alleged Trademark Infringer, to get around the country has become exorbitant, (DIDDY, which is a pending trademark applica- REUTERS, November 13, 2006. making it nearly impossible for great new music to tion owned by Sean Combs for numerous goods 32. Nick Southall, And Now a Tune From Our reach fans.”); Suzuki Revs Up Kutless Tour To and services other than entertainment services). Sponsor, GUARDIAN UNLIMITED, September 29, Tout SX4 Debut, XL7 SUV, BRANDWEEK, August 23. See USPTO Trademark Serial No. 78748561 2006; see also supra note 28 discussing SEAN “P. 7, 2006 (discussing Suzuki’s sponsorship of the (JESSICA SIMPSON, which is a pending trade- DIDDY/PUFF DADDY” COMBS’ lack of recent artist KUTLESS’ U.S. tour, in return for using the mark application owned by Jessica Simpson for hits but success in his non-music related busi- artist to promote the launch of two new Suzuki numerous goods and services unrelated to enter- nesses. vehicles); RadioShack Jumps Aboard Rolling tainment services). 33. Although music in television programs and movies Stones Bandwagon, BRANDWEEK, August 7, 2006 24. When Marketers Become Record Labels, may not necessarily be promoting a commercial (noting that RadioShack will help sponsor the U.S. MADISON + VINE.COM, November 9, 2006, at brand per se, music in such artistic works can leg of the ROLLING STONES’ “Bigger Bang” tour www.adage.com/madisonandvine/new.pl?newsId form a branding association. For example, THE and in return will have the band appear in =113039 (“Partnership deals are definitely de WHO’s “Who Are You?,” which is used as the RadioShack ads); www.jbltour.com (featuring rigueur for artists in genres like hip hop, country, theme for the opening credits of the hit CBS show audio product maker JBL’s sponsorship of THE and pop…Particularly in hip hop, racking up CSI: Crime Scene Investigation, is arguably an ROOTS, HOLD STEADY, and THE SUBWAYS on endorsement deals is a rite of passage.”). On the integral part of the show, as the song’s chorus JBL’s “Destination Anywhere” tour; JBL’s spon- other hand, rock bands tend to partner up with relates to the main action of the show – a group of sorship of these groups also included billboard corporate brands, in a less visible way, such as investigators trying to find out who a victim is. ads throughout the subway system of New York through tour sponsorship. Id. But see Jenny 34. Nina M. Lentini, Who Is That Wearing That Milk City, which promoted both the groups and JBL’s Peters, Tommy Lee Joins the Clothing Mustache?, N.Y. TIMES, January 4, 2007 (dis- new speaker systems); Fine, supra note 34 (the ‘Revolution’, FASHION WIRE DAILY, November cussing LG Mobile’s use of the teenage pop star malt liquor brand Sparks underwrote a tour for 20, 2006 (discussing rocker TOMMY LEE’s foray RIHANNA, “whose songs appeal to the young three bands on the influential Vice record label, into clothing with the launch of “TL for PL” line audience [LG Mobile] is aiming for.”); Jon Fine, and in return, the band members had to promote in association with the People’s Liberation label). Getting To The Hipsters, BUSINESSWEEK ONLINE, the beverage by photographing each other drink- 25. See USPTO Trademark Serial No. 78656133. July 5, 2005 (discussing the sponsorship by Levi’s ing it). 26. See USPTO Trademark Serial No. 78748561. of a music tent at the influential South By 37. See Erik Parker, Hip Hop Goes Commercial, 27. ANDRE 3000 has licensed his name, image, and Southwest music conference where Levi’s can VILLAGE VOICE, September 11-17, 2002, avail- likeness for an animated series entitled “Class of specifically target the important twentysomthing able at http://www.villagevoice.com/news/0237, 3000” which airs on the Cartoon Network. See segment that the company desires); Valerie Block, parker,38205,1.html (“[R]ecord labels are tuning www.cartoonnetwork.com/tv_shows/classof3000/i Death of the Advertising Jingle, ADAGE.COM, in to see how name-dropping [of sponsors] can ndex.html. February 3, 2003 (discussing how licensed music defray the costs of music videos and recording 28. For example, SEAN “P. DIDDY/PUFF DADDY” is harming the advertising jingle business, as costs”). COMBS’ individual album sales and those of his more advertisers are licensing songs rather than 38. Fine, supra note 34 (discussing Levi’s’ sponsor- record label, Bad Boy Entertainment, have been composing jingles, which “aren’t considered cool ship of a music tent wherein the bands performing in decline while his fashion line and other outside and hip at the moment.”); Patricia Winters Lauro, would receive outfits from Levi’s; and quoting one business ventures are on the rise. See Tamara Forget Jingles, Viewers Prefer Familiar Tunes, N.Y. underground rocker who has started to accept Conniff and Bill Werde, Diddy: The Saga Times, November 8, 1999 (noting that advertising sponsorships: “[T]he only qualm I have is I usu- Continues, BILLBOARD, October 4, 2006, avail- agencies will often use new and innovative music ally don’t like the stuff I get.”). able at http://www.billboard.com/bbcom/feature/ in order to reach a particular audience, usually 39. See Louise Story, Seeing Stars, N.Y. TIMES, article_display.jsp?vnu_content_id=100322046 young people). October 12, 2006 (discussing BOB DYLAN’s 6 (noting that Combs’ SEAN JOHN clothing line 35. Of course, these third parties should seek permis- appearance in a commercial for Apple Computer’s totals $400 million in sales a year and his SEAN sion from the artist in order to associate its goods iPod and iTunes, which helped gain exposure for JOHN Fragrances is part of the Estee Lauder or services with such artist. In 2005, Nike infa- his most recent album Modern Times); Conniff and Company; but also discussing the lack of musical mously used the name and cover art from the first Werde, supra note 28 (discussing SEAN “P. hits in recent years); Roger Friedman, Diddy E.P. of the fiercely independent artist MINOR DIDDY/PUFF DADDY” COMBS’ use of his Smells More Money, FOX NEWS.COM, February 2, THREAT without authorization from either the numerous brands, such as his SEAN JOHN cloth- 2006, available at http://www.foxnews.com/story/ artist or its record label in order to promote Nike’s ing line and SEAN JOHN fragrances, to promote 0,2933,183535,00.html (discussing the launch of “Major Threat” skateboarding tour. See Chris his most recent album, Press Play); Stuart Elliott, Combs’ “Unforgiveable” fragrance); Phyllis Harris, Minor Threat’s Ian MacKaye Outraged By Woman of a Scent, N.Y. TIMES, December 18, Furman, Puffy’s Tuning Up a Deal, N.Y. DAILY Nike’s Major Threat Skate Tour, MTV NEWS, 2006 (discussing the new fragrance by Elizabeth NEWS, February 8, 2005, available at available at www.vh1.com/news/articles/15047 Arden for singer and actress HILARY DUFF, http://www.nydailynews.com/business/story/2789 42/06272005/minor_threat.jhtml; Jim Edwards, “With Love…Hilary Duff,” and noting that the 82p-239050c.html (noting the lack of recent hits Out of the Box: Punk’s Not Dead – Just Old, multimillion dollar advertising campaign pro- from Combs’ label, the article states that “Sources BRANDWEEK, October 23, 2006. Nike subse- motes the fragrance as well as Duff’s next single said Combs has been distracted by his other busi- quently apologized for the tour poster, made every “With Love.”); MADISON + VINE, Hollywood ness ventures and has not paid enough attention to effort to remove and dispose of all the posters, and Records’ Very Own Marriage Counselor, January the label.”). made clear that the company had no relation with 24, 2007, available at http://adage.com/madiso- 29. USPTO Trademark Reg. No. 2201538 (for musical the band or its label, both of whom had not nandvine/news.pl?newsld=114498 (according to performances, sound recordings, guitar picks, and endorsed Nike’s products. Letter from Nike the VP of strategic marketing at Hollywood beverage ware, among other things). Skateboarding to Minor Threat, Dischord Records, Records: “In fact, having corporate brand part- 30. JIMMY BUFFETT has over 100 trademark regis- and fans of both, June 27, 2005, available at ners is a significant part of every marketing cam- tration and pending applications using the mark www.nike.com/nikeskateboarding/v2/letter/. See paign we launch.”). MARGARITAVILLE. See e.g. USPTO Trademark also Jennifer Quinn, Ska band irritated by Coke 40. See When Marketers Become Record Labels Reg. No. 1642132 (for clothing and night club commercial, ASSOCIATED PRESS, January 3, supra note 24. services); USPTO Trademark Reg. No. 1831949 2007, available at http://news.yahoo.com/s/ap/ 41. Licensing music has become such a priority for (for musical sound and video recordings). 20070103/ap_en_mu/britain_band_vs_coca_cola record labels that they now have brand partner- 31. See Singer Buffett Wins Trademark Settlement, &printer=1 (discussing the unauthorized use of a ship and commercial licensing departments. See REUTERS, November 28, 2006 (Buffett “went on song and its accompanying video from an Story, supra note 39 (interviewing a Vice to parlay his laid-back Gulf Coast image into a unsigned London ska band 7 SECONDS OF President of brand partnerships and commercial business empire that included a Margaritaville LOVE by Coca-Cola Co. in a commercial for its licensing at Atlantic Records); FYI, MADISON + clothing line and nightclub chain.”). However, do Coca-Cola Light product in Argentina). VINE.COM, October 18, 2006, at http://

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 41 adage.com/madisonandvine/news.pl?newsId=11 lar_culture (noting the use of THE WHO’s music from their artistic integrity. See Josh Greenberg, 2544 (“WPP’s Group M and Universal Music as the theme songs to each show in the hit CSI Waits Wails Over Car Ad, E ONLINE, September Group have formed BrandAmp to develop music television franchise, and the use of the group’s 15, 2005, available at http://international.eon- and brand partnerships for clients. The joint ven- music in commercials for Hummer SUVs, line.com/news/items/0,1799,17374,00.html ture will also seek to work with other artists and Sylvania light bulbs, and Saab automobiles). (“Commercials are an unnatural use of my work. record companies to synchronize third-party deal 47. See Story supra note 34 (noting that celebrities, It’s like having a cow’s udder sewn to the side of and music pacts.”). The push to have artist’s including musicians, use appearances in commer- my face. Painful and humiliating.”). He famously music in commercial campaigns has become so cials to keep getting exposure for themselves). sued Frito Lay and their advertising agency for important that one foreign band recently skipped Additionally, the estates of deceased artists view using a soundalike vocalist in a radio ad for the traditional radio promotion activities and commercial licensing of the artist’s music as a big Doritos and was awarded $2.6 million in damages. instead met with advertising executives. See revenue source, as well as a way to continue to Tom Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1096 When Marketers Become Record Labels, supra expose the deceased artist. See Lauro supra note 34. (9th Cir. 1992) (prevailing on a vocal misappro- note 24. The unknown-in-America Swedish artist 48. Electronica artist FATBOY SLIM’s popular suc- priation claim under California common law and a TEDDYBEARS, through its record label, went on cess in the music industry followed his success false endorsement claim under 15 U.S.C. § a tour of advertising agencies in four major mar- licensing his music for commercials; in 1999, he 1125(a)). He has also sued General Motors’ Opel kets rather than doing a standard promotional tour “hit the mother lode” when Kodak, MasterCard, division in Germany and its ad agency for use of a with radio stations and press. The result: numer- Nike, and Coca-Cola each used one of his songs soundalike in its ads, as well as suits against Audi ous advertising licensing deals were closed after for commercials. Lauro, supra note 34. and the Italian carmaker Lancia for similar mis- this promotional tour, including the use of their Additionally, for the past decade, Volkswagen has appropriation. See Greenberg supra note 52; songs in an Intel commercial and a Cadillac com- been helping artists unknown to mass audiences Lawrence Van Gelder, Waits Settles Ad Suit, N.Y. mercial. Id. (Cadillac will also place one of its by promoting their music in commercials for its TIMES, January 25, 2007 (Waits recently settled automobiles in a TEDDYBEARS video.). automobiles. See id. (noting how Volkswagen of with Opel and its agency and said that he would 42. See Louis Hau, Smells Like New Revenue, America introduced the new Beetle in 1998 “with donate his net proceeds to charity). FORBES.COM, October 24, 2006; Block, supra an entire campaign of songs by bands that were 53. Densmore, the drummer for THE DOORS, has note 34 (“All those rock tunes popping up in com- virtually unknown to the mass audience,” such as long held the view that the music of THE DOORS mercials are making superstar bands ever richer THE ORB, SPIRITUALIZED, and FLUKE). should not be licensed for commercial use, as and turning unknown acts into the next big 49. Moby, whose entire album Play had every single THE DOORS are making plenty of money without thing.”). song licensed for commercial use, has had numer- “selling out” to corporate America and permitting 43. Hau, supra note 42 (noting that “consumers have ous songs placed in commercials, including the use of the group’s music in commercials is become more accepting of hearing their favorite “We’re All Made of Stars” in an Intel campaign. antithetical to the legacy of the group and the artists’ music being used for commercial pur- See Southall, supra note 32 (“Moby’s Play album memory of Jim Morrison. See Densmore v. poses.”). became a worldwide hit after every song was Manzarek, Case Nos. BC 289730 and BC 294495 44. See Block, supra note 34 (“As the cost of promot- placed in one or more adverts.”); Jim DeRogatis, at 6, 17-18 (Cal. Super. Ct. July 21, 2005). THE ing musical acts skyrockets, licensing songs for Talking With Moby, PENTHOUSE, August 2002, DOORS have received numerous offers for use of commercial use, once considered to be a sellout, available at http://www.jimdero.com/Other their music in commercials, including a $15 mil- has become a good way to expose a new record to Writings/PenthouseMoby.htm (responding to lion offer from Cadillac for the use of “Break on the public and make a buck.”); Story, supra note music critic DeRogatis’ questions about licensing Through” in a worldwide campaign for its automo- 39; REUTERS, Cyndi Lauper Likes the Sound of many of his songs, Moby stated that he does not biles and a $4 million offer from Apple Computers Commercials, February 1, 2007 (according to think people will associate his songs with the for the use of another song by the group in a com- singer CYNDI LAUPER, bands looking to break advertiser’s product after the song appeared in a mercial campaign, but since the death of Jim into the music business should seek out commer- commercial). Additionally, The CHEMICAL Morrison the group has only allowed their music cials: “Right now, commercials are where to hear BROTHERS’ beats have become ubiquitous in to be placed in one commercial – a Pirelli tire new music.”). 2006, as their song “Galvanize” is the back- commercial broadcast in England. Id. Other 45. Although it is not always the case that consumers ground to Anheuser- Busch’s popular Budweiser notable artists share the same view as Densmore will automatically link a licensed song with the Select campaign. See http://adtunes.com (listing and Waits regarding the use of their music in com- product being advertised. Block, supra note 34 the top ad music of 2006 and noting that mercials, including NEIL YOUNG, BRUCE (noting that some songs are used for a number of Budweiser branded their 2006 commercial cam- SPRINGSTEEN, BONNIE RAITT, and JACKSON commercial products, which harms the instant paign with “Galvanize.”). BROWNE. Id. at 11. recognition of the product, and listing the 50. See Fine, supra note 34 (noting that fifteen or 54. See LCD Soundsystem team up with Nike, NME, ROLLING STONES’ “Start Me Up” as an example twenty years ago bands that “cozied up” to adver- at www.nme.com/news/lcd-soundsystem/24730 of a song that has been licensed for advertising tisers “were often ridiculed and hung out to dry”); (discussing LCD SOUNDSYSTEM’s commission multiple products). Nevertheless, every time I hear Lauro, supra note 34 (noting that the number of by Nike Inc. to create a workout song for Nike’s “Galvanize” by the CHEMICAL BROTHERS, one songs licensed for commercials greatly increased iTunes download store). According to the VILLAGE of my favorite artists, I cannot help but immedi- during the 1990’s, and in 1999 alone, more than VOICE, LCD SOUNDSYSTEM’S original track for ately think of Budweiser Select, as Anheuser- 130 advertising campaigns used songs originally the Nike iTunes store “may be the best thing the Busch prominently featured the song in its released by an artist but now licensed for com- corporation has ever done.” Mike Powell, Chubby Budweiser Select commercials throughout 2006. mercial use); Hau, supra note 42. Joggers of the World Unite: How Nike’s bizarre 46. See Hau, supra note 42; Seth Stevenson, Paul 51. For example, R.E.M., known for being a politically union with LCD Soundsystem worked out so per- ILLAGE OICE McCartney? Is That You?, SLATE.COM, September active artist, turned down Microsoft Corporation’s fectly, V V , November 19, 2006 (not- 19, 2005, at www.slate.com/toolbar.aspx?action= multimillion dollar offer to use their hit “It’s the ing that money may be just as powerful of a print&id=2126568 (noting that ROLLING End of the World as We Know It” in a commercial motivation tool as inspiration for making good STONES’ music has been featured in an for Windows 95. Ivor Hanson, Rock For Rock’s records); see also Lentini, supra note 34 (dis- Ameriquest campaign); Block, supra note 34 (not- Sake Is No Longer Enough, N.Y. TIMES, December cussing LG Mobile’s use of teenage pop singer ing that ROLLING STONES’ “Start Me Up” was 5, 1999. JOHN MELLENCAMP has also long RIHANNA as their “brand ambassador” because heavily used by Microsoft Corp. to launch expressed objections to the use of artist’s songs in her music appeals to LG Mobile’s target audience Windows 95, as well as for Ford trucks); Chris advertising, but recently acquiesced to placing his – teenagers.) Nashawaty, Back on the Mean Streets, music in a Chevrolet commercial in order to reach 55. One way for an artist to protect itself is to request to see the creative work of the agency or corporate ENTERTAINMENT WEEKLY, September 22, 2006, consumers. Alan Light, Changes In Mellencamp Country, N.Y. TIMES, January 22, 2007 (“This is sponsor before the artist commits to the brand. available at http:// www.ew.com/ew/report/0,61 56. 15 U.S.C. § 1127. 15,1537678_1_0_,00.html (discussing director just what I did this time to reinvent myself and stay in business. Sometimes I get sad about it 57. USPTO Trademark Manual of Examining Martin Scorsese’s use of The Rolling Stones’ Procedure § 1301.02(b); see Creative Arts By “Gimme Shelter” in three of his hit movies); really. I still don’t think that people should sell their songs for advertising.”). Calloway, L.L.C. v. Brooks, 48 Fed. Appx. 16 (2d Lauro, supra note 34 (noting the use of THE Cir. 2002) (“entertainment” may be considered WHO’s “Who Are You” for Gateway computers); 52. Waits is a staunch opponent of having his music used in commercials. Since his career began, he a service in connection with the law of service “The Who in popular culture,” available at marks). http://en.wikipedia.org/wiki/The_Who_ in_popu- has often expressed his view that musical artists should not do commercials because it detracts

42 INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 58. See USPTO Trademark Manual of Examining strated priority of use, the TTAB sustained an the group’s lack of success in breaking America Procedure § 1202.09(a). Registering the name opposition of the application for the service to the lawsuit filed by jazz-folk singer Suzanne of an artist for sound recordings is only allowed mark THE UNDEAD for live performances by a deBronkart, who performed as SUEDE, and the where: 1) the mark is used on a series of sound punk rock band based on Opposer’s common group’s resultant name change to THE LON- recordings (at least two different recordings); law mark THE UNDEAD for live performances DON SUEDE); USPTO Trademark Reg. No. and 2) the owner controls the nature and quality by a punk rock band); Robert Craig “Evel” 1824688 (the mark SUEDE owned by Suzanne of the goods. Id.; In re Polar Music Intern. AB, Knievel v. Kayne West, et al, Case No. 06cv deBronkart for entertainment services); “The 714 F.2d 1567 (Fed. Cir. 1983); In re Ames, 160 02269, (M.D. Fla. December 11, 2006) (“Evel” Charlatans U.K.” biography at VH1.com, U.S.P.Q. 214 (T.T.A.B. 1968). See also supra note Knievel, who owns the trademark EVEL available at http://www.vh1.com/artists/az/ 18 regarding the number of KISS goods regis- KNIEVEL, sued rap star Kanye West over charlatans_uk/bio.jhtml (noting that one the eve tered with the USPTO. West’s “Touch the Sky” video in which West of the group’s first American tour, it had to 59. Allard Enterprise, Inc. v. Advance Programming takes on the persona of “Evel Kaynevel” and change its name to THE CHARLATANS U.K. Resources, Inc., 249 F.3d 564, 571 (6th Cir. mimic’s Knieval’s daredevil act). because a San Franciscan garage rock group 2001). 85. See Chris Riemenschneider, Rock band hits from the 1960’s were already called THE 60. Grondin v. Rossington, 690 F. Supp. 200, 208 hurdle with ‘Olympic’ name, STAR TRIBUNE, CHARLATANS); Riemenschneider, supra note (S.D.N.Y. 1988); Cash v. Brooks, 1996 WL July 28, 2005 (noting DINOSAUR JR.’s name 70 (noting THE CHARLATANS’ name change 6844447 at *12 (E.D. Tenn. April 24, 1996) change due to a trademark dispute with another due to a trademark dispute with another group (“Names of popular musical entertainment and group). with the same name). recording groups are protected by the Lanham 86. See Id. (discussing the ownership of the word 95. A magazine article is relevant when showing the Act even though that name is not a registered OLYMPIC by the U.S. Olympic Committee, first use of a mark if there were two groups trademark. ‘Usage, not registration, confers the which forced THE HOPEFULS to drop the claiming that they made the first commercial use right to a trademark.’”) (citations omitted). “Olympic” portion of their name; ironically, the of the mark. See Far Out Productions, Inc. v. 61. See Homeowners Group, Inc. v. Home Marketing band was originally going to call itself Oskar, 247 F.3d 986 (9th Cir. 2001). Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir. CAMARO, but changed their minds due to 96. If there is a conflict, the label may force the 1991). potential trademark issues). artist to change the name prior to the release of 62. 15 U.S.C. §§ 1057(b), 1115(a). 87. See Donald Passman, ALL YOU NEED TO KNOW any recordings or merchandise. See Champagne 63. 15 U.S.C. §§ 1057(b), 1115(a). ABOUT THE MUSIC BUSINESS, at 318; biography v. DiBlasi, 134 F. Supp. 2d 310 (E.D.N.Y. 2001) 64. 15 U.S.C. §§ 1057(b), 1115(a). of GREEN JELLY at All Music Guide, available (the record company stated that the group had to 65. 15 U.S.C. § 1072. at http://www.allmusic.com/cg/amg.dll?p=amg obtain trademark rights in its name or else the 66. 15 U.S.C. §§ 1057(b), 1115(a). & sql=11:7kd5vwpva9yk. group would have to change its name to one that 67. Additionally, unlike common law marks, if the 88. Teenage rap artist Alijaray Gaston went by the could receive trademark protection; here, artist intends to use a name in commerce but has name “Fat Al” until Bill Cosby stepped in, citing because their name potentially violated a third not done so, the artist may apply for trademark the Cosby-created character Fat Albert. Gaston’s party’s rights, the group dropped it). An artist registration based on that intent, and receive record label, Atlantic Records, attempted to set- should be careful, however, to not assign the priority over any subsequent users. 15 U.S.C. § tle with Cosby, but ultimately changed Gaston’s ownership rights in the name to the record com- 1051(b). performing name to “Al Fatz.” Teen rapper fights pany. Rather, the artist should grant a non-exclu- 68. Nevertheless, each case involves its own partic- over ‘Fat’ with Bill Cosby, REUTERS, November sive license to the record company to use the ular facts, and overgeneralization is always risky. 13, 2006. name for marketing purposes for any recordings 69. See Circuit City Stores, Inc. v. Carmax, Inc., 89. See Rodrigo Perez, Death From Above 1979, made under the contract. (165 F.3d 1047, 1054 (6th Cir. 1999) (the use of MTV.COM, available at http://www.mtv.com/ 97. A violation of the artist’s representations and a mark must be “deliberate and continuous, not news/yhif/death_from_above_1979/; Dave warranties could lead to termination of the con- sporadic, causal, or transitory.”). For an artist, it Morris, review of You’re a Woman, I’m a tract by the record company or an indemnifica- is important to use the name throughout the Machine by DEATH FROM ABOVE 1979, tion of the record company by the artist if a third United States; it is possible that an artist will use SEATTLE WEEKLY, January 5, 2005, available at party brings a claim. a name in one region of the United States, while http://www.seattleweekly.com/music/0501/0501 98. See Mears v. Montgomery, 2006 WL 1084347 another artist will use the same name in a differ- 05_music_cdreviews.php (noting that the group (S.D.N.Y. April 24, 2006) (citing Stetson v. ent region. The artist that first uses the name inserted the “1979” into their name following a Howard D. Wolf & Assocs., 955 F.2d 847, 852 nationally will be able to claim national trade- cease and desist letter from the DEATH FROM (2d Cir. 1992), Marshak v. Sheppard, 666 F. mark rights. ABOVE record label). Supp. 590, 600 (S.D.N.Y. 1987), and Rare 70. See Stetson v. Howard D. Wolf & Assocs., 955 90. See biography of THE VERVE at VH1.com, Earth, Inc. v. Hoorelbeke, 401 F. Supp. 26 F.2d 847, 851 (2d Cir. 1992). available at http://www.vh1.com/artists/az/verve/ (S.D.N.Y. 1975)); Bagdasarian Productions v. 71. It is possible that an artist not taking these bio.jhtml (explaining the name change due to a Audiofidelity Enters., Inc., 1984 WL 1565 (D. actions may be deemed to have “abandoned” the lawsuit filed by the American jazz label N.J. October 3, 1984) (records by “The Happy mark to the public domain. See Densmore v. VERVE). Chipmunks” violated the common law and reg- Manzarek, Case Nos. BC 289730 and BC 91. See Stuart v. Collins, 489 F. Supp. 827 (S.D.N.Y. istered marks of THE CHIPMUNKS); Kingsmen 294495 at 39 (Cal. Super. Ct. July 21, 2005) 1980) (Bootsy Collins and Warner Brothers v. K-Tel Intern. Ltd., 557 F. Supp. 178 (S.D.N.Y. (finding that THE DOORS was not abandoned Records were found to have willfully infringed 1983); Stuart v. Collins, 489 F. Supp. 827 as a mark as the sale and air play of the group’s an artist’s mark after the artist informed them (S.D.N.Y. 1980). music has been continuous over the years); that his registered mark THE RUBBERBAND 99. In the Matter of Atlantic Recording Corp. et al., Kingsmen v. K-Tel Intern. Ltd., 557 F. Supp. had priority trademark rights over BOOTSY 747 N.Y.S. 2d 889, 890 (N.Y. Sup. Ct. 2002). 178, 183 (S.D.N.Y. 1983). COLLINS’ RUBBER BAND.). 100. See Rodgers v. Anderson, 2005 WL 950021 72. See USPTO Trademark Reg. No. 2212548. 92. See Supernova from Cynot3, LLC v. Mark (S.D.N.Y. April 26, 2005) (awarding plaintiff, 73. See USPTO Trademark Reg. No. 1916938. Burnett Productions, Inc., Civ. No. 06CV1334 the founder of and owner of the registered mark 74. See USPTO Trademark Reg. No. 2698988. JAH (RBB) (S.D. Cal. Sept. 12, 2006) (granting CHIC, $250,000 for the willful infringement of 75. See USPTO Trademark Reg. No. 2697128. preliminary injunction on behalf of plaintiff the mark by defendants, former backup singers 76. See USPTO Trademark Reg. No. 3128896. based on its unregistered mark SUPERNOVA for of CHIC who were performing as “Chic”). 77. See USPTO Trademark Reg. No. 1908209. a band); Judge orders made-for-TV band to Trademark rights in artist’s names are valuable 78. See USPTO Trademark Reg. No. 2785724. change name,REUTERS, September 14, 2006; enough that an artist may buy out another artist’s 79. See USPTO Trademark Reg. No. 2825378. Jonathan Cohen, Trademark Dispute Settled rights in a name in order to own such name. See 80. See USPTO Trademark Reg. No. 1051174. Over Supernova Name, BILLBOARD, September Tradem Inc. v. Stainbrook, 2004 WL 1047956 81. See USPTO Trademark Reg. No. 1128762. 21, 2006. (S.D.N.Y. May 10, 2004) (discussing the assign- 82. See USPTO Trademark Reg. No. 2811089. 93. Ben Sisario, Postal Service Tale: Indie Rock, ment of an individual artist’s registered mark 83. See USPTO Trademark Reg. No. 1469618. Snail Mail, and Trademark Law, N.Y. TIMES, THE STAIN to the group STAIND for $18,000; 84. See, e.g., Kaufhold v. Yeomans, Opposition No. Nov. 6, 2004, A1. STAIND in turn licensed THE STAIN back to 91160771 (Trademark Tr. & App. Board 94. See David Barnett, SUEDE: LOVE AND POISON, the individual for use with his performances in September 26, 2006) (Once Opposer demon- at 143, Andre Deutsche Ltd. 2003 (attributing the Ohio area); Colleen Long, Singer Black

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 43 Owns His Own Name, Court Rules, ASSOCIATED when MySpace.com’s corporate partner Fox Idol’ Backers Nervously Wait In The Wings, PRESS, December 7, 2006 (members of the wanted the url for its television show Bones. USA TODAY, January 16, 2006, available at group JAY AND THE AMERICANS purchased Luckily for the band, they were able to retain the http://www.usatoday.com/money/media/2006- the group name from former lead singer Jay url after the issue was sorted out. Band Loses, 01-16-usat_xhtm?csp+34. Black in a bankruptcy auction for $100,000; Regains MySpace URL, FMQB.com, November 114. Claire Atkinson, “Idol” Juggernaut Passes “lawyers for the bankruptcy trustee handling the 7, 2006, at www.fmqb.com/Article.asp?t= $2.5 Billion in Value; Keeps Expanding, case considered the band name a valuable p&id=301843. ADAGE.COM, January 8, 2007 (stating that asset”). 106. See Rick v. Buchansky, 609 F. Supp. 1522 AMERICAN IDOL is “vying for the title of the 101. USPTO Trademark Manual of Examining (S.D.N.Y. 1985); see also Blackwood v. R.W. most lucrative multimedia property of all time”). Procedure § 1207.01(a)(v); see Sullivan v. CBS Blackwood, 2005 WL 2096857 (E.D. Tenn. Aug. 115. See e.g., Marshak v. Sheppard, 666 F. Supp. 590 Corp., 385 F.3d 772, 776-777 (7th Cir. 2004) 30, 2005) (noting that the person or entity that (S.D.N.Y. 1987) (THE DRIFTERS); HEC (the group SURVIVOR is entitled to strong pro- maintains control over a musical group is the Enters., Ltd. v. Deep Purple Inc., 213 U.S.P.Q. tection against other musical group names, but person or entity that owns the trademark rights 991 (DEEP PURPLE); Giammarese v. Delfino, there is no presumption that the mark is equally in the name). Registering the name of an artist 197 U.S.P.Q. 162 (N.D. Ill. 1977) (THE strong outside that realm; therefore, the televi- for sound recordings is only allowed where: 1) BUCKINGHAMS); Cash v. Brooks, 1996 WL sion show “Survivor” did not infringe on the the mark is used on a series of sound recordings 6844447 (E.D. Tenn. April 24, 1996) (THE band’s trademark rights for musical services); (at least two different recordings); and 2) the IMPRESSIONS). CPG Products Corp. v. Perceptual Play, Inc., 221 owner controls the nature and quality of the 116. 2 MCCARTHY ON TRADEMARKS AND UNFAIR USPQ 88 (TTAB 1983) (The test is whether pur- goods. Rick, 609 F. Supp. at 1522; In re Polar COMPETITION § 10:40 (4th Ed. 2006). Section chasers would believe the product or service is Music Intern. AB, 714 F.2d 1567 (Fed. Cir. 45 of the Lanham act provides that a mark can within the registrant’s logical zone of expan- 1983). be considered abandoned: “When its use has sion). 107. See Rick v. Buchansky, 609 F. Supp. 1522 been discontinued with intent not to resume 102. This secondary meaning can be established by (S.D.N.Y. 1985); Stetson v. Howard D. Wolf such use. Intent not to resume may be inferred the success of the artist, such as by the number Associates, 955 F.2d 847 (2d Cir. 1992) (holding from circumstances. Non use for three consecu- of record albums sold and merchandise sold on that because the manager “used” and did not tive years shall be prima-facie abandonment.” the artist’s behalf. Winterland Concessions Co. abandon the mark THE DIAMONDS, his suc- 15 U.S.C. § 1127. The Second Circuit Court of v. Macintosh, 1992 WL 170897 (E.D. Pa. July cessor in interest could enjoin former group Appeals has held that “to prevail on a claim that 14, 1992); Gore v. Does, 1998 WL 778374 members’ new group under the same name). a trademark has been abandoned, the party (S.D.N.Y. Nov. 6, 1998). 108. See In the Matter of Atlantic Recording Corp. et claiming abandonment must show (1) non-use 103. See supra note 35 (discussing Nike’s use of al., 747 N.Y.S.2d 889, 890 (N.Y. Sup. Ct. 2002). by the owner of the trademark or trade name and MINOR THREAT’s name and album cover art to 109. Rick v. Buchansky, 609 F. Supp. 1522 (S.D.N.Y. (2) the intent by the owner not to resume using promote Nike’s Major Threat skateboarding 1985); but see Bell v. Streetwise Records Ltd., the name or the mark.” Mears v, Montgomery, tour). 761 F.2d 67 (1st Cir. 1985) (determining that 2006 WL 1084347 at *8 (S.D.N.Y. April 24, 104. See Cash v. Brooks, 1996 WL 6844447 (E.D. although the individual members of “New 2006) citing Silverman v. CBS Inc., 870 F.2d 40, Tenn. April 24, 1996) (finding likelihood of con- Edition” did not have trademark rights in the 50 (2d Cir. 1989) (also noting that two years of fusion for former group members performing group name for phonorecords, as they did not non-use of a trade name by its legal owner cre- under the name THE IMPRESSIONS when the market phonorecords under that name until the ates a “rebuttable presumption of abandon- public identifies the original group as THE producer employed the individual members, the ment.”). IMPRESSIONS); Kaufhold v. Yeomans, members, both individually and collectively, had 117. See Kingsmen v. K-Tel Int’l, Ltd., 557 F. Supp. Opposition No. 91160771 (Trademark Tr. & service mark rights in the group’s name for the 178 (S.D.N.Y. 1983) (a group that ceased App. Board September 26, 2006) (artist per- field of live musical entertainment). recording and disbanded in 1967 did not aban- forming under the common law mark THE 110. In the Matter of Atlantic Recording Corp. et al. don rights in the group name; the court found UNDEAD successfully opposed another artist at 891 (although the contract at issue explicitly that the continued use of the name to promote using the name THE UNDEAD); Winterland gave the producer of the concept group “Dream the sale of previous recordings and the receipt of Concessions Co. v. Macintosh, 1992 WL 170897 Street” the ownership of the trademark and trade royalties from those sales negates any inference (E.D. Pa. July 14, 1992) (bootleg merchandis- name, the court also noted that the producer of an intent to abandon the group name); ers); Gore v. Does, 1998 WL 778374 (S.D.N.Y. spent over $2 million to create, produce, and Densmore v. Manzarek, Case Nos. BC 289730 Nov. 6, 1998) (bootleg merchandisers); promote the group); Rick v. Buchansky, 609 F. and BC 294495 (Cal. Super. Ct. July 21, 2005) Polygram Merchandising, Inc. v. New York Supp. 1522 (S.D.N.Y. 1985) (finding that the (finding that the name THE DOORS had not Wholesale Co., 2000 WL 23287 (S.D.N.Y. Jan. manager of “Vito and the Salutations” was enti- been abandoned since both the sale of the 13, 2000) (bootleg merchandisers); Virgin tled to an injunction against the use of the name band’s music and air play of their music has Enters. Ltd. v. David Defeis, 2000 WL 1720144 by former members of the group; the manager been continuous over the years); Supernova from (Trademark Tr. & App. Bd. October 26, 2000) was the owner of the name since he “exerted Cynot3, LLC v. Mark Burnett Productions, Inc., (owner of the VIRGIN, VIRGIN RECORDS, and influence over the style and content of the Civ. No. 06CV1334 JAH (RBB) (S.D. Cal. Sept. VIRGIN MEGASTORE marks successfully group’s act” and “functioned much like the pro- 12, 2006) (although the band SUPERNOVA was opposed a musician applying for the trademark ducer of a theater company or owner of a sports not currently touring, the band did not abandon VIRGIN STEELE for sound recordings, cloth- team” where various performers played the parts its name). ing, and musical entertainment); BMG Special and positions). 118. Robi v. Reed, 173 F.3d 736, 739 (9th Cir. 1999) Products, Inc. v. David Anthony Jagosz, 2003 111. Peter Newcomb, It’s Slippery at the Top, (when member left the group THE PLATTERS, WL 22477869 (Trademark Tr. & App. Bd. FORBES, September 30, 1991; see The New he took no rights to the service mark with him; October 30, 2003) (owner of the marks BUDDA Kids on the Block v. News America Publishing, rather, the rights remained with the original and BUDDAH for a record label successfully Inc., 971 F.2d 302, 304 (9th Cir. 1992) (“there group); HEC Enters., Ltd., 213 U.S.P.Q. at 994 opposed a musician applying for the trademark are more than 500 products or services bearing (C.D. Cal. 1980) (former member of DEEP PUR- YOU DA BUDDA for sound recordings and the NEW KIDS trademark”). PLE and his new group were prohibited from entertainment services). 112. Ayala Ben-Yahuda, Epic to Sign Menudo; MTV performing under the name DEEP PURPLE 105. Artists should actually purchase a domain name Plans Reality Show, BILLBOARD, October 13, 2006 when members of the original group, with cer- rather than just relying on a MySpace.com page (over the years, MENUDO became “an instantly tain replacement members, continued to use the even if they do not have an associated website recognizable mainstream brand”). This deal gives name, which had acquired common law trade- yet. The artist could always redirect viewers of Epic a cut of MENUDO by-products such as tour- mark rights in the United States). Courts have the domain to the artist’s MySpace.com page. ing, merchandising, ringtones, a cartoon series, also found that the departing group member does Solely having a MySpace.com page for the and other branded revenue streams. Id. not have rights to the group’s name just by virtue artist’s web address may be problematic, as 113. David Lieberman, ‘American Idol’ Zooms From of the member’s tenure with the group. See MySpace.com itself owns all of the MySpace Hit Show to Massive Business, USA TODAY, Densmore v. Manzarek, Case Nos. BC 289730 urls. For example, the Louisiana-based rock March 29, 2005, available at http://www.usato- and BC 294495 (Cal. Super. Ct. July 21, 2005) band BONES temporarily lost their day.com/life/television/news/2005-03-29- (holding that two of the original members of MySpace.com url (www.myspace.com/bones) media-usat_x.htm; David Lieberman, ‘American THE DOORS could not perform under the name

44 INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 THE DOORS or THE DOORS OF THE 21ST mark, something that a person’t publicity attrib- marks that are considered weak, to suggestive, CENTURY without the consent of all of the orig- utes may not necessarily do. arbitrary, or fanciful marks that are judged with inal members); Gallina v. Giacalone, 1996 WL 124. N.Y. Civ. Rts. Law §§ 50-51; Cal. Civ. Code § a higher level of inherent distinctiveness. Id. 735353 at *3 (N.Y. Sup. Ct. Dec. 9, 1996) (hold- 3344; see also Cher v. Forum Int’l, 692 F.2d 634 132. See supra “Choosing and Clearing the Artist’s ing that musicians that performed with the group (9th Cir. 1982); Washington v. Brown & Name” and related notes. Note, an artist should only once unfairly capitalized on the work by the Williamson, 223 U.S.P.Q. 1116 (E.D. Pa. 1984); also not choose a name that could potentially founding members by continuing to perform Midler v. Ford Motor Co., 849 F.2d 460 (1988); violate the rights of publicity of another person, under the group’s name); HEC Enters. Ltd., 213 Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. regardless of whether that person is in the music U.S.P.Q. at 992 (original member of the group Supp. 826 (S.D.N.Y. 1990); White v. Samsung industry or not. See supra “Rights of Publicity DEEP PURPLE prohibited from using DEEP PURPLE as the name of his new group); Electronics, 971 F.2d 1395 (9th Cir. 1992); Under State Law” and related notes. Giammarese v. Delfino, 197 U.S.P.Q. 162, 162- Apple Corps Ltd. v. Button Master, 47 133. The database is available at http:// 164 (N.D. Ill. 1977) (holding that while the U.S.P.Q.2d 1236 (E.D. Pa. 1998). www.uspto.gov/main/trademarks.htm. While not departing group member was a founding member 125. Apple Corps Ltd. v. A.D.P.R., Inc., 843 F. Supp. an exhaustive resource, this database is useful of the group THE BUCKINGHAMS, his unau- 342 (M.D. Tenn. 1993) (use of THE BEATLES for preliminary searches. thorized creation of the group NU-BUCKING- and JOHN, PAUL, GEORGE, and RINGO in a 134. To determine whether a name is clear for trade- HAMS was trademark infringement). commercial context was found to violate mark use, the artist will want to evaluate the 119. See Kassbaum v. Steppenwolf Prods., Inc., 236 Tennessee’s Personal Rights Protection Act); search results using the multifactor test for the F.3d 487 (9th Cir. 2000) (these are truthful state- Apple Corps Ltd. v. Button Master, 47 likelihood of confusion. See Polaroid Corp. v. ments and confusion is unlikely); Kingsmen, 557 U.S.P.Q.2d 1236 (E.D. Pa. 1998) (group name Polarad Elec. Corp., 287 F.2d 495 (2d Cir. F. Supp. 178 (a proper usage would be the lead THE BEATLES as well as the individual mem- 1961); AMF, Inc. v. Sleekcraft Boats, 599 F.2d singer’s name with “formerly of the Kingsmen” or bers’ names and likenesses were protected by 341 (9th Cir. 1979). Because trademark law is a “Jack Ely, lead singer on the original Kingsmen Pennsylvania’s common law right of publicity). highly specialized field that unfortunately does recording of Louie Louie.”); Brother Records, 126. Apple Corps Ltd. v. A.D.P.R., at 348 (“the stage not lend itself to black or white answers, it will Inc. v. Jardine, 318 F.3d 900, 901 (9th Cir. 2003) name of a group of individuals is entitled to the be useful for an artist to consult an attorney to (former member of THE BEACH BOYS could not same protection as the name of one of the indi- interpret the search results. use the group’s name for his performances, but viduals which compose that group”). 135. Thomson CompuMark (http://www.thomson- was allowed to refer to his past membership in the Additionally, musical groups as well as the indi- thomson.com) and CT Corsearch (http:// group); Grondin v. Rossington, 690 F. Supp. 200 vidual performers have protectible rights of pub- www.ctcorsearch.com) are two such vendors that (S.D.N.Y. 1988) (defendant former group member licity. Apple Corps Ltd. v. Button Master, 47 offer comprehensive trademark and entertain- was required to affix a label on his CDs and cas- U.S.P.Q.2d 1236 (E.D. Pa. 1998). ment availability reports. The search reports can settes stating that “this is a recording of a new 127. Cuomo v. Miller Brewing Company, et al., Case range from $500 to close to $1500 depending on band recorded in 1987 and not the original No. 8C359544 (Cal. Superior Ct., Sept. 29, 2006). the type of search performed and the turnaround Lynyrd Skynyrd group”); see also Cleopatra 128. Browne v. Bloomingdale’s, Case No. 06cv7877 time. Records v. William Bruce Bailey, Case No. CV (C.D. Cal. December 12, 2006) (according to the 136. The owner of a trademark is the entity that con- 04-3120 GAF (C.D. Cal. July 6, 2004) (finding lawsuit, the t-shirts bear the name JACKSON trols the quality of the goods or services under that the use of the name GUNS ‘N ROSES for an BROWNE in large letters across the top of the the trademark. Therefore the owner for the album of recordings by a predecessor band enti- shirt, with a large photograph of the singer play- application can be an individual artist, a part- tled “Hollywood Rose: The Roots of Guns ‘N ing an acoustic guitar in front of a microphone). nership among group members, or the corporate Roses” was a nominative fair use of the GUNS ‘N 129. See Hanson, supra note 51 (noting that alterna- entity that was created to hold the intellectual ROSES trademark). tive rocker LIZ PHAIR appeared on Calvin property rights of the group. See supra 120. See e.g., Brother Records, Inc. v. Jardine, 318 Klein billboards and alternative band EVER- “Dissolution and/o Membership Changes” and F.3d 900, 901 (9th Cir. 2003) (the members of LAST appeared in magazine ads for Avirex related notes. THE BEACH BOYS incorporated Brother clothing). 137. The cost to file a trademark application with the Records, Inc. to hold and administer the intel- 130. See Winterland Concessions Co. v. Macintosh, USPTO is $325 per class of goods or services if lectual property rights of THE BEACH BOYS, 1992 WL 170897 at *10 (E.D. Pa. July 14, the applicant uses the electronic-based TEAS including the group’s trademark rights). 1992) (licensee of numerous artists’ names and system. A $275 application is available if the 121. Of course, a group should think about whether likenesses, as well as their trademarks, for mer- artist has the ability to use the TEAS Plus sys- they want other group members to prevent chandise was able to obtain a default judgment tem. another group member to use the name outside against a bootleg merchandiser for violations of 138. Maintaining a trademark registration includes of the group. For example, John Densmore of the right of publicity and trademark law); Apple filing an affidavit of continuing use with a spec- THE DOORS has successfully sued his other Corps Ltd. v. Button Master, 47 U.S.P.Q.2d 1236 imen of current use during the sixth year of use band members for performing under the name (E.D. Pa. 1998) (granting summary judgment for of the mark. 15 U.S.C. § 1058. Additionally, the THE DOORS, and even though the band has plaintiff’s trademark and right of publicity artist who receives a trademark registration after officially broken up, the band members that still claims after finding the use of THE BEATLES November 16, 1989 will need to file an applica- want to perform together are restrained from and the group members’ individual names for tion for renewal with proof of continued use doing so. Densmore v. Manzarek, Case Nos. BC commercial purposes violated the Lanham Act within the last six months of tenth year of use of 289730 and BC 294495 (Cal. Super. Ct. July 21, and Pennsylvania’s right of publicity law); Apple the mark. 15 U.S.C. § 1059. Of course, as men- 2005). Corps Ltd. v. A.D.P.R., 843 F. Supp. at 349 tioned previously, trademark protection in the 122. See Winterland Concessions Co. v. Macintosh, (holding that a lookalike cover band misappro- United States is based on use of the mark in 1992 WL 170897 (E.D. Pa. Jul 14, 1992) (“each priated the names and likenesses of THE BEA- commerce, so even if an artist’s registration for licensor musical group has a sole right to control TLES); Robert Craig “Evel” Knievel v. Kayne its professional name is cancelled, the artist may the commercial exploitation of the name and/or West, et al, Case No. 06cv 02269 (M.D. Fla. still have trademark rights in its name based on likeness of the group, including their uses on T- December 11, 2006) (EVEL KNIEVEL brought the use in commerce. shirts and jerseys”) citing Zacchini v. Scripps- trademark infringement and right of publicity 139. See, e.g., Barcamerica Int’l USA Trust v. Tyfield Howard Broadcasting Company, 433 U.S. 562 claims against rap star KAYNE WEST for West’s Imps., Inc., 289 F.3d 589 (9th Cir. 2002). (1977). In Zacchini, the Supreme Court recog- “Touch the Sky” video, in which West takes on 140. See N.Y. Civ. Rts. Law §§ 50-51; Caesar v. nized the authority of states to protect entertain- the persona of “Evel Kaynevel”). Chemical Bank, 496 N.Y.S.2d 418 (1985) ers’ “right of publicity.” 433 U.S. at 573, 131. See Abercrombie & Fitch, Co. v. Hunting World, (statute violated where employees orally con- 576-78. Inc., 537 F.2d 4 (2d Cir. 1976). The strength of sented and posed for photograph exhibited at 123. Generally, trademarks and service marks iden- a trademark is evaluated along a sliding scale of trade show). tify a source of the good or service under that distinctiveness, from generic or descriptive

INTELLECTUAL PROPERTY TODAY MARCH /APRIL, 2007 45 under its professional name to maintain How the Band Protects Its Brand: trademark or service mark status.71 Finally, the following are well-known examples of the various types of trademarks The Use of Trademarks to Protect and service marks available in the music industry: 1) group names such as LED and Promote the Musical Artist ZEPPELIN,72 PEARL JAM,73 and SPICE GIRLS;74 2) individual performer names (Part Two of a Two-part Article – Part One was published in the March issue) such as SNOOP DOGG75 and PRINCE;76 as a mark.60 The artist must only be the first 3) individual artists who perform under BY CHRISTOPHER R. CHASE, ESQ. OF party to continuously use the name in com- their real names such as MICHAEL FRANKFURT KURNIT KLEIN & SELZ, P.C. 77 78 merce for the specific goods and services JACKSON and DAVE MATTHEWS; 4) music industry logos such as THE offered under that name.61 Mr. Chase is an intellectual property and ROLLING STONES “LIPS” logo,79 the Nevertheless, although it is not required entertainment attorney with Frankfurt ARISTA “A” logo,80 and even the faces of to protect a mark, federal registration of a Kurnit Klein & Selz, P.C. in New York. He the members of KISS;81 and 5) music trademark or service mark provides certain can be reached at [email protected]. The industry companies’ names such as the statutory benefits that are not provided by author thanks Marc Handelman, Brian G. GHOSTLY INTERNATIONAL82 record an unregistered or “common law” mark, Murphy and Alexandra VonHockman for label and the VIRGIN83 record label. their insightful comments. such as 1) prima facie evidence as to the validity of the registered mark;62 2) validity Choosing and Clearing the Artist’s Name of the registration itself;63 3) the regis- Like any other trademark, when select- trant’s ownership of the mark;64 4) con- ing an artist’s professional name it is impor- THE USE OF TRADEMARK LAW TO structive notice of the registrant’s claim of tant to adopt a name that is both distinctive PROTECT AN ARTIST’S BRAND ownership;65 and 5) the exclusive right to and unique. The more distinctive the name, As discussed in Part One, musical use the mark in commerce on the goods or the more effective the protection the name artists are becoming brands used to pro- services specified in the registration certifi- has as a trademark. Moreover, an artist mote their own, and others’, goods and ser- cate.66 Registering the professional name should not only choose a distinctive name to vices. So how do artists protect their brand? as a trademark or service mark with the protect its own identity, but the artist needs Through trademark law. United States Patent and Trademark Office to avoid infringing upon other parties’ 84 Trademark Law in the Music Industry (“USPTO”) is truly the best way to protect names. Because the likelihood of confu- sion between two marks is the hallmark for A trademark or service mark is a word, it because registration prevents third par- trademark violations, a new artist should not name, symbol, or device56 that informs the ties and departing group members from choose a professional name that is identical public of the source of the goods or services capitalizing on the name.67 Essentially, to or confusingly similar to an existing name being offered, and assures the public of the although an artist may have a common law in the music industry. Litigation over the legitimacy and quality of the goods or ser- trademark or service mark in its name proper ownership of a name requires both because of its prior use of that name, it is vices being offered. Generally referred to time and money, and there is a risk that the always prudent to register the mark with the on the whole as just “trademarks,” service artist could lose the right to use the name. USPTO because such registration pre- marks are used to identify services offered Because the goodwill in its name is all a sumes the validity of the mark and gives the to the public, while a trademark, on the new artist has when starting its foray into artist a stronger right to prevent confusingly other hand, distinguishes the words, names, the music industry, starting over is an unat- similar uses of such mark by others in the symbols, or devices used on tangible phys- tractive option. Therefore, it is extremely 68 ical goods. In the music industry, an artist’s United States. important for an artist to clear his, her, or its professional name may function as a ser- In order to claim trademark or service professional name prior to significant use in vice mark for entertainment services if it is mark rights in its professional name, the the industry. used to identify and distinguish the service most significant thing an artist can do is to There have been numerous instances of providing live performances from other deliberately and continuously use the mark where an up and coming artist had to artists57 or as a trademark for a series of in public over a geographically extensive change its name due to trademark prob- musical recordings or other merchandise area to identify itself.69 This use must be lems. For example, DINOSAUR JR. (for- such as t-shirts, stickers, and posters.58 continuous, as it is possible that if an artist merly DINOSAUR),85 THE HOPEFULS In the United States, trademark and ser- held trademark rights to its name and (formerly THE OLYMPIC HOPEFULS),86 vice mark rights are created by use in com- ceased touring, making and releasing GREEN JELLY (formerly GREEN merce and the resulting development of records, and receiving royalties, it would be JELLÖ),87 AL FATZ (formerly FAT AL),88 “secondary meaning”59 – the public’s deemed to have stopped use of its name DEATH FROM ABOVE 1979 (formerly recognition and association of the mark because the public would no longer identify DEATH FROM ABOVE),89 and THE with a source of goods or services. Because the artist with activities in the music indus- VERVE (formerly VERVE)90 all had to rights are based on use, an artist need not try.70 Therefore, an artist should actively change their professional names due to var- register his, her or its name in order to perform and offer, or at least collect royal- ious trademark issues, the latter two involv- claim rights in or protection for that name ties for, records, CDs or other merchandise ing similar record label names rather than

34 INTELLECTUAL PROPERTY TODAY APRIL, 2007 other artist names. Moreover, commercial success does not guarantee litigation suc- cess: relative unknowns have forced suc- cessful artists to change their professional names.91 A recent example involved CBS’ rock band reality show Rock Star: Supernova, wherein the band, comprising famous musicians and the show’s winner, would be 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).92 Even the U.S. Postal Service was not pleased to see that there was an artist called “The Postal Service,” but an amicable resolution require that the artist in the record contract Artists should also register their profes- 93 allowed the artist to retain its name. represent and warrant to this effect.97 sional name as an Internet domain name.105 Because the music industry is global, While this is not a substitute for trademark artists must also choose a name that will not Protection of Artists’ Names registration, operating a website with that infringe on foreign artists’ marks if the artist Recognizing the value of an artist’s domain name would go a long way to show desires to reach foreign markets. In the mid- name as a mark, courts have frequently use of the name as a mark in commerce and 1990’s, popular British bands SUEDE and applied trademark law to protect the pro- would put others on notice of the artist’s THE CHARLATANS were forced to change fessional names of artists.98 As noted in the use of the name in the music industry. their names for the U.S. market due to Part One of this article, rights to an artist’s artists’ prior uses of those names in the professional name and the right to perform Trademark Issues for Group Artists United States.94 SUEDE’s change to THE under that professional name are signifi- CONCEPT GROUPS LONDON SUEDE and THE CHARLA- cant rights in the music and recording Because the owner of trademark rights is TANS’ change to THE CHARLATANS U.K. industry.99 Such rights are monetarily valu- the person or entity that controls the qual- may have harmed both bands’ chances at able100 to both the artist and record compa- ity of the goods or services offered under widespread U.S. success, as they could not nies alike, and preventative legal measures the mark,106 the owner of trademark rights rely on the goodwill associated with their should be taken in order to ensure protec- in an artist’s name is not always the artist. famous name back home. Therefore, it is tion of the name. This is especially true with “concept imperative that an artist conduct a global Regardless of whether it is registered or groups” – those groups that are the cre- music industry search in order to avoid any not, the artist’s professional name will only ations of a producer, promoter, or manager potential trademark conflicts. have trademark protection in the field for and whose members are essentially inter- It is simply not enough to take a trip to which the mark is used, and in the logical changeable parts.107 the local record store to clear an artist’s zone of expansion of that field.101 For Generally speaking, a concept group is name. An artist must check numerous artists, this field will primarily include created by a producer, promoter, or man- sources to survey the global music industry, musical performances and pre-recorded ager who (essentially) hires performers to such as the databases of the performing audio and video. Ancillary goods, such as play the roles in the group and directs the rights societies (e.g., ASCAP, BMI, SESAC) 108 posters and t-shirts, may be within the log- group’s performances. Examples of such and musicians’ unions (such as the ical zone of expansion, but the artist’s pro- concept groups include NEW KIDS ON American Federation of Musicians), music THE BLOCK, MENUDO, THE MON- fessional name often needs to achieve magazines including Rolling Stone, Spin, KEES, SPICE GIRLS, BACKSTREET secondary meaning in order to have trade- and Billboard,95 and review popular music BOYS, and N*SYNC. While not necessarily mark protection for such goods.102 websites such as MySpace, PureVolume, a group, AMERICAN IDOL is one of the Once the artist’s professional name is Pitchfork, All Music Guide, and The Band most recent and most popular concept phe- Register. properly used as a trademark or service nomenons. Finally, having the clear right and title to mark, the artist must enforce its rights to Where the producer, promoter, or man- an artist’s professional name is necessary if that mark. No other party in the industry ager of the concept group controls the qual- the artist seeks to sign a recording contract should use or exploit the professional name ity of goods and services associated with or license its name for merchandising pur- without permission, if at all.103 Not protect- that group, such person is the valid owner poses. Because record labels will need to ing the name could be perceived as demon- of the trademark rights in the group’s name, use the name in connection with the mar- strating the inherent weakness of the even if this person is not in the group keting and sale of pre-recorded audio and artist’s name as a mark. Therefore, the itself.109 Courts have found that ownership other merchandise bearing that name, they artist must prevent other parties in the of a concept group’s professional name in will generally not sign an artist unless that music industry, including other artists or the name of the producer, promoter, or man- artist owns the rights to its name, free and bootleg merchandisers,104 from using or ager is legally appropriate where the public clear of any third party rights96 and will exploiting his, her, or its valuable mark. associates with the concept group charac-

INTELLECTUAL PROPERTY TODAY APRIL, 2007 35 teristics or a style that is or are controlled Also, when confronted with the issue of Natalie and Friends under both right of by the producer, promoter, or manager.110 departing group members who use the publicity and trademark laws for using Ownership of the concept group’s name name of their former group, courts have Browne’s name and image on t-shirts sold is extremely important, because the owner determined that members of a group do not at the department store.128 essentially owns the shell of the group itself retain rights to use the group’s name when Because artists often license their and just rotates performers in and out with- such members leave that group.118 names and likenesses for commercial out necessarily changing the group’s overall However, the former members may properly exploitation,129 the artist has a strong inter- identity. Successful concept groups not only refer to themselves as a “former member of est in preventing unauthorized use of their generate a substantial amount of money [group]” or “original member of [group]” publicity rights and can do so through both through their live performances and sound when advertising his or her new entertain- right of publicity and trademark laws.130 recordings, but also make considerable ment services or sound recordings.119 sums of money with merchandising and Because of the difficult issues that face DEVELOPING AN EFFECTIVE ancillary goods. For example, NEW KIDS dissolved groups or the departing members TRADEMARK STRATEGY ON THE BLOCK sold nearly $75 million of groups, it is important to have an agree- In order to successfully protect its pro- in concert tickets and over $1 billion in ment among the members of the artist fessional name, the artist should develop an merchandise during the group’s heyday in regarding the use of the group’s name.120 effective trademark strategy – from choos- 1990.111 Also, Epic Records recently Often a group will be a partnership or ing a professional name to enforcing the acquired an equity stake to re-launch the incorporated entity; therefore, all group rights included in such name – as well as Latino concept group MENUDO, in order to partnership or internal corporate agree- protecting his, her, or its rights of publicity. resurrect the brand by offering a new album ments should specifically outline the rights As noted above, when choosing a profes- and a reality show in 2007. 112 The current to the group name and what will happen to sional name, an artist should keep in mind concept group money leader is AMERICAN that name upon dissolution of the group or that the more distinctive the name, the IDOL, which in 2004 alone generated more the departure of a member. Another way to more effective the protection the name has than $900 million in sales of TV advertise- prevent the problem of departing members as a trademark.131 Prior to choosing a name, ments, sound recordings, merchandise, and using the group’s name is to have the group, the artist should not only perform internet concert tickets,113 and was conservatively as a partnership or incorporated entity, fed- searches and review music industry web- valued at the start of 2007 as a $2.5 billion erally register the name as a mark. If the sites and publications to determine whether franchise.114 Therefore, the ownership of group as a whole owns the registered mark, another artist or music industry player is such concept group names becomes a sig- then the group can prevent any departing using a confusingly similar name,132 but the nificant point because such owner will con- member from using such name, while con- artist should also conduct a preliminary trol the nature and quality of the goods and tinuing to protect the name of the group search of the USPTO online database.133 121 services being offered under that name, against other third party uses. Such a search would give the artist an idea even if the individuals in the group have of whether the name appears clear from a changed or the group has been dormant for RIGHTS OF PUBLICITY UNDER STATE LAW trademark perspective.134 It may also be a number of years. In addition to the use of trademark law useful to order a comprehensive search to protect the artist’s name, state right of from a trademark search vendor in order to DISSOLUTION AND/OR publicity laws can offer additional protec- gain a clearer picture of the possibility of MEMBERSHIP CHANGES tion.122 Although trademark law tends to using the name as a mark, as these In group situations, the dissolution overlap with state right of publicity laws, searches generally cover both federal and and/or change of membership of the artist these state laws generally protect a person’s state trademarks, common law trademarks, presents difficult problems of ownership of name, picture, voice, or likeness against corporate names and trade names.135 the trademark rights in the artist’s profes- commercial appropriation regardless of Nevertheless, since trademarks in the sional name. There have been numerous whether one of these attributes serves a United States exist by virtue of use rather lawsuits regarding ownership of a group source identifying function123 or not.124 than registration, no search is completely name either following the dissolution of the Such rights have been extended to an effective. group or when former members attempt to artist’s professional name125 – be it the After the artist has evaluated the risks use the name, while the original group con- artist’s actual name or stage name.126 For associated with the results of the trademark tinues to use it.115 example, two popular artists have recently searches and has decided to go forward A group that disbands does not immedi- sued third parties for unauthorized use of using a specific professional name, apply- ately abandon exclusive rights in its the artists’ names, images, and likenesses. ing for federal registration of the name as a name.116 Thus, a subsequent artist should The band WEEZER sued Miller Brewing trademark and service mark should be the not use such name, because the subsequent Co. and its advertising agency under both next step.136 Trademark applications with artist cannot assume that the name is no right of publicity and trademark laws for the USPTO are filed within specific classes longer being used by the original artist.117 using the name WEEZER in advertise- of goods or services.137 The artist should It is often the case that a group continues to ments promoting Miller’s beer, arguing that apply for a trademark for its name in Class sell sound recordings and collect royalties its name was being commercially appropri- 9, which covers sound recordings and even if it is not performing, and therefore ated without authorization.127 Also, the audio-visual recordings, and Class 41, continues to use the name as a mark in singer JACKSON BROWNE sued which covers live performances, production commerce. Bloomingdale’s and clothing manufacturer services, and services offered through the

36 INTELLECTUAL PROPERTY TODAY APRIL, 2007 artist’s website. Other relevant classes of ister the trademark; and 8) requiring the goods for merchandising purposes include licensee to carry product liability insur- Patentability Searches: $500 Class 16, which covers printed material ance. The quality control provision may be such as books, magazine, posters, and the most important provision for a licensor, Invalidity Searches: $1500 stickers, and Class 25, which includes as a trademark license that does not contain t-shirts and hats. Once registered, the artist such a provision, or under which no quality Finding the 102 you need: will have to maintain the trademark regis- control has been exercised, may be consid- PRICELESS tration in order to keep the registration ered a “naked license” and may result in “alive” in the USPTO.138 Nevertheless, the the an abandonment or tarnishment of the most important thing that an artist can do to licensor’s trademark.139 maintain trademark rights in its name is to Additionally, licensing the “brand” may use the name consistently and continuously include the artist’s rights of publicity. The Search Firm in commerce over a geographically exten- Under state law, a written release is gener- (V) 800-298-4624 (F) 800-299-6394 [email protected] sive area for the goods and services that the ally necessary whenever a person’s rights of artist provides. publicity, e.g., name, picture, voice, or like- Once the artist has started accruing ness, are used in advertising or for the pur- phase of an artist’s career, obtaining trade- trademark rights in its name, the artist will poses of trade.140 Like licensing a mark protection is well worth the effort if have to begin policing the name for the use trademark, when an artist is licensing his, the artist wants a long lasting career in the of confusingly similar names in the indus- her, or its rights of publicity there are a few industry. By doing so, the artist will protect try. This will include issuing cease and key points on which the artist should focus: his, her or its identity and brand. IPT desist letters to any other party thought to 1) the grant of the rights, including the spe- be using a confusingly similar or potentially cific attributes of the artist being licensed; ENDNOTES diluting name. If necessary, the artist may 2) the type of media where the artist’s 56. 15 U.S.C. § 1127. need to enforce its rights in the name by rights will be used, such as television, 57. USPTO Trademark Manual of Examining bringing opposition or cancellation pro- radio, print, and the internet; 3) the manner Procedure § 1301.02(b); see Creative Arts By Calloway, L.L.C. v. Brooks, 48 Fed. Appx. 16 (2d ceedings in the USPTO, or lawsuits in fed- of use of the artist’s rights; 4) the geo- Cir. 2002) (“entertainment” may be considered eral or state courts. graphic territory where the rights will be a service in connection with the law of service All of these steps are necessary precur- used; 5) the breadth of the artist’s termina- marks). sors to licensing an artist’s “brand,” as tion rights; and 6) the artist’s creative con- 58. See USPTO Trademark Manual of Examining third parties will not want to associate trol over the use of the rights, including Procedure § 1202.09(a). Registering the name approval rights for any use. Because the of an artist for sound recordings is only allowed themselves with a weak or diluted brand or where: 1) the mark is used on a series of sound one that may lead to lawsuits based on a artist wants to ensure that his, her, or its recordings (at least two different recordings); trademark claim. When a third party is image will not be tarnished in any way, the and 2) the owner controls the nature and quality interested in licensing the artists’ trade- grant of rights clause may be the most sig- of the goods. Id.; In re Polar Music Intern. AB, nificant provision, as it should be very spe- 714 F.2d 1567 (Fed. Cir. 1983); In re Ames, 160 mark as part of the brand, the artist should U.S.P.Q. 214 (T.T.A.B. 1968). See also supra note take care to create a licensing agreement cific as to each and every attribute being 18 regarding the number of KISS goods regis- that is both monetarily valuable and suffi- granted. tered with the USPTO. cient to protect the artist’s rights. Although While this section is not an exhaustive 59. Allard Enterprise, Inc. v. Advance Programming there is no one “correct” way to structure a list of steps to take in order to protect an Resources, Inc., 249 F.3d 564, 571 (6th Cir. 2001). trademark licensing agreement on behalf of artist’s trademark rights, it should be viewed as a helpful summary when estab- 60. Grondin v. Rossington, 690 F. Supp. 200, 208 the artist, the following are a few helpful (S.D.N.Y. 1988); Cash v. Brooks, 1996 WL tips to consider when drafting the agree- lishing a trademark and right of publicity 6844447 at *12 (E.D. Tenn. April 24, 1996) ment. The licensor of the trademark, which strategy. (“Names of popular musical entertainment and could include the artist, should focus on: 1) recording groups are protected by the Lanham CONCLUSION Act even though that name is not a registered ensuring quality control over the use of the trademark. ‘Usage, not registration, confers the trademark; 2) specifically defining the The rights in an artist’s professional right to a trademark.’”) (citations omitted). rights being licensed; 3) retaining approval name are extremely important. Artists not 61. See Homeowners Group, Inc. v. Home Marketing rights for how and on which products the only promote corporate branding but they Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir. trademark are used; 4) assessing the risk of themselves have become brands. The 1991). inadvertent creation of a franchising agree- artist’s professional name therefore is a 62. 15 U.S.C. §§ 1057(b), 1115(a). ment; 5) licensing the trademark for a short valuable commodity that helps consumers 63. 15 U.S.C. §§ 1057(b), 1115(a). term, in a limited territory, and with a broad identify the artist’s goods and services. It is 64. 15 U.S.C. §§ 1057(b), 1115(a). termination right; 6) including a provision imperative that an artist develop a strong 65. 15 U.S.C. § 1072. allowing the licensor to terminate the trademark strategy, which includes clearing 66. 15 U.S.C. §§ 1057(b), 1115(a). agreement if the licensee has not reached his, her, or its professional name before 67. Additionally, unlike common law marks, if the certain sales goals; 7) including a offering goods or services under that name, artist intends to use a name in commerce but has “licensee estoppel” provision that prevents and protecting the name once it is used in not done so, the artist may apply for trademark registration based on that intent, and receive the licensee from challenging or interfering commerce. While it may seem like an priority over any subsequent users. 15 U.S.C. § with the licensor’s rights to use and/or reg- expensive proposition during the start-up 1051(b).

INTELLECTUAL PROPERTY TODAY APRIL, 2007 37 68. Nevertheless, each case involves its own partic- at http://www.allmusic.com/cg/amg.dll?p=amg 96. If there is a conflict, the label may force the ular facts, and overgeneralization is always risky. & sql=11:7kd5vwpva9yk. artist to change the name prior to the release of 69. See Circuit City Stores, Inc. v. Carmax, Inc., 88. Teenage rap artist Alijaray Gaston went by the any recordings or merchandise. See Champagne (165 F.3d 1047, 1054 (6th Cir. 1999) (the use of name “Fat Al” until Bill Cosby stepped in, citing v. DiBlasi, 134 F. Supp. 2d 310 (E.D.N.Y. 2001) a mark must be “deliberate and continuous, not the Cosby-created character Fat Albert. Gaston’s (the record company stated that the group had to sporadic, causal, or transitory.”). For an artist, it record label, Atlantic Records, attempted to set- obtain trademark rights in its name or else the is important to use the name throughout the tle with Cosby, but ultimately changed Gaston’s group would have to change its name to one that could receive trademark protection; here, United States; it is possible that an artist will use performing name to “Al Fatz.” Teen rapper fights because their name potentially violated a third a name in one region of the United States, while over ‘Fat’ with Bill Cosby, REUTERS, November party’s rights, the group dropped it). An artist another artist will use the same name in a differ- 13, 2006. ent region. The artist that first uses the name should be careful, however, to not assign the 89. See Rodrigo Perez, Death From Above 1979, ownership rights in the name to the record com- nationally will be able to claim national trade- MTV.COM, available at http://www.mtv.com/ pany. Rather, the artist should grant a non-exclu- mark rights. news/yhif/death_from_above_1979/; Dave sive license to the record company to use the 70. See Stetson v. Howard D. Wolf & Assocs., 955 Morris, review of You’re a Woman, I’m a name for marketing purposes for any recordings F.2d 847, 851 (2d Cir. 1992). Machine by DEATH FROM ABOVE 1979, made under the contract. SEATTLE WEEKLY, January 5, 2005, available at 71. It is possible that an artist not taking these 97. A violation of the artist’s representations and http://www.seattleweekly.com/music/0501/0501 actions may be deemed to have “abandoned” the warranties could lead to termination of the con- 05_music_cdreviews.php (noting that the group mark to the public domain. See Densmore v. tract by the record company or an indemnifica- Manzarek, Case Nos. BC 289730 and BC inserted the “1979” into their name following a tion of the record company by the artist if a third 294495 at 39 (Cal. Super. Ct. July 21, 2005) cease and desist letter from the DEATH FROM party brings a claim. (finding that THE DOORS was not abandoned ABOVE record label). 98. See Mears v. Montgomery, 2006 WL 1084347 as a mark as the sale and air play of the group’s 90. See biography of THE VERVE at VH1.com, (S.D.N.Y. April 24, 2006) (citing Stetson v. music has been continuous over the years); available at http://www.vh1.com/artists/az/verve/ Howard D. Wolf & Assocs., 955 F.2d 847, 852 Kingsmen v. K-Tel Intern. Ltd., 557 F. Supp. bio.jhtml (explaining the name change due to a (2d Cir. 1992), Marshak v. Sheppard, 666 F. 178, 183 (S.D.N.Y. 1983). lawsuit filed by the American jazz label Supp. 590, 600 (S.D.N.Y. 1987), and Rare 72. See USPTO Trademark Reg. No. 2212548. VERVE). Earth, Inc. v. Hoorelbeke, 401 F. Supp. 26 73. See USPTO Trademark Reg. No. 1916938. 91. See Stuart v. Collins, 489 F. Supp. 827 (S.D.N.Y. (S.D.N.Y. 1975)); Bagdasarian Productions v. 1980) (Bootsy Collins and Warner Brothers Audiofidelity Enters., Inc., 1984 WL 1565 (D. 74. See USPTO Trademark Reg. No. 2698988. Records were found to have willfully infringed N.J. October 3, 1984) (records by “The Happy 75. See USPTO Trademark Reg. No. 2697128. an artist’s mark after the artist informed them Chipmunks” violated the common law and reg- 76. See USPTO Trademark Reg. No. 3128896. that his registered mark THE RUBBERBAND istered marks of THE CHIPMUNKS); Kingsmen v. K-Tel Intern. Ltd., 557 F. Supp. 178 (S.D.N.Y. 77. See USPTO Trademark Reg. No. 1908209. had priority trademark rights over BOOTSY COLLINS’ RUBBER BAND.). 1983); Stuart v. Collins, 489 F. Supp. 827 78. See USPTO Trademark Reg. No. 2785724. (S.D.N.Y. 1980). 92. See Supernova from Cynot3, LLC v. Mark 79. See USPTO Trademark Reg. No. 2825378. Burnett Productions, Inc., Civ. No. 06CV1334 99. In the Matter of Atlantic Recording Corp. et al., 80. See USPTO Trademark Reg. No. 1051174. JAH (RBB) (S.D. Cal. Sept. 12, 2006) (granting 747 N.Y.S. 2d 889, 890 (N.Y. Sup. Ct. 2002). 81. See USPTO Trademark Reg. No. 1128762. preliminary injunction on behalf of plaintiff 100. See Rodgers v. Anderson, 2005 WL 950021 based on its unregistered mark SUPERNOVA for (S.D.N.Y. April 26, 2005) (awarding plaintiff, 82. See USPTO Trademark Reg. No. 2811089. a band); Judge orders made-for-TV band to the founder of and owner of the registered mark 83. See USPTO Trademark Reg. No. 1469618. change name, REUTERS, September 14, 2006; CHIC, $250,000 for the willful infringement of 84. See, e.g., Kaufhold v. Yeomans, Opposition No. Jonathan Cohen, Trademark Dispute Settled the mark by defendants, former backup singers 91160771 (Trademark Tr. & App. Board Over Supernova Name, BILLBOARD, September of CHIC who were performing as “Chic”). September 26, 2006) (Once Opposer demon- 21, 2006. Trademark rights in artist’s names are valuable strated priority of use, the TTAB sustained an 93. Ben Sisario, Postal Service Tale: Indie Rock, enough that an artist may buy out another artist’s opposition of the application for the service Snail Mail, and Trademark Law, N.Y. TIMES, rights in a name in order to own such name. See mark THE UNDEAD for live performances by a Nov. 6, 2004, A1. Tradem Inc. v. Stainbrook, 2004 WL 1047956 punk rock band based on Opposer’s common (S.D.N.Y. May 10, 2004) (discussing the assign- 94. See David Barnett, SUEDE: LOVE AND POISON, law mark THE UNDEAD for live performances ment of an individual artist’s registered mark at 143, Andre Deutsche Ltd. 2003 (attributing by a punk rock band); Robert Craig “Evel” THE STAIN to the group STAIND for $18,000; the group’s lack of success in breaking America Knievel v. Kayne West, et al, Case No. 06cv STAIND in turn licensed THE STAIN back to to the lawsuit filed by jazz-folk singer Suzanne 02269, (M.D. Fla. December 11, 2006) (“Evel” the individual for use with his performances in deBronkart, who performed as SUEDE, and the Knievel, who owns the trademark EVEL the Ohio area); Colleen Long, Singer Black group’s resultant name change to THE LON- KNIEVEL, sued rap star Kanye West over Owns His Own Name, Court Rules, ASSOCIATED DON SUEDE); USPTO Trademark Reg. No. West’s “Touch the Sky” video in which West PRESS, December 7, 2006 (members of the 1824688 (the mark SUEDE owned by Suzanne takes on the persona of “Evel Kaynevel” and group JAY AND THE AMERICANS purchased deBronkart for entertainment services); “The mimic’s Knieval’s daredevil act). the group name from former lead singer Jay Charlatans U.K.” biography at VH1.com, Black in a bankruptcy auction for $100,000; 85. See Chris Riemenschneider, Rock band hits available at http://www.vh1.com/artists/az/ “lawyers for the bankruptcy trustee handling the hurdle with ‘Olympic’ name, STAR TRIBUNE, charlatans_uk/bio.jhtml (noting that one the eve case considered the band name a valuable July 28, 2005 (noting DINOSAUR JR.’s name of the group’s first American tour, it had to asset”). change due to a trademark dispute with another change its name to THE CHARLATANS U.K. 101. USPTO Trademark Manual of Examining group). because a San Franciscan garage rock group Procedure § 1207.01(a)(v); see Sullivan v. CBS from the 1960’s were already called THE 86. See Id. (discussing the ownership of the word Corp., 385 F.3d 772, 776-777 (7th Cir. 2004) CHARLATANS); Riemenschneider, supra note OLYMPIC by the U.S. Olympic Committee, (the group SURVIVOR is entitled to strong pro- 70 (noting THE CHARLATANS’ name change which forced THE HOPEFULS to drop the tection against other musical group names, but “Olympic” portion of their name; ironically, the due to a trademark dispute with another group there is no presumption that the mark is equally band was originally going to call itself with the same name). strong outside that realm; therefore, the televi- CAMARO, but changed their minds due to 95. A magazine article is relevant when showing the sion show “Survivor” did not infringe on the potential trademark issues). first use of a mark if there were two groups band’s trademark rights for musical services); 87. See Donald Passman, ALL YOU NEED TO KNOW claiming that they made the first commercial use CPG Products Corp. v. Perceptual Play, Inc., 221 ABOUT THE MUSIC BUSINESS, at 318; biography of the mark. See Far Out Productions, Inc. v. USPQ 88 (TTAB 1983) (The test is whether pur- of GREEN JELLY at All Music Guide, available Oskar, 247 F.3d 986 (9th Cir. 2001). chasers would believe the product or service is

38 INTELLECTUAL PROPERTY TODAY APRIL, 2007 within the registrant’s logical zone of expan- owner controls the nature and quality of the Enters., Ltd. v. Deep Purple Inc., 213 U.S.P.Q. sion). goods. Rick, 609 F. Supp. at 1522; In re Polar 991 (DEEP PURPLE); Giammarese v. Delfino, 102. This secondary meaning can be established by Music Intern. AB, 714 F.2d 1567 (Fed. Cir. 197 U.S.P.Q. 162 (N.D. Ill. 1977) (THE the success of the artist, such as by the number 1983). BUCKINGHAMS); Cash v. Brooks, 1996 WL of record albums sold and merchandise sold on 107. See Rick v. Buchansky, 609 F. Supp. 1522 6844447 (E.D. Tenn. April 24, 1996) (THE the artist’s behalf. Winterland Concessions Co. (S.D.N.Y. 1985); Stetson v. Howard D. Wolf IMPRESSIONS). v. Macintosh, 1992 WL 170897 (E.D. Pa. July Associates, 955 F.2d 847 (2d Cir. 1992) (holding 116. 2 MCCARTHY ON TRADEMARKS AND UNFAIR 14, 1992); Gore v. Does, 1998 WL 778374 that because the manager “used” and did not COMPETITION § 10:40 (4th Ed. 2006). Section (S.D.N.Y. Nov. 6, 1998). abandon the mark THE DIAMONDS, his suc- 45 of the Lanham act provides that a mark can 103. See supra note 35 (discussing Nike’s use of cessor in interest could enjoin former group be considered abandoned: “When its use has MINOR THREAT’s name and album cover art to members’ new group under the same name). been discontinued with intent not to resume promote Nike’s Major Threat skateboarding 108. See In the Matter of Atlantic Recording Corp. et such use. Intent not to resume may be inferred tour). al., 747 N.Y.S.2d 889, 890 (N.Y. Sup. Ct. 2002). from circumstances. Non use for three consecu- tive years shall be prima-facie abandonment.” 104. See Cash v. Brooks, 1996 WL 6844447 (E.D. 109. Rick v. Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 15 U.S.C. § 1127. The Second Circuit Court of Tenn. April 24, 1996) (finding likelihood of con- 1985); but see Bell v. Streetwise Records Ltd., Appeals has held that “to prevail on a claim that fusion for former group members performing 761 F.2d 67 (1st Cir. 1985) (determining that a trademark has been abandoned, the party under the name THE IMPRESSIONS when the although the individual members of “New claiming abandonment must show (1) non-use public identifies the original group as THE Edition” did not have trademark rights in the by the owner of the trademark or trade name and IMPRESSIONS); Kaufhold v. Yeomans, group name for phonorecords, as they did not (2) the intent by the owner not to resume using Opposition No. 91160771 (Trademark Tr. & market phonorecords under that name until the the name or the mark.” Mears v, Montgomery, App. Board September 26, 2006) (artist per- producer employed the individual members, the 2006 WL 1084347 at *8 (S.D.N.Y. April 24, forming under the common law mark THE members, both individually and collectively, had 2006) citing Silverman v. CBS Inc., 870 F.2d 40, UNDEAD successfully opposed another artist service mark rights in the group’s name for the 50 (2d Cir. 1989) (also noting that two years of using the name THE UNDEAD); Winterland field of live musical entertainment). Concessions Co. v. Macintosh, 1992 WL 170897 non-use of a trade name by its legal owner cre- 110. In the Matter of Atlantic Recording Corp. et al. (E.D. Pa. July 14, 1992) (bootleg merchandis- ates a “rebuttable presumption of abandon- at 891 (although the contract at issue explicitly ers); Gore v. Does, 1998 WL 778374 (S.D.N.Y. ment.”). Nov. 6, 1998) (bootleg merchandisers); gave the producer of the concept group “Dream 117. See Kingsmen v. K-Tel Int’l, Ltd., 557 F. Supp. Polygram Merchandising, Inc. v. New York Street” the ownership of the trademark and trade 178 (S.D.N.Y. 1983) (a group that ceased Wholesale Co., 2000 WL 23287 (S.D.N.Y. Jan. name, the court also noted that the producer recording and disbanded in 1967 did not aban- 13, 2000) (bootleg merchandisers); Virgin spent over $2 million to create, produce, and don rights in the group name; the court found Enters. Ltd. v. David Defeis, 2000 WL 1720144 promote the group); Rick v. Buchansky, 609 F. that the continued use of the name to promote (Trademark Tr. & App. Bd. October 26, 2000) Supp. 1522 (S.D.N.Y. 1985) (finding that the the sale of previous recordings and the receipt of (owner of the VIRGIN, VIRGIN RECORDS, and manager of “Vito and the Salutations” was enti- royalties from those sales negates any inference VIRGIN MEGASTORE marks successfully tled to an injunction against the use of the name of an intent to abandon the group name); opposed a musician applying for the trademark by former members of the group; the manager Densmore v. Manzarek, Case Nos. BC 289730 VIRGIN STEELE for sound recordings, cloth- was the owner of the name since he “exerted and BC 294495 (Cal. Super. Ct. July 21, 2005) ing, and musical entertainment); BMG Special influence over the style and content of the (finding that the name THE DOORS had not Products, Inc. v. David Anthony Jagosz, 2003 group’s act” and “functioned much like the pro- been abandoned since both the sale of the WL 22477869 (Trademark Tr. & App. Bd. ducer of a theater company or owner of a sports band’s music and air play of their music has October 30, 2003) (owner of the marks BUDDA team” where various performers played the parts been continuous over the years); Supernova from and BUDDAH for a record label successfully and positions). Cynot3, LLC v. Mark Burnett Productions, Inc., opposed a musician applying for the trademark 111. Peter Newcomb, It’s Slippery at the Top, Civ. No. 06CV1334 JAH (RBB) (S.D. Cal. Sept. YOU DA BUDDA for sound recordings and FORBES, September 30, 1991; see The New 12, 2006) (although the band SUPERNOVA was entertainment services). Kids on the Block v. News America Publishing, not currently touring, the band did not abandon 105. Artists should actually purchase a domain name Inc., 971 F.2d 302, 304 (9th Cir. 1992) (“there its name). rather than just relying on a MySpace.com page are more than 500 products or services bearing 118. Robi v. Reed, 173 F.3d 736, 739 (9th Cir. 1999) even if they do not have an associated website the NEW KIDS trademark”). (when member left the group THE PLATTERS, yet. The artist could always redirect viewers of 112. Ayala Ben-Yahuda, Epic to Sign Menudo; MTV he took no rights to the service mark with him; the domain to the artist’s MySpace.com page. Plans Reality Show, BILLBOARD, October 13, rather, the rights remained with the original Solely having a MySpace.com page for the 2006 (over the years, MENUDO became “an group); HEC Enters., Ltd., 213 U.S.P.Q. at 994 artist’s web address may be problematic, as instantly recognizable mainstream brand”). This (C.D. Cal. 1980) (former member of DEEP PUR- MySpace.com itself owns all of the MySpace deal gives Epic a cut of MENUDO by-products PLE and his new group were prohibited from urls. For example, the Louisiana-based rock such as touring, merchandising, ringtones, a car- performing under the name DEEP PURPLE band BONES temporarily lost their toon series, and other branded revenue streams. when members of the original group, with cer- MySpace.com url (www.myspace.com/bones) Id. tain replacement members, continued to use the when MySpace.com’s corporate partner Fox 113. David Lieberman, ‘American Idol’ Zooms From name, which had acquired common law trade- wanted the url for its television show Bones. Hit Show to Massive Business, USA TODAY, mark rights in the United States). Courts have Luckily for the band, they were able to retain the March 29, 2005, available at http://www.usato- also found that the departing group member does url after the issue was sorted out. Band Loses, day.com/life/television/news/2005-03-29- not have rights to the group’s name just by virtue Regains MySpace URL, FMQB.com, November media-usat_x.htm; David Lieberman, ‘American of the member’s tenure with the group. See 7, 2006, at www.fmqb.com/Article.asp?t= Idol’ Backers Nervously Wait In The Wings, Densmore v. Manzarek, Case Nos. BC 289730 p&id=301843. USA TODAY, January 16, 2006, available at and BC 294495 (Cal. Super. Ct. July 21, 2005) 106. See Rick v. Buchansky, 609 F. Supp. 1522 http://www.usatoday.com/money/media/2006- (holding that two of the original members of (S.D.N.Y. 1985); see also Blackwood v. R.W. 01-16-usat_xhtm?csp+34. THE DOORS could not perform under the name Blackwood, 2005 WL 2096857 (E.D. Tenn. Aug. THE DOORS or THE DOORS OF THE 21ST 30, 2005) (noting that the person or entity that 114. Claire Atkinson, “Idol” Juggernaut Passes CENTURY without the consent of all of the orig- maintains control over a musical group is the $2.5 Billion in Value; Keeps Expanding, inal members); Gallina v. Giacalone, 1996 WL person or entity that owns the trademark rights ADAGE.COM, January 8, 2007 (stating that 735353 at *3 (N.Y. Sup. Ct. Dec. 9, 1996) (hold- in the name). Registering the name of an artist AMERICAN IDOL is “vying for the title of the ing that musicians that performed with the group for sound recordings is only allowed where: 1) most lucrative multimedia property of all time”). only once unfairly capitalized on the work by the the mark is used on a series of sound recordings 115. See e.g., Marshak v. Sheppard, 666 F. Supp. 590 founding members by continuing to perform (at least two different recordings); and 2) the (S.D.N.Y. 1987) (THE DRIFTERS); HEC under the group’s name); HEC Enters. Ltd., 213

INTELLECTUAL PROPERTY TODAY APRIL, 2007 39 U.S.P.Q. at 992 (original member of the group Williamson, 223 U.S.P.Q. 1116 (E.D. Pa. 1984); arbitrary, or fanciful marks that are judged with DEEP PURPLE prohibited from using DEEP Midler v. Ford Motor Co., 849 F.2d 460 (1988); a higher level of inherent distinctiveness. Id. PURPLE as the name of his new group); Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. 132. See supra “Choosing and Clearing the Artist’s Giammarese v. Delfino, 197 U.S.P.Q. 162, 162- Supp. 826 (S.D.N.Y. 1990); White v. Samsung Name” and related notes. Note, an artist should 164 (N.D. Ill. 1977) (holding that while the Electronics, 971 F.2d 1395 (9th Cir. 1992); also not choose a name that could potentially departing group member was a founding member Apple Corps Ltd. v. Button Master, 47 violate the rights of publicity of another person, of the group THE BUCKINGHAMS, his unau- U.S.P.Q.2d 1236 (E.D. Pa. 1998). regardless of whether that person is in the music thorized creation of the group NU-BUCKING- industry or not. See supra “Rights of Publicity HAMS was trademark infringement). 125. Apple Corps Ltd. v. A.D.P.R., Inc., 843 F. Supp. 342 (M.D. Tenn. 1993) (use of THE BEATLES Under State Law” and related notes. 119. See Kassbaum v. Steppenwolf Prods., Inc., 236 and JOHN, PAUL, GEORGE, and RINGO in a 133. The database is available at http:// F.3d 487 (9th Cir. 2000) (these are truthful state- commercial context was found to violate www.uspto.gov/main/trademarks.htm. While not ments and confusion is unlikely); Kingsmen, Tennessee’s Personal Rights Protection Act); an exhaustive resource, this database is useful 557 F. Supp. 178 (a proper usage would be the Apple Corps Ltd. v. Button Master, 47 for preliminary searches. lead singer’s name with “formerly of the U.S.P.Q.2d 1236 (E.D. Pa. 1998) (group name Kingsmen” or “Jack Ely, lead singer on the orig- 134. To determine whether a name is clear for trade- inal Kingsmen recording of Louie Louie.”); THE BEATLES as well as the individual mem- mark use, the artist will want to evaluate the Brother Records, Inc. v. Jardine, 318 F.3d 900, bers’ names and likenesses were protected by search results using the multifactor test for the 901 (9th Cir. 2003) (former member of THE Pennsylvania’s common law right of publicity). likelihood of confusion. See Polaroid Corp. v. BEACH BOYS could not use the group’s name 126. Apple Corps Ltd. v. A.D.P.R., at 348 (“the stage Polarad Elec. Corp., 287 F.2d 495 (2d Cir. for his performances, but was allowed to refer to name of a group of individuals is entitled to the 1961); AMF, Inc. v. Sleekcraft Boats, 599 F.2d his past membership in the group); Grondin v. same protection as the name of one of the indi- 341 (9th Cir. 1979). Because trademark law is a Rossington, 690 F. Supp. 200 (S.D.N.Y. 1988) viduals which compose that group”). highly specialized field that unfortunately does (defendant former group member was required Additionally, musical groups as well as the indi- not lend itself to black or white answers, it will to affix a label on his CDs and cassettes stating vidual performers have protectible rights of pub- be useful for an artist to consult an attorney to that “this is a recording of a new band recorded licity. Apple Corps Ltd. v. Button Master, 47 interpret the search results. in 1987 and not the original Lynyrd Skynyrd U.S.P.Q.2d 1236 (E.D. Pa. 1998). 135. Thomson CompuMark (http://www.thomson- group”); see also Cleopatra Records v. William 127. Cuomo v. Miller Brewing Company, et al., Case thomson.com) and CT Corsearch (http:// Bruce Bailey, Case No. CV 04-3120 GAF (C.D. No. 8C359544 (Cal. Superior Ct., Sept. 29, www.ctcorsearch.com) are two such vendors that Cal. July 6, 2004) (finding that the use of the 2006). offer comprehensive trademark and entertain- name GUNS ‘N ROSES for an album of record- ment availability reports. The search reports can ings by a predecessor band entitled “Hollywood 128. Browne v. Bloomingdale’s, Case No. 06cv7877 range from $500 to close to $1500 depending on Rose: The Roots of Guns ‘N Roses” was a nom- (C.D. Cal. December 12, 2006) (according to the the type of search performed and the turnaround inative fair use of the GUNS ‘N ROSES trade- lawsuit, the t-shirts bear the name JACKSON time. mark). BROWNE in large letters across the top of the 136. The owner of a trademark is the entity that con- shirt, with a large photograph of the singer play- 120. See e.g., Brother Records, Inc. v. Jardine, 318 trols the quality of the goods or services under ing an acoustic guitar in front of a microphone). F.3d 900, 901 (9th Cir. 2003) (the members of the trademark. Therefore the owner for the THE BEACH BOYS incorporated Brother 129. See Hanson, supra note 51 (noting that alterna- application can be an individual artist, a part- Records, Inc. to hold and administer the intel- tive rocker LIZ PHAIR appeared on Calvin nership among group members, or the corporate lectual property rights of THE BEACH BOYS, Klein billboards and alternative band EVER- entity that was created to hold the intellectual including the group’s trademark rights). LAST appeared in magazine ads for Avirex property rights of the group. See supra 121. Of course, a group should think about whether clothing). “Dissolution and/o Membership Changes” and they want other group members to prevent 130. See Winterland Concessions Co. v. Macintosh, related notes. another group member to use the name outside 1992 WL 170897 at *10 (E.D. Pa. July 14, 137. The cost to file a trademark application with the of the group. For example, John Densmore of 1992) (licensee of numerous artists’ names and USPTO is $325 per class of goods or services if THE DOORS has successfully sued his other likenesses, as well as their trademarks, for mer- the applicant uses the electronic-based TEAS band members for performing under the name chandise was able to obtain a default judgment system. A $275 application is available if the THE DOORS, and even though the band has against a bootleg merchandiser for violations of artist has the ability to use the TEAS Plus sys- officially broken up, the band members that still the right of publicity and trademark law); Apple tem. want to perform together are restrained from Corps Ltd. v. Button Master, 47 U.S.P.Q.2d 1236 138. Maintaining a trademark registration includes doing so. Densmore v. Manzarek, Case Nos. BC (E.D. Pa. 1998) (granting summary judgment for filing an affidavit of continuing use with a spec- 289730 and BC 294495 (Cal. Super. Ct. July 21, plaintiff’s trademark and right of publicity imen of current use during the sixth year of use 2005). claims after finding the use of THE BEATLES of the mark. 15 U.S.C. § 1058. Additionally, the 122. See Winterland Concessions Co. v. Macintosh, and the group members’ individual names for artist who receives a trademark registration after 1992 WL 170897 (E.D. Pa. Jul 14, 1992) (“each commercial purposes violated the Lanham Act November 16, 1989 will need to file an applica- licensor musical group has a sole right to control and Pennsylvania’s right of publicity law); Apple tion for renewal with proof of continued use the commercial exploitation of the name and/or Corps Ltd. v. A.D.P.R., 843 F. Supp. at 349 within the last six months of tenth year of use of likeness of the group, including their uses on T- (holding that a lookalike cover band misappro- the mark. 15 U.S.C. § 1059. Of course, as men- shirts and jerseys”) citing Zacchini v. Scripps- priated the names and likenesses of THE BEA- tioned previously, trademark protection in the Howard Broadcasting Company, 433 U.S. 562 TLES); Robert Craig “Evel” Knievel v. Kayne United States is based on use of the mark in (1977). In Zacchini, the Supreme Court recog- West, et al, Case No. 06cv 02269 (M.D. Fla. commerce, so even if an artist’s registration for nized the authority of states to protect entertain- December 11, 2006) (EVEL KNIEVEL brought its professional name is cancelled, the artist may ers’ “right of publicity.” 433 U.S. at 573, trademark infringement and right of publicity still have trademark rights in its name based on 576-78. claims against rap star KAYNE WEST for West’s the use in commerce. 123. Generally, trademarks and service marks iden- “Touch the Sky” video, in which West takes on 139. See, e.g., Barcamerica Int’l USA Trust v. Tyfield tify a source of the good or service under that the persona of “Evel Kaynevel”). Imps., Inc., 289 F.3d 589 (9th Cir. 2002). mark, something that a person’t publicity attrib- 131. See Abercrombie & Fitch, Co. v. Hunting World, 140. See N.Y. Civ. Rts. Law §§ 50-51; Caesar v. utes may not necessarily do. Inc., 537 F.2d 4 (2d Cir. 1976). The strength of Chemical Bank, 496 N.Y.S.2d 418 (1985) 124. N.Y. Civ. Rts. Law §§ 50-51; Cal. Civ. Code § a trademark is evaluated along a sliding scale of (statute violated where employees orally con- 3344; see also Cher v. Forum Int’l, 692 F.2d 634 distinctiveness, from generic or descriptive sented and posed for photograph exhibited at (9th Cir. 1982); Washington v. Brown & marks that are considered weak, to suggestive, trade show).

40 INTELLECTUAL PROPERTY TODAY APRIL, 2007