One of the common questions that artists and bands always ask is, “How can I copyright my music and secure that my band is the only one allowed to use that name?”
How can you ensure that no one else will use your name—your brand?
We decided to ask attorney Cheryl Hodgson a few questions. She has more than 25 years of experience in trademark and copyright legal matters. Cheryl has represented many groups in registering names, and litigated a number of disputes involving ownership of band names. Cheryl also has a blog called “BRANDAIDE.” We hope this interview will give bands a better idea of how to protect their cherished name and brand.
LoudTrax.com Before the Internet, this was already a tricky question. Today, this is even more complicated. How can a band secure that they are the only ones using a particular name?
Hodgson The two most important actions steps are:
1. Reach an agreement as to who owns the name and document it in writing.
2. Register the name in the name of the partnership or business entity which the group forms, or the individual(s) who are to control the name.
Groups fail to register their name, because they feel they cannot afford it in the early stages. Secondly, they do not have a clear agreement has to who is the owner of the name. Both often cause problems down the road.
A few years ago, the founders of the largest Mexican group in America were jailed in Mexico for two months for attempting to perform in Mexico under their own name. A former associate had registered the name in Mexico before they did, and when they fired him, he had them put in the slammer!
A lead singer and writer of a famous Canadian group from the 60’s cannot perform in the U.S., because a former band member registered the name in the U.S. The former member and owner of the name in the U.S. tours regularly now in casinos, but misleads the public because none of the known original members are in the group. The older group members do not want to spend $100,000 or more to fight to get the name back in the U.S.
LoudTrax.com Does having the “.com” mean a band owns that name?
Hodgson NO! A domain is an address for a website on the Internet. Unless the name is used for advertising and marketing of specific goods and services, there are no trademark rights created by registering the domain. A domain will not prevent someone else from registering the band name as a federal trademark with the proper government agency, such as the U.S. Trademark Office.
LoudTrax.com Do you recommend that artists file their band name as a brand with the trademark bureau?
Hodgson Yes, in the U.S., registration is with the U.S. Trademark Office in Washington, D.C. The filing fee is $325 per class, plus legal fees. The classes most relevant to groups are those for recordings, merchandise, and live performance. If cost is a factor, pick one, and choose live performances. In Canada, there is no classification system, so filing the descriptions is a bit easier.
In a case currently pending in Chicago, the indie label registered the group name as its own (after the group had already recorded 5 albums on their own). The group is now distributed by a major label in the U.S.
The indie label registered only for merchandise and recordings, not live performances. The judge issued an injunction allowing the original group to continue to perform, but they cannot sell records or merchandise while the case is pending. I believe the judge is wrong, but until the case is tried, both groups are performing and it is a disaster for their careers.
LoudTrax.com When you file in one country, does that mean it is valid around the world? Should bands register their brand in several territories?
Hodgson The U.S. recognizes “common law” rights based upon use, but majority of the world does not. The first to file is the owner! Even in the U.S., possession is 9/10 of the law. The territory where the group is based and performs is the most important. If a group goes between two countries such as U.S. and Canada, registering in both can be important.
LoudTrax.com This sounds like a lot of work for an indie band to handle. It can also get rather expensive, correct?
Hodgson Expensive guitars are sexier and more fun than legal fees when a group is first starting out. However, protecting the band name is like recording the deed to one’s home. While it can seem expensive, think about the consequences of not doing so. Being locked out of an important territory, or having to pay 100 times the registration cost to get back rights taken by a third party, makes it worth every penny.
An expert can do the job fairly easily and some may work with the group on creating affordable options.
LoudTrax.com What kind of proof can be helpful in proving that you were in fact the first artist to use a certain band name?
Hodgson Advertising for show dates are vital. Keep an archive of early flyers, posters, newspapers, Internet ads for shows, and early invoices for merchandise sales. Albums usually have a clear release date online. It’s amazing how many groups cannot find copies of their recording agreements, or prove much of what they did in the early days, making it difficult to prove rights down the road.
LoudTrax.com If you trademark the band name that does not automatically mean you trademark the band’s logo?
Hodgson Correct. The logo is separate from the words, even if included. If faced between choosing one over the other, always go for the words alone first. Registration of the words alone provides broader protection.
Registration of a copyright for a logo containing great artistic design elements can be an inexpensive alternative to a second registration for the logo. It is less expensive ($35 in the U.S) and any reproduction would violate copyright in the artwork. It is not a substitute for a trademark registration for the name for goods and services pertaining to bands.
LoudTrax.com How about if the band or artist name is your own actual name? Are the rules different?
Hodgson The rules are the same. In either case, in order to register, one must follow proper rules of usage in marketing and promotional materials. The name of the individual should be used in connection with the sale and advertising of specific services. Registration of an individual’s name can be very important because of the Internet. Well known authors’ names get plastered on sites, or in domains, as a sort of “implied endorsement.” A new comer tries to sell their product by using the well known individual’s name to drive traffic to their site. Without a registration, this “policing” becomes more difficult and expensive.
LoudTrax.com What other tips can you give artists who wish to secure their name?
Hodgson Do not underestimate the added psychological value of having a registration in place for either a band or individual.
It is common to see fake ringtone sites with a band’s name, or use of a band or individual’s name as part of an infringing domain. In the case of ringtones, I have seen midi files of popular songs (not the original master), and the publisher ignores it. If the group does not own the master or the song, the only remedy of the group is to assert rights based upon infringement of their name. This is where a registration is invaluable.
In the case of use of the name as part of someone else’s domain, sending a letter with a copy of the registration will often get a cybersquatter to “cough it up” with little or no resistance. When caught with their fingers in the cookie jar, they hand over the cookie.
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You can visit Cheryl's site and blog at http://brandaideblog.com/
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