Like many entrepreneurs, musicians who collaborate and form a band may not be aware of business issues like forming an entity and taking steps to protect their intellectual property (IP). Given the significance of a band’s name, best practice is to be proactive: search and register the name as a trademark, consider who owns it, decide what happens if the band breaks up, and agree whether band members can use it when they perform apart from the full band. Read on for practical tips on how to avoid headaches down the road.
Search and Register the Mark – and Renew It!
Before adopting a band name, consider whether it is a mark that can enforced. Then have a professional search the mark and advise you whether it can be registered and, perhaps more importantly, the risk of infringing someone else’s rights. After that, consider filing a federal trademark registration. See our Trademark FAQs for more information on how to select a strong trademark, trademark searches, and the benefits of federal registration.
Once a registration is issued, it must be properly maintained and renewed. Randy Muller, the founder and leader of “Brass Construction,” learned this the hard way. Although the other band members had agreed that Muller had the sole right to use the mark and he owned the registration, Muller failed to renew it and the registration was cancelled. As a result, the remaining band members were able to register the mark without him. Keep your contact information up to date with the United States Patent and Trademark Office – and your trademark attorney – to avoid these kinds of problems.
Plan Ahead: Form an Entity and Create a Written Agreement
Creating an entity to own the band’s name and intellectual property can simplify ownership battles down the line. When Lionel Richie and two of his former bandmates performed publicly as a “Commodores’ reunion” in 2009, the corporation the band had formed in 1978 moved for a temporary restraining order. In 2018, an appeals court affirmed an order granting a preliminary injunction because the corporation owned the trademark and the original six members of the group had agreed in writing that if a member withdrew from the group, then neither he nor his heirs had rights to make individual use of the band name. The litigation is still ongoing due to questions about the international scope of the injunction following the Supreme Court’s recent decision in Arbitron v Hetronic regarding acts of infringement outside the United States.
A similar issue came up in 2003 when Al Jardine, formerly of The Beach Boys, sought to use the name “The Beach Boys Friends and Family.” The entity the band created, Brother Records, Inc., argued that Jardine’s stage name infringed its existing trademark. Litigation ensued and a federal appeals court ultimately ruled in favor of Brother Records because Jardine had used the mark in a way that suggested sponsorship by the official The Beach Boys group.
Contractual agreements made after a band has become well-known can also be enforced. When Ronnie Van Zant and several members of Lynyrd Skynyrd passed away in a plane crash, the surviving band members entered a so-called “blood oath” with his widow, Judith Grondin, that none of them would use the band name again. A decade later, several members of the band decided to do a tribute tour, led by Ronnie’s younger brother, leading to litigation. In 1988, a New York federal court found the agreement enforceable and granted a limited preliminary injunction requiring the label to affix a sticker to the tour album identifying it as a recently recorded performance of the new band. The parties subsequently agreed to a consent order with restrictions on how the name could be used. In 2017, Grondin sued again, claiming a proposed film about the band and the crash would violate the consent order. A federal district court agreed and entered a permanent injunction prohibiting the film company from making and distributing the film. However, an appeals court vacated the ruling due to lack of specificity.
A little planning can go a long way with band names. Clearing the mark, obtaining a federal registration, forming a business entity, and entering a written agreement between the band members are key steps to consider.
If you have questions or would like to discuss these issues, please feel free to contact us.
Nancy J. Mertzel
Mertzel Law PLLC
1204 Broadway, 4th Floor
New York, NY, 10001