Constructing a successful and sustainable career in the music industry is very similar to building an empire. An artist must establish a home base, gather his strength, and send out efforts until his influence expands – controlling more and more territory and conquering the hearts and minds of more people. However, it is equally important to build strong defenses to protect the assets that the artist’s empire is built upon. Specifically, a musician has to protect himself and his music if he wants to succeed in the music business.
Many different bricks go into building the foundation of a musician’s defenses, such as limiting his liability (LLC), securing his art (copyright), and establishing sources of revenue that announce his existence to the world (royalties and registrations). One of the most important pieces of this protection is the ability to protect the musician’s look and his brand or image. This image includes the musician’s name, both individually and the band’s name, his voice, and even the way he dresses on stage. Such protection is accomplished through a trademark.
What is a Trademark?
Under United States law, a trademark is a word, symbol, or device, used in commerce, which identifies the source of a good or service. As previously mentioned, this word, symbol, or device, can be your name, a logo, of even a particular look or display that is uniquely you own – i.e. your identifier. Most often this identifier is a musician’s band name and logo. When people see the identifier associated with a song or painting, they know exactly who made that particular piece of art. However, it is not enough to just think of a clever name or logo, but a musician must actually publically that name or logo it in a commercial manner before any trademark rights exist. This “use” can be playing a live gig under the band name or offering merchandise with the name and/or logo on it for sale. The band name is known as a service mark and the logo can be protected by both trademark and copyright law.
Much like copyrights, trademarks do not necessarily require registration. Trademark rights are established the first time the name or logo is used to sell something – the commercial use. Using “TM” next to the name or logo indicates that someone is claiming the trademark rights in an identifier but has not yet registered the trademark with the government. Once a band name or logo is registered with the government, the artist can use ® next to the name or logo. Notably, registering your trademark has several benefits: 1.) it announces to the world that someone has a right to that particular name or logo; 2.) it establishes a specific date when you acquired the rights in that name or logo; and 3.) it allows you to recover money and other remedies that are not always available without registration, such as filing a lawsuit in Federal Court. Often, just the threat of a lawsuit is enough to deter other bands from using your name or logo.
What is the Point of Trademarks?
Now, you should have an idea of what a trademark is, but the importance of a trademark is where things get interesting. If you hold a trademark in a name or logo, no one else can use that name or logo, with very few exceptions. Also, a trademark is a piece of property (intellectual property to be precise) that can be owned, bought, sold, or licensed. Musicians can even sell or rent the right to use their trademark for a specific geographic area. However, the place to start is choosing a name or logo that is not already owned by someone else.
For instance, a newly organized St. Louis rock band wants to pick a strong name that tells the public they love rock and Greek mythology. The group quickly picks “Minotaur.” However, before printing flyers, starting a website, or getting any new tattoos, the band realizes they need to make sure that no one else has a trademark in the name “Minotaur.” Otherwise, they run the risk of infringing that person’s trademark rights and open themselves up to a major lawsuit. The first place they check is the United States Patent and Trademark Office (www.uspto.gov), which reveals 30 different registered trademark records for the word “minotaur.” These registrations range from upholstery companies to engine parts. Next, the group checks Google (www.google.com), performing rights organizations (www.ascap.com – www.bmi.com), internet domains (www.internic.net), and any other source they can find where bands would list themselves.
Since there are so many people using the name “Minotaur,” the band consults with an entertainment attorney who helps them perform a comprehensive search and analyzes the options. He stresses that a band name cannot infringe another trademark but it also cannot infringe someone else’s copyrights. After careful review, the group decides to use “Minotaur” in a stylized format to make them stand out. They put the new logo and band name on their website, t-shirts, and file a formal registration with both the State of Missouri and the federal government Now Minotaur should be adequately protected, and the band can rest easy that one else can simply steal their band name without serious repercussions. In order to maintain exclusive rights in that name, Minotaur only needs to keep using the name when they sell their services or merchandise. Notably, if a musician does not use the trademark in commerce for 3 years, he loses his rights in that trademark, as it is considered abandoned.
Obtaining a trademark and using it to protect your music is a fairly simply process. However, much like any other area of music law, spending a little time and effort up front can save an endless amount of headaches and lost profits down the road. Trademark infringement leads to lengthy and expensive litigation, and “I didn’t know I couldn’t do that” is not a defense. If an artist is willing to take the take and put in the effort to understand the laws that affect his craft, then he can successfully build a sold protective wall around his music. Such protection forms the foundation of a long, sustainable career in a very chaotic and constantly changing industry. Everything starts with a song, but you must protect and nurture that song in order for it to grow.
Matthew T. Nagel is an entertainment attorney at Wuestling & James in St. Louis, Missouri and an adjunct professor at Fontbonne University and Washington University School of Law. If you have questions, you can reach him at Nagel@wuestlingandjames.com.
* Articles are primarily educational and do not purport to constitute legal advice. No attorney-client relationship is created between the author and any reader of this article. If you have legal concerns or questions be sure to consult with an attorney licensed to practice in your jurisdiction.
