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How Do I Protect the Name of My Band?
by
Michael McCready
Attorney at Law
The two key concepts involved in "protecting" the name of a
band are "territory" and "priority". Territory means the area where
you use the name, e.g., Chicago, Illinois, Mid-West, United States, world-wide, etc.
Priority, as the word implies, involves who uses the name first. These two concepts
work together to limit the scope of protection for a name.
If you started using your name first, you can prevent others from using it. However,
the law allows you exclusive use of the name only in the area where you have used it.
For example, if you started playing the Chicagoland area in 1989 and never played or
distributed music outside the Chicagoland area, you could not prevent a band from
using the name in Florida. However, they could not use the band name in Chicagoland
since you were the first to use the band name there. You also may acquire the rights
to your name for Chicago in 1989 and nation-wide in 1992 when you release your first
record for a major. If someone started using your name in another part of the
country in 1990, you could not prevent their use in their territory since they have
priority in that area.
A famous case involved two bands both performing under the name, "Flash." The
first was a small band in San Francisco who had never recorded a record and the
second was an English band who had a major label deal. Since the San Francisco
"Flash" was a prior user in that area, the English "Flash" was not allowed to sell
albums in the Bay area.
Before investing money in the name of your band, you should investigate whether
anyone else is already using the name. If someone is already using your name, as
explained above, they have priority in their territory. A good place to start is
BMI and ASCAP. Both of these organizations will do a search of their
rosters for conflicting names. You may also check Phonolog which is a list
of albums and can be found at many record stores. Also check out the annual
Billboard International Talent & Touring Directory. There are also
many resources at libraries in large metropolitan areas. The librarians will also
assist you in doing a trademark search of state and federal trademarks. The final
place you may consider searching is the Secretary of State of California and New York.
Since these are the two largest "entertainment" states, they can be helpful as well.
The Secretary of State can tell you if they have any businesses registered under the
proposed name. You can never be guaranteed that no one is using your name somewhere,
but these avenues are a good place to start.
After checking the availability of your name, you should take steps to protect that
name. As stated above, priority of use in a specific territory is the key to
protecting a name. Keep careful records of your public use of the name. Record
where and when you played or sold records, and any publicity so as to prove what
territory you have used the name in and for how long. As for legal protection, there
are a few routes you can take.
You cannot copyright a band name. The correct legal protection is a trademark.
Within trademark law there is a category called servicemarks. A trademark identifies a
product while a servicemark identifies a service. Since a band is in the business of
providing entertainment services, a servicemark is the proper tool to protect the
name of a band.
The amount of protection you want for the band directly reflects the amount of money
it will cost you. The least expensive route is a state trademark. Fees vary from
state to state, but they are generally under $100. A state trademark gives you
protection throughout the state you register. You can get the application by calling
the Secretary of State. If you don't have a record contract or don't tour
nationwide, I recommend a state trademark to start.
The next step is a federal trademark. A federal trademark gives you rights throughout
the entire United States. The application fee for a federal trademark is presently
$245. If
your music is distributed throughout the United States or you do extensive touring,
you may want to obtain a federal trademark. These forms can be obtained by calling
(703) 557-4636.
Since the entertainment industry is now world-wide, there are 175 countries that allow
the registration of trademarks and 60 which allow the registration of entertainment
servicemarks. Even if you focus on the five or so most important jurisdictions,
(Great Britain, Canada, Germany, Mexico and France), you are still talking a great
deal of money for trademark protection on a worldwide basis.
Finally, the "®" symbol: what does it mean? Unlike the copyright symbol, "©" (which
anyone can use whether their work is registered with the Copyright Office or not), the
trademark symbol, "®", can only be used if you have a federally registered trademark.
By
using the "®" symbol, you put everyone on notice that you own the trademark and anyone
using it would be a wilful infringer. There is also a "TM" symbol used occasionally.
This has no legal definition or significance, but is generally used to claim
ownership of an unregistered trademark.
In conclusion, when starting a band, you should: first, research the proposed name for
conflicting uses; second, document the dates and territory where you use the band name;
third, take steps to protect the name through servicemarks.
Michael McCready
represents clients in all areas of the music industry including
music, radio,
television,
stage, and book publishing. His music law practice includes
representing bands, record
labels, production companies, recording studios, promoters, and
music publishers.
His work includes copyrights, analyzing and drafting contracts,
trademarks,
publishing,
and litigation.
Michael McCready
Attorney at Law
1900 Chicago Road
Chicago, IL 60411
McCready@music-law.com
(708) 754-6212
Fax: (703) 754-8658
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