1 1 aipla firm logo american intellectual property law association registrability of performer names...
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American Intellectual Property Law Association
Registrability of Performer Names
Neil HendersonPartner
Borden Ladner Gervais LLP
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Outline
• Overview • Registrability of Performer Names• Exceptions• Examples of Registrations
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Overview
• Names of Performing Artists are generally registrable as a Trademark– Could register the performer name trademark federally or through a
state registry– Class 9
• audio and visual sound recording, musical sound recordings, CDs…– Class 41
• live musical performances; music production; live music concerts…– Copyright does not protect names, titles, slogans or short phrases– May have both copyright protection and trademark protection for a band
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Registrability of Performer’s Name
• Trademark Act allows for the Trademark of a name as long as certain conditions are met– Not “primarily merely a surname”– Names are frequently registered as “service marks”
i.e. associated with services the person is providing– In some cases, can show that mark is “so distinctive
as to have a secondary meaning”– If actually a person’s name – must have the consent
of that person
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Trademark Act section wording
• Under §2(e)(4) of the Trademark Act– No trademark by which the goods of the applicant
may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
• e)Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,
• (4) is primarily merely a surname, or
• §2(f) provides for an exception when the mark has become distinctive
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Registrability of a Performer’s Name
• Guidelines described by the court for Performer’s Names– Names of performers may only be registered if the mark is used on a
series of sound recordings– Applicant must provide evidence to at least two different recordings in
the series– May need to inquire about applicant’s control over the nature and
quality of goods– "just showing the name of the recording group on a record will not by
itself enable that name to be registered as a trademark. Where, however, the owner of the mark controls the quality of the goods, and where the name of that recording group has been used numerous times on different records and has therefore come to represent an assurance of quality to the public, the name may be registered as a trademark since it functions as one.“
• In re Polar Music International AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983),
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Who owns the mark
• Who owns the marks– Self-chosen names are normally the property of the
original group (subject to contractual considerations)– Imposed names
• A name chosen by a record company after a recording has been released under the group’s original name
• Group or artist may own rights in both original and imposed name – depending on contract – because consumer recognition and goodwill attach to the mark
– Concept group – mark may be owned by a third party (performers are employees)
• The Monkees, Backstreet Boys, New Kids on the Block, Menudo, Spice Girls
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Protection
• Avoiding consumer confusion– As far back as 1897 – the court held that a musical’s group’s
name rests on the personal reputation of the original performers
• Messer v. The Fadettes (1897) 168 Mass 140, 46 NE 407
• Three essential doctrines– A mark and the associated goodwill are inextricably linked– Musical group’s recordings and live performance are parts of
a single business enterprise• Sound recordings are class 9; performances are within class 41;
these classes are generally non-severable with respect to music groups
– A music group’s trademark is not abandoned even where group is inactive or breaks up – due to on-going availability of sound recordings
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Examples
• Lady Gaga – 3 registered marks– Registered Oct 2009 – class 41– Registered Oct 2009 – class 25– Registered May 2011 - Classes 9, 16, 25
(expanded), 35, 38 and 41 (expanded)
• Rolling Stones – 2 applications (red tongue mark and ROLLING STONES for expanded class 16) and 13 registrations– ROLLING STONES, THE STONES, MICK JAGGER,
(B&W tongue marks) – Covers classes, 9, 16, 25, 26, and 41
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Examples
• Prince• Registered PRINCE, PRINCE AND THE REVOLUTION (among
others) and symbols below
• All registered in classes 9, 41
• Tupac• Registered TUPAC, and TUPAC SHAKUR - Registered in class 9
• All registered after his death and contain the disclaimer that the mark “does not identify a particular living person”
• Blue Ivy Carter• Daughter of Beyoncé (at least 10 registrations/2 applications) and
Jay-Z (Shawn Carter) (at least 13 registrations/29 applications)
• Applied for classes 3, 6, 10, 12, 16, 18, 20, 21, 24, 26, 27, 35 and 41
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