Create, Consult, Control
News & commentary on intellectual property issues.
Feb182010 | Steve O'Donnell
Avoiding Trademark issues when naming your band
Most people don’t realize that all of the issues one can run into when choosing a brand name for a product also come up in the context of band names. In fact, these problems can cause an even greater headache for bands than for other businesses.
David: So we became The Originals.
Nigel: Right.
David: And we had to change our name actually....
Nigel: Well there was, there was another group in the east end called The
Originals and we had to rename ourselves.
David: The New Originals.
Bands often change their names to differentiate themselves from other bands. Black Sabbath was Earth before they found another band named Earth was on the same bill as them. The trouble finding a great band name is the same as the problem with finding a great domain name, or a great product name. . . all the best ones seem to be taken. The problem might even be worse for bands because of the nature of a business where bands form and break up all the time, musicians are often in more than one band at any given time, and bands often perform under a different name for different audiences. In other words, the music business rips through band names at an insane rate.
The most common solution to a trademark issue involving a band is that whoever had it first gets to keep it and the second user has to change their name. Specific facts can change that general observation, or at least open up other possibilities, but usually the first to use it has greater rights to the name. Certainly, if your band is gaining steam, the last thing you want to do is change your name because a skiffle band half-way across the country started using the same name a week before you did.
It’s difficult for me to say when a band should trademark its name. Ideally, it’s done as early as possible, but for many bands that just doesn’t make sense. It takes a while to get a stable lineup and have some reliable income before a band really starts to think of themselves as a business and realize that they need to form a legal entity or at least have an operating agreement between members, decide how to handle copyrights, trademark their name, etc. Most bands never get to the point where any of this matters, the trick is knowing when to start thinking about these issues, and hopefully that point is before there is a problem.
If you’re looking for a name for your band I do have a couple suggestions: 1) make up a word, chances are that if you make up a word that you won’t find that someone else is already using it; 2) use a two or three word name; 3) search Google to see if someone is using the name; 4) search a band name registry like bandname.com, and bandnameprotection.com; and 5) have a trademark attorney search for similar names. Admittedly, few bands are going to take my advice of speaking with a trademark attorney, at least early in the game, but doing so is the best way of finding out about possible issues before they become a real problem.
Feb172010 | Steve O'Donnell
Two trademark cautionary tales
Over the past month I’ve had two people come to me with serious trademark issues that could have been easily avoided by speaking with a trademark attorney early in their branding process.
In the first instance, my client, a business that is primarily intrastate, but does a small amount of interstate commerce, received a letter from an attorney warning them that another business has filed a registration for the trademark and plans to enforce it if my client attempts to expand beyond their current geographic market. My client was using the name first in certain markets, so they can continue to use the name as they have been, but will run into trouble if they try to expand. My client doesn’t want to give up the name, but does have plans to expand, which is where their problem lies.
Since my client was engaged in a small amount of interstate commerce, they could have registered the trademark years before the other registrant came around. Unfortunately, they didn’t think about trademarking until they ran into this trouble. We’re still considering possible courses of action.
In the second instance, my client started using a trademark that is very similar to a mark that had already been registered. It was a completely innocent mistake and my client didn’t try to leech off the reputation of the other company, but that doesn’t matter. Trademark law attempts to eliminate consumer confusion and in this case, the marks were close enough to each other, and in the exact same market, that a determination of anything but trademark infringement is unlikely. That client has two options: fight it, or stop using the name. Fighting it is expensive and the likely outcome is not good, rolling over means that my client loses a large amount of their name recognition and google-juice.
If that client had engaged a trademark attorney to vet their proposed name or to try to register that trademark, the other user would likely have been identified and the problem avoided.
Compared to the time and money involved in creating and building a brand, having an attorney protect it is a small expense. Yet, without that relatively minor investment, all of the rest can be a waste.
Feb082010 | Steve O'Donnell
Some things you can't copyright
Copyright is a strange thing, it comes into being (at least in some form) as soon as something copyrightable is created, almost like some ancient Greek god myth. Also, much like a Greek god, copyright can be capricious, nonsensical, and sometimes takes the form of a swan to seduce mortals. Ok, maybe not the swan thing, but it’s still pretty strange.
Although it is often hard to understand, there are rules covering what can, or can’t, be copyrighted. Of course the rules might not be self-evident, so here’s a selection of things that can’t be covered by copyright:
1) Short phrases: You can’t copyright your name. Sorry. You also can’t copyright something like a title to a movie or book. I still don’t suggest you name your memoirs “Harry Potter and the Chamber of Secrets,” even if your name is Harry Potter and your book largely discusses your Chamber of Secrets, but that would be because of a trademark problem, not a copyright one. Also, don’t be upset next time you hear some celebrity copyrighted some stupid slogan. The reporter got his facts wrong, what he meant to write was “trademarked [some stupid slogan].” Go ahead, say “that’s hot” all you want without Paris Hilton’s permission (just don’t put it on a product you’re selling without checking with someone first).
2) Bare ideas: You can’t copyright your idea for a reality show. I’ve gotten that question a few times. You could write it down in detail and claim copyright to that manuscript, but you can’t stop someone from using the same core idea for their own work because of your copyright.
3) Facts & non-creative works: You can’t copyright cold hard facts. There is a great case on this, Feist, that comes up in just about all conversations about copyright. In that case, a phonebook listing was not covered by copyright because it wasn’t creative. The level of creativity needed for a work to be covered is very small, but greater than zero. Often, Feist is referenced if a person tries to register something that is no more than a collection of other works or if their creation isn’t particularly creative.
4) Works of the Federal Governmental: Generally, things produced by a federal employee as part of their job is not copyrighted, at least they’re not eligible for a US copyright. Feel free to use NASA images as your wallpaper good citizen. That doesn’t necessarily mean that everything owned by the government is fair game, there may still be copyrights in things produced by contractors or transferred to the government. Further, works by some agencies like the US Postal Service aren’t considered works of the US Government. Lastly, state and local governments often copyright their own works. There, clear as mud.
5) Useful Items: This is one tricky to understand, but if something has artistic and utilitarian aspects, but the artistic aspect can’t be tweezed out of the whole to be copyrighted, then the whole thing loses copyright protection. A good discussion is in the Pivot Point case.
6) Clothing Designs: Clothing really falls under the Useful Items heading, but it usually slips out of the category because the designs at issue tend to be those that don’t seem particularly utilitarian. It is possible to have some aspects of a piece of clothing be protected by copyright, such as a particular pattern, but the actual article itself is not. That is the reason why right after the Oscars you can buy red carpet fashion-knockoffs in any dress store. There is always some discussion floating around this last category because there is a decent argument that haute couture is not utilitarian. I wouldn’t be surprised if Congress eventually got around to amending copyright law to address this.
Feb052010 | Steve O'Donnell
Infringe? It’s a business decision.
A common question all attorneys get is “am I gonna get in trouble for this?” For some things your attorney will be able to give you a decent answer. . . “yes, that’s a really dumb idea” or “no, that’s fine,” but much more common is a more stereotypical lawyer answer of “it depends.” For intellectual property questions, I usually dredge up middle school algebra.
Every decision can be made with the help of an equation. Let’s say your burning question is "should I hit this guy at the bar that keeps looking at me?" The left side of the equation might be:
“(chance of me losing the fight)*(chance of me landing in jail)”
The right side of the equation might be “(how much would I love to pop this guy?)*(chance that the girl at the end likes macho jerks)”
If the left side of the equation is greater than the right side, not hitting the other guy is favored. Now, of course, you can’t know the real values of any of the variables, but you can estimate. If there is a chance that they guy is really looking at someone else or just has a facial tick, and he’s a 300-lb monster sitting next to his buddy the cop, well, stay seated and order another drink. If he’s obviously being a jerk, you’ve got 40lbs on him, there are no cops around, and you know the girl likes macho jerks, the equation favors popping him. Unknown variables are also in play: maybe he’s a ninja, or an android, or a ninja android. You can’t know everything, but the more information you have, the better your decision making process will be.
It’s similar to questions I get all the time concerning intellectual property. Only a fool would make an uninformed decision. Even a gambler willing to risk big is only going to do so after evaluating the chance of losing with the possible payoff.
It’s part of my job to identify and flesh out what variables are in play. If the question involves using an image for a blog post from and there is a plausible fair use argument, that’s one thing; if the question involves making and selling t-shirts with Mickey Mouse on them, that’s a much different equation.
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Comments
Trademark law is primarily concerned about avoiding customer confusion, so if someone uses a trademark in a way that is unlikely to confuse people, it's probably not an infringement. Also, there are defenses written into the statute itself that refer to uses 1) other than as a trademark, 2) fair and in good faith, and 3) to describe the defendant's goods as being fair use of a trademark.
As far as the use of TM of (R) when talking about someone else's goods go, it's not needed. The purpose of those marks (which are optional) are to alert the public that a mark is being used as trademark and that they owner intends to enforce it. I don't know of a case where a third parties' use of the (R) symbol when using someone else's trademark has tipped the scales, although I'll admit that I haven't researched that particular point.
had a small hit with Three Little Pigs and caught the attention of Kraft, which resulted in them changing their name.
genre that has the same name. I don't know if they have trademarked it yet. Let's say, they trademarked it, but there is evidence that we had the name first? Do you know what might happen in that type of situation?
expensive, it would make much more sense for your band to register the mark as soon as possible to prevent any such issue from coming up. Have your manager email me.