Finally some good news for songwriters

The Internet is transforming the music industry from a sales-of-copies model to a sales-of-access model. Instead of buying CD’s, more and more people are subscribing to digital plans that allow them to listen to music without ever buying a record, CD, cassette, or any other kind of physical copy of it. Naturally, this threatens to turn recording artists, songwriters, and record company employees into paupers, much in the way that Google Books, broad judicial interpretations of “fair use,” and online royalty-free sales of so-called “used” books are hampering the ability of all but a select few book authors to receive a reasonable return on their investments of time and creativity in writing.

Record companies responded to this development by prevailing upon Congress to enact the Digital Performance Rights Act (DPRA), establishing for the first time an exclusive digital performance right for the owners of copyrights in sound recordings. The DPRA allows traditional radio stations (“terrestrial” stations licensed by the FCC, as distinguished from Internet transmitters) to continue to freely broadcast sound recordings without paying royalties to the owners of copyrights in the sound recordings, but Internet services offering pre-programmed or on-demand streaming and/or digital downloads have to pay record companies and recording artists royalties.

This is all very well and good for record companies and recording artists, but it does nothing for those who hold the copyrights in the musical compositions embodied in the recordings. As too often seems to happen, the focus on protecting and advancing the monetary interests of record companies and their “stars” has eclipsed concern about the rights and interests of songwriters and lyricists.

It looks like there could soon be some good news on the horizon, though. OK, it’s good news for music publishers, but some of the benefits might potentially “trickle down” to songwriters, too.

The good news is that the U.S. Department of Justice (DOJ) is considering amending an old consent decree to allow performance rights organizations (ASCAP, BMI, and SESAC) that handle copyrights for songwriters and publishers to bundle digital mechanical licenses along with performance rights licenses. Currently, performance rights organizations are only permitted to license performance rights of musical compositions, such as live concerts, radio and television broadcasts, and the “performance” aspect of Internet streaming. They are not permitted to license the making and distribution of physical or digital copies. If composers and lyricists want to be paid royalties when someone makes or distributes a copy of their compositions, they need to turn to a different agency for licensing of those rights. Making one-stop licensing possible by allowing bundling of these licenses could make things more convenient for songwriters. It would also benefit those songwriters (especially the independents) who mistakenly believe ASCAP, BMI or SESAC licensing gets them all the royalties to which they are legally entitled.

The DOJ is also considering allowing music publishers to withdraw digital rights from the blanket licenses of performance rights organizations. This could give publishers room to negotiate better individual deals with particular music distributors.

Next, the Justice Department is considering requiring a negotiated interim royalty for the songwriter (or publisher) to be set before a digital service can begin streaming the music, and limiting the length of time during which the interim rate could be paid before a final royalty rate would have to be established.

And it is rumored that the Justice Department may require higher levels of transparency and accountability from music publishers and performance rights organizations.

Taken together, these changes could help songwriters (or at least those songwriters with good publishers) get better royalty deals, and could also help them get paid the money to which they are legally entitled but which they too often never receive.

The comment period appears to be closing, so a decision could be coming very soon.

 

Trademark Law: The “Use in Commerce” Requirement

(promotional poster for "The Blob," Paramount Pictures, 1958)

(promotional poster for “The Blob,” Paramount Pictures, 1958)

You’ve just come up with “Sonic Protoplasm” or some other great name for your band. A trademark search turns up no confusingly similar mark that is already being used by someone else. Accordingly, you set up a web site and start advertising the services you offer under that name. You then find an online trademark service that keeps costs low by dealing in volume. The firm says it has processed thousands of trademark applications so you figure it must be good.

Everything goes according to plan, and a year later two pieces of good news arrive in your mail: a trademark registration certificate from the USPTO and a notice that your band has qualified to participate in a “battle of the bands” concert.

You arrive at the forum on the day of the concert, and you can hear the crowd going wild inside for the band that is currently onstage. You ask an audience member which band is performing, and he answers, “Sonic Protoplasm, man!” When it’s your band’s turn to perform, you are booed off the stage for trying to trade on the success of the “real” Sonic Protoplasm. Worse, when you return home, you are served with petitions to cancel your registration and to permanently enjoin you from using that name.

Eventually, you find yourself in the federal circuit court of appeals, losing your case. You’re told the problem is that you failed to satisfy the “use in commerce” requirement. Federal trademark registration only protects marks that are “used in commerce.” 15 U.S.C. § 1051(a)(1).

It is true that under the Lanham Act, a service mark is considered to be “used in commerce” when it is displayed in the sale or advertising of services. Creating a web site to showcase and advertise the services you offer, and using the new name on the site, is one way to satisfy this requirement.

But that is only the first part of the “use in commerce” requirement. In addition to actually using the name, you must also actually render the services so advertised. 15 U.S.C. § 1127. If you have not actually started rendering the advertised service by the time you file your trademark application, the registration that is issued to you is not valid. It is subject to cancellation at any time, and it will not necessarily protect you against a competitor’s claim of infringement.

There is one exception to this rule: You may file a trademark application on the basis of an intent to use the mark in the future, rather than actual use. If you file this kind of application, then you have six months from the time you apply (plus any extensions you request and are granted) to start using the mark. If you do not file the requisite statement of use and specimens within that time, then federal trademark protection is lost.

These rules formed the basis for the recent federal circuit court of appeals decision in Couture v. Playdom, Inc. (No. 2014-1480, March 2, 2015.) David Couture had filed an application to register the mark PLAYDOM for entertainment and educational services. To demonstrate use in commerce, he submitted a screen shot of his web site advertising the services. He did not actually begin providing services, however, until later. In the meantime, Playdom, Inc. filed an application for the same mark. Playdom, Inc. successfully petitioned to cancel Couture’s registration of the mark because Couture had not satisfied both prongs of the “use in commerce” requirement.

Couture argued that he should have been permitted to amend his original application from one based on use to one based on intent to use. A petition to change the basis for a trademark registration application, however, must be filed before the issuance of the registration. TMEP § 806.03(j). He had not done that.

The trademark registration process may seem simple, but there are many traps for the unwary. In the immortal words of Sgt. Phil Esterhaus, “Be careful out there.”

(Note: “Be careful out there” is a protected trademark for workmen’s compensation claim services — USPTO ser. no. 77498935 — but not for blog articles.)

State law copyright claims

(Photo: "485 Schildkröten - cutted". Licensed under CC BY-SA 2.5 via Wikimedia Commons -

(Photo: “485 Schildkröten – cutted”. Licensed under CC BY-SA 2.5 via Wikimedia Commons)

Most people assume copyright protection is governed exclusively by the federal Copyright Act. For the most part, this is true. The Copyright Act does assert that federal copyright law preempts state copyright law:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.1

The statute, however, also disclaims any intention to preempt state laws and remedies with respect to:

(1) subject matter that does not come within the subject matter of copyright;

(2) any cause of action arising from undertakings commenced before January 1, 1978;

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106;

(4) state and local landmarks, historic preservation, zoning, or building codes, relating to architectural works protected under section 102(a)(8);

(5) sound recordings fixed before February 15, 1972. Federal preemption with
respect to sound recordings fixed before then does not begin until February 15,
2067.2

Contract claims

State law claims are preempted by the Copyright Act, then, only if they protect rights equivalent to the exclusive rights protected by federal copyright law. A claim is preempted only if it is of a kind that comes within the general scope of federal copyright law. If it doesn’t, then the claim is not preempted.

This has come to be known as the “extra element” test. If violation of the state law requires proof of some element in addition to or instead of the exclusive rights federal copyright law affords (i.e., rights to copy, adapt, distribute, display or perform a work), then the state law claim is not preempted by federal copyright law. For this reason, breach of a contract involving a copyrighted work is still actionable under state law.

If the contract is only an agreement not to infringe a copyright, then the state law claim would be preempted. A breach of that kind of contract would be the same thing as violating rights protected under federal law. A cause of action for breach of this kind of contract adds no additional element to an infringement claim.

If the contract provides for a royalty payment to the author in exchange for a publisher’s agreement to print and sell his book to the public, a breach of that contract would be actionable under state contract law. Federal copyright law does not guarantee royalties to authors. Because the royalty agreement is an “extra element,” the state law claim survives federal preemption.

Works not within the subject matter of federal copyright law

State law claims of intellectual property rights in works that are not within the subject matter of federal copyright also survive federal preemption. This is sometimes called the “subject matter” requirement of federal copyright preemption.

An example would be works that are not yet fixed in a tangible medium. Federal copyright law only protects works that are fixed in a tangible medium. An extemporaneous speech is an example of a work that is not fixed in a tangible medium. A sound recording of the speech, or a written transcription of it, would receive federal copyright protection, but an impromptu, unwritten, unrecorded spoken-word performance would not.

A band that comes up with a new song while jamming in the guitar player’s garage does not get federal copyright protection until they write it down on paper or record it in some tangible medium such as a tape recording or a digital recording of some kind.

State law may or may not provide a remedy for infringing these kinds of works. Federal law does not create or “approve” any particular state law remedies. It merely identifies what areas of the law states are still free to regulate. It is up to each state to decide whether, and in what way, it will protect intellectual property rights in works that are not of a kind that are protected by federal copyright law.

Pre-1972 sound recordings

Before 1972, sound recordings were not within the subject matter of federal copyright law. Accordingly, the federal Copyright Act provides that state law claims for infringement of rights in a pre-1972 sound recording may be pursued notwithstanding the general rule that federal copyright law preempts state copyright law.

The recent decision in Flo & Eddie, Inc. v. Sirius XM Radio, Inc.3 illustrates this rule. The musical group The Turtles recorded the song, “Happy Together” and a number of other songs in the 1960’s. Two of the founding members later created Flo & Eddie, Inc., which now owns all rights to The Turtles’ master sound recordings. Satellite radio and Internet broadcaster Sirius XM Radio, Inc. publicly performed some of these recordings. Flo & Eddie, Inc. had not granted it a license to do so. Since 1960’s sound recordings do not receive federal copyright protection, the Turtles would lose unless state law offered them some protection. As it turns out, California is one of a small number of states that provides statutory protection for intellectual property rights in pre-1972 sound recordings. California Civil Code § 980(a)(2) provides:

The author of an original work of authorship consisting of a sound recording initially fixed prior to February 15, 1972, has an exclusive ownership therein until February 15, 2047, as against all persons except one who independently makes or duplicates another sound recording that does not directly or indirectly recapture the actual sounds fixed in such prior recording, but consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate the sounds contained in the prior sound recording.

The court interpreted the rights of “exclusive ownership,” as used in this statute, as giving the owner of a pre-1972 sound recording the exclusive right to publicly perform the recording.

It should be noted that the California statute only protects rights in the recording of the song, not rights in the song itself. A cover band could legally perform its own version of “Happy Together” and neither federal nor California state law would provide a remedy to the recording’s owner, Flo & Eddie, Inc. The cover band could still be liable to the songwriter, though, if the song has been fixed in tangible form, such as sheet music, and if the sheet music (as distinguished from a sound recording of a performance of it) is otherwise protected under federal copyright law.

Conclusion

It is a mistake to rely exclusively on the federal Copyright Act, as some practitioners do, to determine the extent of copyright protection to which a creative work may be entitled. Every copyright issue should involve a three-part analysis: (1) Does the federal Copyright Act protect the work? (2) What kinds of protection might state law provide? (3) Are state law protections preempted by federal law?

Postscript: Shortly after the California decision, Flo & Eddie, Inc. succeeded on a summary judgment motion against the same defendant in New York on the basis of New York state’s common law protection of copyrights.4

  1. 17 U.S.C. § 301 (2015)
  2. Id.
  3. CV 13-5693 PSG (RZx), C.D. Cal., September 22, 2014)
  4. Flo & Eddie, Inc. v. Sirius XM Radio, S.D.N.Y. No. 13 Civ. 5784 (CM)

For Whom the Za Tolls: N.J. Turnpike Authority vs. Jersey Boardwalk Pizza

pizza_vs_parkway

You’re driving over the ocean in the Florida Keys when suddenly you get a hankering for a slice of pizza. Unfortunately, there’s not a toll booth in sight. Suddenly, off in the distance you spot what you think is a sign for a New Jersey turnpike toll both. “Yes!” you exclaim, “Now I can finally get me some of that deep dish goodness.” Little do you know that the signpost up ahead isn’t really for a New Jersey turnpike. No, it’s for a Jersey Boardwalk pizzeria. Halfway through your lunch, it suddenly occurs to you that what you are eating is a medium deep dish sausage and pepperoni pizza, not a toll booth. Too late, you realize that the signpost you’d seen while you were driving the Oversea Highway in the Florida Keys was not directing you to a New Jersey turnpike toll booth at all. It was directing you to … The Trademark Zone.

It’s true: The New Jersey Turnpike Authority really has filed a federal lawsuit against a Florida pizzeria for trademark infringement. It claims the pizzeria’s mark is so similar to the turnpike authority’s mark that people will mistakenly assume the pizza is connected in some way with the New Jersey turnpike authority. It accuses the pizzeria of trading on the good will of the New Jersey turnpike authority. Accordingly, the agency is suing the pizzeria of infringement and unfair competition under Section 43(a) of the Lanham Act, service mark dilution, common law trademark infringement, and unfair competition under N.J. Stat. Ann. 56:4-1. It is seeking an injunction, compensatory damages, and treble damages.

The pizza company brazenly contends that no one in his right mind would confuse a pizzeria with a government agency responsible for collecting highway tolls.

Who will win? Taxpayers, of course, will lose, but it’s still too early to tell whether the pizza company will, too. When it comes to courts these days, anything can happen. Reality is increasingly becoming confusingly similar to fantasy/horror.

But really: trading on the “good will” of the New Jersey turnpike authority? Come on.

Author’s Guild v. HathiTrust

Author’s Guild, et al. v. HathiTrust, et al., no. 12-4547-cv, (2d Circ., June 10, 2014)

The second in a set of lawsuits commenced by the Author’s Guild in an attempt to stem the tide of mass violations of the copyrights of book authors, this one seems to be a much more reasonable application of the “fair use” doctrine than the Second Circuit’s decision in Author’s Guild v. Google last year was.

In 2004, the University of California at Berkeley and a few other universities embarked upon a program to create scanned digital copies of the books in their collections. Four years later, the HathiTrust was set up to manage this digital library. By 2013, more than 80 institutions were participating in the program, and over 10 million works had been added to the collection. Since permission to reproduce these books had not been obtained, the program appeared to involve as many as 10 million copyright violations. The Court held, however, that the copying fell within the “fair use” exception to copyright protection.

HathiTrust makes its digital collection available free of charge to readers with “print disabilities,” i.e., people whose physical condition (such as blindness or inability to hold a book) makes them unable to read printed books. The Court reviewed the legislative history demonstrating Congress’s intention to allow, as “fair use,” free copies of copyrighted works to be made available to blind individuals. The Court extended the rationale for this rule to bring individuals with any kind of “print-disability” within the “fair use” doctrine.

The Author’s Guild also complained that HathiTrust furnishes digital copies to libraries to replace lost, stolen or destroyed physical copies. The Court dismissed this latter set of claims for lack of standing and ripeness.

Next, the Author’s Guild made the same kind of claim as it did in the Google case, that copying for the purpose of creating a searchable database of books infringes on the rights of individual copyright owners. Unlike Google Books, though, HathiTrust search results do not display pages-long “snippets” of text. In fact, no text at all is displayed. Instead, the user is only told if and how often the term appears. The Second Circuit Court of Appeals appropriately ruled this to be a transformative use that is permitted as “fair use” of copyrighted material. This limited kind of use does not involve unnecessarily excessive copying , and does not dilute the market for the works.

It is difficult to argue with the Court’s decision in this case. Accordingly, the Second Circuit is now one-for-one on its decisions relating to the permissibility of engaging in mass copyright violations for the purpose of creating searchable databases of copyrighted works.

 

 

Now you too can write Sherlock Holmes mysteries! (Maybe)

Holmes_-_Steele_1903_-_The_Empty_House_-_The_Return_of_Sherlock_Holmes(Illustration by Frederic Dorr Steele, 1903, PD-US)

Do you have a restless urge to write Sherlock Holmes mystery stories? If so, the U.S. District Court for the Eastern Division of the Northern District of Illinois has some good news for you: Holmes, Watson, and even Professor Moriarty are now in the public domain. In fact, all Arthur Conan Doyle detective stories published before 1923 are in the public domain.  This means that you are now free to write, publish and sell Sherlock Holmes mystery stories without having to secure a license or permission from the Doyle estate.

The ruling was issued in a case commenced by Leslie S. Klinger to determine his rights to copy and make derivative works using certain elements in the series of Sherlock Holmes detective stories originally penned by Sir Arthur Conan Doyle. Klinger is the co-editor of In the Company of Sherlock Holmes, a collection of Sherlock Holmes stories written by various authors. According to the complaint, Pegasus Books had decided not to go forward with publishing the book after it received a letter from the Doyle estate advising that it would seek to prevent the book from being sold by retailers unless it received a monetary payment. Klinger filed a complaint requesting a declaratory judgment that  the Sherlock Holmes characters are in the public domain. Chief Judge Ruben Castillo ruled in his favor, and granted the request. <<http://freesherlock.files.wordpress.com/2013/12/klinger-order-on-motion-for-summary-judgment-c.pdf>>

The ruling is subject to two important caveats. First, it only applies to Sherlock Holmes stories that are in the public domain. Although all of Doyle’s Sherlock Holmes stories are already in the public domain in Britain, not all of them are in the public domain in the U.S. In the U.S., only those stories that were published before 1923 are in the public domain. Any new information about Holmes, Watson, or any of the other characters in the detective series, remains protected by copyright, to the extent it was first disclosed in a story published after 1923. For example, the detail that Watson had a second wife is still protected by copyright. An American writer aspiring to be “the next Arthur Conan Doyle,” therefore, should take care to ensure that any dialogue, character and sequence elements he wishes to copy were either published before 1923, or entered the public domain since then.

Determining when a literary work that received copyright protection at some time in the past has entered the public domain is not always easy. Different rules apply depending on when and how the work was created (there are special rules about joint authorship, works for hire, and works written anonymously or under a pseudonym), and also depending on whether and when the work has been published or registered. In general (and assuming full compliance with all relevant copyright notice requirements), the copyright term for an uncommissioned work authored by one non-anonymous person was 28 years, renewable for a second term of 28 years, if the work was published or registered before January 1, 1978. Congress extended the length of the second term to 47 years for all copyrights that were still in existence on January 1, 1978. On October 27, 1998, Congress extended the second term to 67 years, for those copyrights that were still in existence at that time. Applying these rules, any such works published before 1923 are now in the public domain. And since Doyle’s last Sherlock Holmes mystery was published in March, 1927, they all will have entered the public domain by 2023.

The second caveat is that a character or other element of a literary work may be protected under other law even if it has entered the public domain for purposes of copyright law. For example, an author who ghostwrites Sherlock Holmes stories and tries to pass them off to the public as having been written by Mr. Doyle himself faces potential liability under state and federal trademark, fraud and unfair competition laws. And even an author who publishes Sherlock Holmes stories under his own name might be liable for trademark dilution if the famous Sherlock Holmes character is determined to be a trademark and if the author’s writing diminishes its value to the trademark owner.

Of course, you can avoid these risks altogether by simply creating your own characters, dialogue and plot sequences. Who knows? You may even come up with an idea for a story, or a series of stories, with so much lasting literary merit that someday you will be the author whose works other people are clamoring to copy.

 

Authors Guild v. Google: Is Fair Use Fair?

Google

On November 14, 2013, U.S. Circuit Court judge Denny Chin (sitting by designation in the U.S. district court for the southern district of New York) concluded 8 years of copyright infringement litigation with an order dramatically expanding the “fair use” defense. Seemingly somewhat out-of-sync with the Napster decision a few years ago, the order permits Google to continue to freely copy the entire contents of millions of copyright-protected books and distribute them, or at least significant portions of them, to the public free of charge, without either getting permission from the authors or paying them royalties for their works.

The Google Books project may well be the greatest boon to researchers there has ever been. In the old days, you would need to make a lot of telephone calls and perhaps drive a long distance to a library to track down, say, an exact quotation from a particular nineteenth century physics textbook. With Google, you simply type the name of the text and a few key words into a search bar, and within seconds a link to a copy of the page of the book on which the quotation you seek appears on your screen. Follow the link and the quotation, along with a considerable amount of additional text from the book, instantly appears on your screen. It is a researcher’s dream come true. But what about the rights of authors? Is it fair to them to allow people to read unauthorized copies of their books without having to pay for them? Certainly there can be no  complaint about works that are so old as to have entered the public domain. But what about books that are still protected by copyright?

The Copyright Act prohibits the reproduction of copyright protected books. 17 U.S.C. § 106(1) (2013). It also prohibits the distribution of books that are protected by copyright.  17 U.S.C. § 106(3) (2013). And it prohibits the unauthorized display of protected works. 17 U.S.C. § 106(5) (2013). As part of its “Library Project,” Google digitally scanned millions of books in the Library of Congress, the New York Public Library and several university libraries, and then made them available to the public to view and download for free. Not having obtained permission from the authors and publishers of these books, Google committed millions of violations of each of these laws. The upshot was a class action copyright infringement lawsuit by the Authors Guild on behalf of book authors everywhere.

After more than eight years of litigation, a U.S. district court judge determined that Google had indeed infringed the copyrights of scores of books authors, but refused to hold the company liable for it. Instead, the judge ruled that the massive copying and distribution program upon which Google had embarked came within the “fair use” defense to copyright infringement.

The “fair use” doctrine permits limited use of copyrighted works under some circumstances, in the interest of fostering the development of arts and science.  Because of it, no permission is needed to copy small amounts of  a book for the purpose of criticism, comment, news reporting, teaching, scholarship or research. What Google did went far beyond that, though. Google’s activities involved copying, distributing, and in some cases displaying the entire contents of copyright protected books without permission.

The company was able to secure a favorable ruling by invoking the four-prong “fair use” test set out in the Copyright Act. Under 17 U.S.C. § 107 (2013), an infringing use of copyright protected work is permitted “fair use” if the following factors, on balance, favor unauthorized use of the work:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The judge found that, on balance, the factors weighed in favor of Google’s massive copying and distribution project. He emphasized the great benefit to the public of having access to a large number of works all at the same time. He rejected the authors’ argument that Google’s scans serve as a market replacement for the books, depriving authors of payment for their work. “Google does not sell its scans,” he noted.

Of course, this ignores the fact that the purpose of copyright is not simply to prevent others from profiting, but to ensure authors a fair return for their labor. According to the judge, though, Google Books actually helps authors sell their books because “patrons use Google Books to identify books to purchase.”

Do people really use Google search to locate nonfiction books to buy? Or do they only read so much of the text as they want or need at that particular moment, thereby alleviating the need to buy the whole book? And does having all the text of a book available for free online remove, or at least decrease, the incentive for libraries to acquire copies for the use of their patrons?

Well, but the judge has this to say:

“[Google Books] has become an invaluable research tool that permits students, teachers, librarians, and others to more efficiently identify and locate books…. It has given scholars the ability, for the first time, to conduct full-text searches of tens of millions of books.”

Creating a searchable index of books clearly is a transformative use. As such, it should easily fall squarely within the “fair use” doctrine. Had Google simply created an index that displayed a list of books in which the search terms appear, without displaying the actual text of these books, there would be no question that the creation of the indexing system would have been a fair use. Enabling users to also read entire pages from the books — and in some cases, the entire book — after identifying and locating them, without anybody having to actually pay anything for a copy of the book is a different story.

Predictably, librarians, Internet surfers and Google officials are thrilled with the decision. Authors, not so much. An appeal is almost certain, although all indications are that the Second Circuit probably will affirm the decision.

You can read a copy of Judge Chin’s ruling here:

http://publishersweekly.com/binary-data/ARTICLE_ATTACHMENT/file/000/001/1887-2.pdf

 

Some thoughts about “The Slants”

Citing Section 2a of the Lanham Act, the Trademark Trial and Appeals Board has affirmed the rejection, earlier this year, of the band name “The Slants.” Section 2a prohibits, among other things, the registration of “matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.” The examiner felt the name was offensive to people of East Asian origin. The applicant, Simon Tam, argued that the term has not been used as a racial slur since the 1940’s. He has filed an appeal.

The Trademark Board’s decision seems strange, given that all the members of the band are of Asian origin. Their expressed intention was to “take ownership” of the racist history connoted by the term, not to disparage themselves or to bring themselves into contempt or disrepute. It does not appear that any evidence of anyone actually being offended by the band’s use of the term was introduced.

Although the parties have focused their arguments on the question whether the term is a disparaging one or not, to my mind the case raises an important First Amendment issue: Is a grant of authority to a federal official, to withhold trademark registration on the basis of what the official thinks might be offensive, consistent with the First Amendment? The USPTO thinks it is, reasoning that a refusal of registration does not prevent a band from using the name, and therefore does not suppress expression. In re McGinley, 211 USPQ 672 (1981). But is this reasoning really valid? It is true that denial of registration does not prevent an applicant from using the name, but registration does confer a special status that determines eligibility for important federal benefits, not the least of which is the benefit of a presumption of a right to exclusive use of the name. It is a fundamental tenet of First Amendment law that even when the government regulates in a way that impacts or discourages speech without actually prohibiting it altogether, it must do so in a content-neutral way. Some content-specific regulation is permitted in the case of commercial speech. Even commercial speech regulation must be “narrowly tailored” to serve a substantial government interest, though. Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557 (1980). Can authority to deny federal benefits on the basis of an official’s belief that it “may disparage” a person or a belief really be said to be “narrowly tailored” to serve an important government interest? If so, then how is it that a firm using the word “Squaw” to sell skis, or a record company calling itself “True Niggas Only,” can claim benefits offered by the federal trademark office, but a band calling itself The Slants cannot?

There are signs that the Supreme Court may be moving toward subjecting regulations of commercial speech to the same strict scrutiny analysis that is applied to regulations of other kinds of speech activity. The distinction between commercial and artistic expression is neither clear nor clearly mandated by the language and history of the First Amendment. The time may be ripe for a constitutional challenge to Section 2a.

 

 

 

Trademarking the Name of a Band

Most musicians know about copyrights. Without copyright protection, other musicians and music companies might claim your songs as their own, reap profits from them, and even sue you if you perform your own compositions. Many musicians are not aware that a similar calamity can befall a band that does not properly establish and protect trademark rights in the name it chooses.

Band names and logos as trademarks

A trademark is any word, phrase, symbol, sound or design that is used in commerce to identify the source of goods or services. Music recordings are goods, and entertainment is a service, so a name that is used to identify the source of a song or the musicians who perform it is a trademark. For example, the name, “Smashing Pumpkins” is a trademark that is used to identify a particular band’s sound recordings and musical performances. It is also a trademark for posters and shirts displaying that phrase.

Copyright law does not protect names, titles or short phrases. Registering a copyright for a collection of songs with the band’s name on the cover may protect the band’s rights of authorship in the music, but it will not protect the band’s name. For that, trademark registration is needed.

Logos are a special case. If a logo is an original work, then the artwork may be copyrighted. When it is used to identify a particular band, then it may also be protected as a trademark.

How trademark rights are created

Trademark rights are created by using a name or symbol in connection with goods or services to identify the source of the goods or services. Merely deciding on a name for a band is not enough, even if the name is written down on a piece of paper, witnessed, notarized, and kept in a safe deposit box. Trademark rights come into being only when the band takes the further step of putting the name on a product (such as a CD, or a digital recording that is made available for download on the Internet) or an advertisement for the product, or publicly performs or advertises its entertainment services under the name.

Trademark rights can come into existence without registration. As between two bands with the same name, the first to use the name in commerce to identify the source of their musical products or services (such as affixing the name to a CD that is offered for sale, or using the name in an advertisement or flyer for a concert performance by the band) will be the one with trademark rights.

Why registration is important

Since trademark rights are linked to first use, some websites offer to protect a band’s name by simply listing the name in a band name registry. While this can generate some evidence of use, it is not determinative of the issue, and it is not sufficient for trademark protection. Only registration with a state or federal trademark office will establish a prima facie case or a legal presumption of trademark ownership.

Registering your band name with the U.S. Trademark Office creates a strong presumption that you own the trademark rights in that name. Subject to some exceptions, it usually will be all the evidence of ownership you need for your defense if another band attempts to sue you for using a name that it claims is confusingly similar to theirs. And it will enable you to file suit, if necessary, to prevent other bands from using your name, or a name that is confusingly similar to your band’s name.

The stakes are high. Being ordered to stop using a name is not the only thing that can happen to a person who is successfully sued for trademark infringement. He may also be ordered to destroy or surrender any products that have the infringing name affixed to them; to disgorge any profits that have been made through the use of the name; and to compensate the trademark owner for damages. In some cases, he may also be ordered to pay punitive damages and the trademark owner’s attorney fees.

Trademark considerations in choosing a name for your band

Many musicians think only about aesthetics when choosing a name for their band. You should also think about the distinctiveness of the name as a brand. One way to begin to do this is by searching the Internet to see if anyone else is already using the name. Search Amazon, iTunes, ReverbNation, MySpace, and Facebook. Then do a global search using Google or a comparable search engine. If a band is already using the name you want to use, you should choose a different name.

It is important to understand that a band name may infringe another band’s trademark even if it is not identical to the other band’s name. A different name can infringe another band’s trademark if it is confusingly similar to the other band’s name. The name “Pearl Jamb,” for example, would infringe Pearl Jam’s trademark rights.

A number of trademark rules and principles can impact your ability to register and protect your band’s name. For example, trademarks that merely indicate geographic origin cannot be registered. Names that are merely descriptive of the goods or services provided also cannot be registered. Deceptive, generic, immoral or scandalous names cannot be registered. The rule against disparaging trademarks prevented The Slant from registering a trademark in their name. According to the USPTO, the name could be construed as disparaging Asian people. These are just a few of the possible reasons the USPTO might reject a trademark registration.

Of course, most bands do not have the resources to conduct a trademark search or retain a trademark attorney’s services when they are first starting out. It is a good idea to consult with a trademark attorney as early as possible, though. In addition to the potentially devastating consequences of an infringement lawsuit, it can be difficult and costly to re-build your band’s name recognition if you end up having to change the name somewhere down the line, especially if you are unable to prevent other bands from using the name you originally chose.

Who owns a band’s name

The general rule is that the owner of a trademark is the person who controls the nature and quality of the goods or services. In the absence of an agreement, determining who controls the nature and quality of a band’s goods or services can be complicated, particularly if a band works with a producer and/or a recording company. There can also be issues within the band itself. If a band breaks up, which members, if any, have the right to use the former band’s name?

Because bands almost always break up at some point, it is very likely that a legal dispute over the right to use the band’s name will arise between members of the band, or between members of the band and the band’s former producer or recording company, unless rights to the name are clearly laid out in a written agreement. For this reason, it is a good idea to get clear on ownership of the band’s name from the outset, and spell it out in a written agreement. If the band is operating as a corporation or a limited liability company (LLC), it should be addressed in the articles of incorporation or the operating agreement. It can be a good idea for the corporation or the company to own the name, and to include specific intellectual property provisions in the operating agreement. This will put the band in a better position in dealings with producers and recording companies, and will forestall disputes over departing members’ use of the name.

The registration process

There are three basic steps in the trademark registration process: (1) a trademark search; (2) applying for registration; and (3) Trademark Office processing of your application for registration.

Trademark search

After you have completed your preliminary search of the Internet and think you have found a name that is not confusingly similar to another band’s name, it is advisable to do an actual trademark search, not only of the USPTO’s web site, but of other databases, too. There are trademark search firms who will do this for you. Before paying one of these firms, though, make sure you understand what you are getting. Non-attorney firms might produce a list of similar names, but will not advise you about whether a name is confusingly similar or not. Not being attorneys, they normally will not advise you about whether the name you’ve selected is eligible for registration or not. Finally, in many cases, they will only conduct a search of a single online database, the USPTO’s. A trademark attorney who performs this service for clients will search state and other relevant databases, will advise you about whether the kind of name you’ve selected is eligible for registration, and will give an opinion about whether any similar names his search uncovers are too confusingly similar to yours to be registered.

Application for registration

If you are confident that your name is eligible for registration, the next step is to file an application for registration of your trademark. The federal filing fee is $325 for each category of goods or services in which you wish to register a mark ($375 per category if filing by regular mail instead of electronically.) At a minimum, a band name should be trademarked in the categories of recorded music and live entertainment services. Other categories to consider might include clothing using the band’s name (e.g., T-shirts), and printed items such as posters. Ultimately, the categories you select will depend on how you plan to market your band.

You will need to include a specimen of your mark along with the application. A specimen is documentary evidence of your actual use of the trademark.

If you have not yet begun to use the name in commerce, you can file an “intent to use” application. You will still have to file a statement of use, along with a specimen image, at some point, but filing an intent-to-use application gives you more time to do it.

Examination, publication and opposition

After filing your application and specimen images, a trademark examiner will review your application for completeness and eligibility for registration. If there is a problem, you will receive an “office action.” You will then have a specified period of time in which to correct the problem and respond. If your application is not rejected at this stage, it will be published in the Trademark Office’s Official Gazette. Anyone opposing registration of your mark will then have a specified period of time in which to object. If an objection is filed, an opposition proceeding is commenced. An opposition proceeding is similar to a civil lawsuit, in that each party files pleadings, conducts discovery, and may make motions. An opposition proceeding can delay the registration process considerably, sometimes for years.

Issuance of a registration number and certificate

If your application is not rejected at the examination stage, and if it is not successfully opposed after publication in the Official Gazette, then your mark will be assigned a registration number and you will be issued a registration certificate.

Trademark registration only provides protection within the geographic region in which the mark is registered. A mark that is registered with the USPTO does not protect your trademark rights in other countries. If your band begins to tour internationally, or if you start selling your wares in other countries, you will need to register your band’s name in those countries to protect your trademark rights there.

After a registration certificate issues, it is your responsibility to police it, i.e., monitor the marketplace to ensure that no on is infringing it. It is also your responsibility to ensure that it is renewed at the proper times.

Should you hire an attorney?

While it is possible to register a trademark without an attorney, the USPTO recommends that you use one. There are good reasons for that. A trademark attorney can help you avoid wasting a lot of time and non-refundable filing fees trying to register an ineligible mark. Also, if your application contains even a single minor mistake, it can take many months for the USPTO to let you know, and it can take many more months after that for the USPTO to let you know if the problem has been corrected. An attorney familiar with trademark laws and the Trademark Office’s examining procedures should get the application right the first time.

Trademark protection for your band’s name is one place where the old adage, “An ounce of prevention is worth a pound of cure” is true. It is one of the first things you should do once you make the decision to seek a wider audience for your band’s music than the neighbors living next to your garage.

This article does not constitute legal advice. It is only background discussion about trademark issues. If you have any questions or concerns, it is strongly recommended that you contact a lawyer.

Tom James is a licensed attorney admitted to practice before the Trademark Trials and Appeals Board, Minnesota state and federal courts, and the Federal Circuit Court of Appeals in Washington, D.C. Although he will be the first to admit his musical ability leaves quite a bit to be desired, he has considerable expertise in the area of trademark law, and enjoys helping musicians, artists and writers protect their trademarks and copyrights. You can contact him at tom@tomjameslaw.com, or visit his website at http://www.tomjameslaw.com.