RIGHTS TO RECORDING GROUP NAMES: FURTHER ISSUES

IVAN HOFFMAN, B.A., J.D.


        In “Recording Artists’ Rights to Group Names” and in “Fair Use of Trademarks,” I discussed some issues related to this very important topic.

        Effective January 1, 2008, California enacted a statute designed to protect not only the rights holders of such band names but the public as well.  A few other states have similar laws enacted previously.  It has been common for parties to go out and perform under the names of old time bands even if none of the performers had ever been members of that band.  Unless there was an action for trademark infringement (and many such older bands do not have a clear paper trail as to who is the owner of such rights) or unfair competition or other form of action, there was little that could be done to stop the activities.

        Business and Professions Code section 17537.12 (known as the “Truth in Music Advertising Act”) seeks to remedy this situation, at least in part.  The act starts by defining a “Performing Group” as

a vocal or instrumental group seeking to use the name of another group that has previously released a commercial sound recording under that name.
        The act then defines a “Recording Group” as
a vocal or instrumental group, at least one of whose members has previously released a commercial sound recording under that group's name and in which the member or members have a legal right by virtue of use or operation under the group name without having abandoned the name or affiliation with the group.
        This definition seems on the surface simple enough but the devil is, as they say, in the details.  The member or member of the “Performing Group” must have been part of the “Recording Group” who released a previous record under that Recording Group’s name and that member or those members must have legal rights to use the said name “by virtue of use or operation” and that member or those members must not have abandoned the name or the member or member’s affiliation with the Recording Group.

        It is important for the reader to read the above 2 articles since there are both contract issues as well as trademark issues involved with the definition of “Recording Group” and the rights to the band names.

        As to trademark issues, the Trademark Manual of Examining Procedure, section 1202.0 (a) provides in part:

1202.09(a) Names And Pseudonyms of Authors and Performing Artists
Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, if the mark is used solely to identify the writer or the artist. In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); In re First Draft, Inc. 76 USPQ2d 1183 (TTAB 2005); In re Peter Spirer, 225 USPQ 693 (TTAB 1985). Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.

However, the name of the author or performer may be registered if:

(1) It is used on a series of written or recorded works; and

(2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.

If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).

        The statute goes on to state what is prohibited.
(c) No person shall advertise or conduct a live musical performance or production through the use of a false, deceptive, or misleading affiliation, connection, or association between a performing group and a recording group unless any of the following apply:

(1) The performing group is the authorized registrant and owner of a federal service mark for the group registered in the United States Patent and Trademark Office.

(2) At least one member of the performing group was previously a member of the recording group and has a legal right by virtue of use or operation under the group name without having abandoned the name or affiliation of the group.

(3) The live musical performance or production is identified in all advertising and promotion as a salute or tribute, and the name of the vocal or instrumental group performing is not so closely related or similar to that used by the recording group that it would tend to confuse or mislead the public.

(4) The advertising does not relate to a live musical performance or production taking place in this state.

(5) The performance or production is expressly authorized by the recording group.

        Note that the prohibition is as to both advertising or conducting such performances unless any of the indicated conditions were satisfied.  “Person” is defined as:
(2) "Person" means the performing group or its promoter, manager, or agent. "Person" does not include the performance venue or its owners, managers, or operators, unless the performance venue owns or produces the performing group, or knew or should have known that the performing group does not have a legal right to perform.
        Finally the act provides for both civil penalties and injunctive relief.

Conclusion

        So when you go to an “oldies” concert, what you see may not be what you get.

Copyright © 2008 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.

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