RECORDING ARTISTS' RIGHTS TO GROUP NAMES 

IVAN HOFFMAN, B.A., J.D. 


Rock and roll history is filled with litigation involving the rights in distinctive names for musical groups. When the band breaks up (Bands break up??!! Who's this guy kidding? Bands never break up!), the dispute over who owns the name, who can use the name for a subsequent version of the band, can be quite expensive. Since the name of a band can be a significant asset, often the single most important asset owned by the band, it is extremely wise to settle these questions before the band becomes popular. Once there is money thrown into the pot, the negotiations often become considerably harder and more costly. Poverty often makes deal making easier.

The issues about name ownership involve 3 general relationships: among the band itself, between the band and the record company and between the band and third parties.

The Band's Internal Relationship

Unless a group expressly agrees to the contrary, or absent some special circumstances I will go into in a bit, the members that become the original band, all of whom essentially join at the same time, are considered in law to be partners with the right to share equally in the profits of the partnership. This means that all members are deemed to be equal owners in all the assets of the partnership, the group name being one of those assets. (Additionally, the band will also be deemed to be the owners, in equal shares, of the band's interest in all contracts into which the band enters, such as a recording contract, contracts with agencies and the like.) And this applies no matter who actually came up with the name for the band since all partners blend their contributions to the general partnership asset pool.

This means that upon the dissolution of the band, all members of that partnership have an equal right to use the band's name in the pursuit of their new recording careers. This is subject to a number of qualifications including that the use of the name must not be misleading to the potential consumer. Therefor, it may be required that some form of disclaimer accompany the use of the name by each member.

But overall, you can imagine that this is an unacceptably confusing and potentially litigation-prone situation, one that can be avoided by early planning.

In the band's formation agreement, which is really a partnership agreement, the issues surrounding the ownership of the name can be resolved. It can be defined as belonging to one individual, or a number of the original individuals. The parties can contract to provide that only some may use the name but not others. Or that none may use it.

Additionally, the band can define what it means when someone "leaves" the band. What does "leaving" actually mean? What if there are 5 original members and 2 are no longer part of the band? Who left?--the 2 that are no longer members or the 3 that "remain." You can see that there are some conceptual issues here. After all, the one who walks out the door is not necessarily the one who leaves. In any relationship.

I mentioned some special circumstances above. If new members join the band, they can be "hired" under an agreement that states that they have no interest in or to the name. They may object to this, on the theory that they are working as hard as the other members and should be entitled to an equal share, including a share of the name of the band. It is a negotiation.

There are other ways of resolving the name ownership issue but these can only be handled through a written partnership agreement that addresses this and other issues. If left unhandled, all the band has is a potential mess.

The Relationship With The Record Company

The band, in its contract with the label, will most likely give the label the exclusive right to use the name of the band in connection with the recordings made under the provisions of the contract. (See also the discussion in the article "The Six Potential Traps In A Recording Contract" for issues about name and likeness. ) But the agreement must state that after the term of the agreement, that right will be non-exclusive, meaning that a new label can use the band's name for recordings made under the new contract and that the exclusive grant to the current label will not exclude the right of prior labels to use the name in connection with recordings made under that prior agreement.

Often the recording agreement will have a "group clause" that will cover the contingency of when (notice I've already skipped over the "if" provision) the band breaks up. In such a clause, the band gives the label the right to continue to record the "remaining" members under the group's name. (There are other issues involved in this clause, issues such as the label's option to record a "leaving" member as a solo artist and under what terms, the right of the label or the band to select replacement members and other such issues. They are beyond the scope of this article, however.)

But if there is no underlying partnership agreement dealing with rights to the group name upon breakup, there may be corresponding issues that arise with the label and its rights to use the name. Therefore, we come right back to the need for the partnership agreement.

Rights to Protect Names Against Use By Third Parties

Generally speaking, the United States' Copyright Law does not afford protection to the name of the band, standing alone. However, to the extent that the name is used in conjunction with some design, logo or other copyrightable element, the name can be protected but only as part of the copyrighted design, logo or other copyrightable element.

However, under appropriate circumstances, the name of the band may be entitled to trademark or service mark protection under the United States' Trademark laws. Additionally, band names may, under certain circumstances, be entitled to be protected against use by others under various state laws regulating unfair competition. Both trademark and unfair competition cases require that there be a likelihood of confusion in the minds of the public. To the extent that the name has developed what is known as a "secondary meaning," meaning that the consumer identifies the name with the particular band and it alone ("The Beatles" for example), then the band may prevent other bands from using the name for the other band if such use is likely to cause confusion in the minds of the public as to which band is the "real" band.

For more detailed discussion of these points about protecting a name, read "The Protection of Book Titles." The issues there presented are similar to those presented here.

In all these "third party" issues however, the question of who owns the name is still very much to be considered. Only the owner of the name has the right to protect it from use by third parties.

Additionally, without a formation agreement, it may be possible for third parties to claim some ownership interest in the name of the band. Claims may be made by record companies, personal managers, agents or others. In any agreement with such third parties, there should be express provisions indicating that such third parties have no interest in or to the name.

Conclusion

There are many other issues that arise under the group name question and this article is not intended to be exhaustive of those issues.

It is extremely important for the band to have some vision, even when they first get together. The band should believe that they are going to "happen." And if they "happen," the band should have a formative document that sets forth the rights and obligations of the members if, or when, contingencies arise that cause some members to leave. The ownership of the name under such circumstances is one of the most important of those provisions.

© 1997 Ivan Hoffman

[NOTE: Subsequent to this article, I wrote another related article dealing with other issues related to the rights to band names.  Read "Fair Use of Trademarks."]

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This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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