1 1 AIPLA Firm Logo American Intellectual Property Law Association Registrability of Performer Names Neil Henderson Partner Borden Ladner Gervais LLP

2 2 AIPLA Firm Logo 2 Outline Overview Registrability of Performer Names Exceptions Examples of Registrations

3 3 AIPLA Firm Logo 3 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 logo

4 4 AIPLA Firm Logo 4 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

5 5 AIPLA Firm Logo 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

6 6 AIPLA Firm Logo 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),

7 7 AIPLA Firm Logo 7 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

8 8 AIPLA Firm Logo 8 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

9 9 AIPLA Firm Logo 9 Examples Lady Gaga – 3 registered marks –Registered Oct 2009 – class 41 –Registered Oct 2009 – class 25 –Registered May 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

10 AIPLA Firm Logo 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 10

11 AIPLA Firm Logo Thank you! ありがとうございます！ 11 Neil Henderson