What's In A Name?

Try and be original when thinking of a name for your band. You won't want to be sued for infringing someone else's name. Rights in a group name or a trademark usually derive from priority of use. This means that a prior group, even a small one, can successfully stop a new a more successful group from using the same name, at least in the area of the prior group's reputation. Another good reason for being original is that it will be easier to protect the name if you are the first one to use it. If you know that there is already a group called The Sledgehammers, it would be a poor choice to call your group something like The Sledgehammer Band. You can check if the name you have chosen is already in use by going to www.bandreg.com and looking it up. Here is the place where you can register your band's name too.

Who Owns The Name?

Once you have decided on the name and done a search on it the next important step in protecting it is to decide who is going to own it and to put this decision in writing. Even if you cannot afford a lawyer, confirm your agreement in writing. This can be as simple as a signed and dated statement that says that if Tom, Dick, or Harry leaves the group, then the departing member will have no right to use the group name, which shall continue to be owned by the remaining members of the group. A simple agreement along these lines can help avoid complicated hassles and problems in the future.

Doesn't the person who thought up the name own it? No. Remember the group name is like a brand name for a product. It identifies to the public the services provided by the group. Rights in the name are only created when it is used to create a public reputation. If one member of the group thinks up the group name, that person does not, individually, own that name. Ordinarily, the entity who actually uses the name owns it, subject to some agreement to the contrary. It would be possible, though not usual, for some other party to own the group name, such as the manager of the group, the record company, or the financial backer. However, any such unusal ownership arrangement should be confirmed by a written agreement. If there is nothing in writing to the contrary, the general assumption is that the members of the group, as a whole, own the group name and any member or members leaving the group woud have no further rights in the use of the name. Typically a group starts out as a partnership and the members own the group name in common. In other words, they have the right to use the group name together, but not separately. The question of ownership can be simplified to some degree by having the members of the group form a corporation that will own the name. Then if a registration is obtained in the name of the corporation, the departure of one or more members will not affect the title to the registration.

You should also consider copywrighting any Band Logo which is designed for use by the band, otherwise you might find someone else using your logo without permission. In 1976 there was a case brought to Court in respect of a company with unauthorised sales in Great Britain, of T-shirts bearing the group name Abba. In that case, the merchandising company representing the famous Swedish group was not able to stop the sale of the T-shirts, since they were being sold by the first user, despite the fact that there was no connection with or authorisation from the famous group. The English court indicated that the fame of the Abba name for entertainment services in Great Britain (where service marks were not yet registrable) was not enough to entitle the group or its merchandising company to prevent use of the name on T-shirt by the unauthorised party, who was the first user of the name on the goods in the juisdiction. Since the amendment of the U.K. Trademark Law in 1994, the registration of an entertainment group name provides a basis for stopping the unauthorised use of the name on the same kind of good s or services covered by the registration. There is also a provision in the new law that protects registered marks, which are well-known in the U.K. against use of the same name on dissimilar goods or services if such use would take unfair advantage of, or be detrimental to, the character of the well-known mark. In order to take advantage of this expanded protection, however, it is crucial to obtain a U.K. registration of the name for the goods or services for which the name has become well-known.

There is some question, by the way, whether the use of a group name on only the front or back of a T-shirt is, in fact, trademark use. It is better, from the standpoint of trademark protection, if the group name also appears on the neck label, indicating that it is the brand name for the shirt itself. Otherwise an infringer may be able to claim that the use of the group name on only the front of the shirt is an ornamental use (open to anyone) and not a trademark, which only the trademark owner is entitled to use or authorise.

Adapted from Stephen Bigger's paper in the book "The Musician's Business and Legal Guide"

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