Meeting of the Minds

’Cause They Never Go Out of Style: Why Musicians Are Registering More Trademarks Than Ever

Erik M. Pelton and Elizabeth M. Dukette

©2016. Published in Landslide, Vol. 8, No. 3, January/February 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

What do Taylor Swift, LL Cool J, Steve Miller, and Jennifer Lopez all have in common? Despite occupying different genres and decades of music, these music icons are all part of the recent trend in the music industry to apply to register trademarks with the United States Patent and Trademark Office (USPTO). Taylor Swift already owns over 50 registrations, and has submitted over 60 more applications to register a number of lyrics and phrases found on her album 1989, including THIS SICK BEAT1 and CAUSE WE NEVER GO OUT OF STYLE2 for use in connection with various types of clothing, accessories, and athletic wear. Similarly, James Todd Smith has more than a dozen pending applications to register his stage name LL COOL J for use in connection with live animal-riding performances and other entertainment services.3 Steve Miller, owner of the registration to the Steve Miller Band name, recently submitted eight more trademark applications including an application for the I’M A JOKER, I’M A SMOKER, I’M A MIDNIGHT TOKER lyric from the 1973 hit “The Joker,” along with an application to register the iconic winged horse image from the 1997 Book of Dreams album for use in connection with medicinal tobacco-free cigarettes and other smoking paraphernalia.4 Jennifer Lopez, who owns over 20 trademark registrations, recently applied to register a stylized logo of her “J-Lo” nickname (a “J” and “L” connected at the top with an overlapping “O”), for use in connection with over 10 classes of goods, including cosmetics and various home goods.5

These filings reflect the recent increase in music-related trademark applications as artists and labels seek to acquire additional protection under trademark law.

Protecting Branding Efforts in a Changing Music Industry

In 2014, the music industry experienced a sharp decrease in revenue from CD sales, royalties, music videos, and paid-for downloads.6 With traditional methods of generating revenue falling victim to the rise in technology, bands and record labels have started relying on alternative methods to secure revenue streams. As a result of this change, the music industry has seen a growth in new business-minded artists who are focused more on live performances,7 are willing to license their music for use by other companies,8 and enter into partnership or spokesperson deals with other industries.9 Similarly, record labels have developed mechanisms that allow them increased exclusivity with artists, mitigation of legal risk, and larger profit margins, by requiring artists to sign so-called 360 deals10 and obtain trademark registrations for their band name.

These new trends also highlight the importance of a proper band agreement or a contract between band members establishing the ownership rights to the lyrics, recordings, and trademarks. In general, band agreements should lay out responsibilities expected of each band member, establish the length of the agreement, tackle copyright ownership issues, provide a basis for profit distribution, and outline the respective rights in the event the brand breaks up or a member leaves.11 Bands that dismantle, even peacefully, often find themselves in dispute over the ownership of intellectual property and rights to revenue. For example, in 2000, a settlement agreement finally emerged to resolve a dispute over the rights to the BEACH BOYS mark.12 The undisclosed terms of the settlement ended a dispute over whether Al Jardine’s “Beach Boys Family & Friends” tour infringed on Mike Love’s exclusive rights to the “Beach Boys” name. In 2013, when members of the punk rock band Black Flag attempted to reunite, guitarist and songwriter Greg Ginn sued fellow bandmates for attempting to use Black Flag’s mark (four vertical black rectangles comprising a stylized rippling black flag) in connection with the “Flag” reunion tour.13 Two years later, they reached a settlement where “FLAG gets to be FLAG, and Black Flag as it is presently known continues to be Black Flag.”14 Recently, the R&B funk pop band Commodores sued former band member Thomas McClary for performing under the Commodores name 30 years after he left the group.15 Such disputes have become common.

Aside from complying with the demands of the record labels, obtaining trademark registrations in a band name or other marks used by an artist can be useful to protect profits and prevent the dilution of a valuable brand. Further, taking the steps to clearly identify who owns what part of that bundle of rights upon dissolution could prevent long, expensive, and potentially damaging litigation.

Benefits of Trademark Registration

When coining or choosing a band name or pseudonym, it is unlikely that a musician’s primary concern is the amount of trademark protection available. As in any industry, the mark selected is stronger if it is arbitrary or distinctive in relation to the goods or services. Although it is not necessary to register a trademark with the USPTO, as all trademarks used in commerce acquire common law rights, the common law rights are not as strong and may only provide limited geographic protection. Obtaining a federal trademark registration provides the trademark owner with a number of additional and valuable benefits.

For example, a number of musicians have iconic named guitars, which consumers could associate with the musician. B.B. King named his beloved Gibson “Lucille,” and Willie Nelson named his Martin N-20 “Trigger,” but only one of these names is a registered trademark. King registered LUCILLE in 1995 for guitars. By registering LUCILLE for guitars, King is able to prevent others from selling guitars or other instruments using the LUCILLE name without his permission. Without a trademark registration for TRIGGER, Nelson may be not able to easily prevent a third party from using TRIGGER in connection with a guitar even though Nelson named his Martin N-20 “Trigger” and has been using it for decades. King has benefited financially by registering the LUCILLE mark.

First, the registration creates the rebuttable presumption that the owner listed on the registration is the actual owner of the mark,16 allowing the trademark owner to more easily license, sell, or transfer property rights associated with the trademark.17 These rights benefit the artist, allowing the artist to lend his or her image or name to other industries for profit, while retaining ultimate control of the mark. Additionally, when the artist has ownership rights in the mark and brings a lawsuit against an infringer, the burden of proof to show ownership of the mark transfers to the defendant, saving the artist or record label time and money in litigation.

Second, the registration includes the date of the owner’s initial use of the mark, which documents the registered mark’s priority date, giving the owner the right of priority over any other person who subsequently attempts to use the mark in an infringing manner.18 Again, if an artist or record label is defending its rights in a mark, the priority date burdens the defendant to provide evidence of actual use prior to the owner’s priority date, ultimately saving time and money.19

Third, trademark registration allows the owner to use the “®” symbol, putting the public on notice that the owner of the mark is federally protected to use the mark for commercial purposes, hopefully deterring third parties from using the same or a similar mark.20 Also, once an application to register the mark has been filed, the mark will show up in searches of the USPTO’s trademark database, notifying others the mark is already in use or intended to be used by the artist. In sum, registration allows the artist to inform the public that he or she is using the mark in commerce, reducing the chances that someone will infringe on the artist’s rights.

Collectively, these rights benefit the artists by providing them with the presumptions of ownership, first use in commerce, and public notification. These legal presumptions can ultimately save the artist time and litigation expenses, and make it more difficult for a defense to be raised by an infringer.

Trademark Protections: A Good Business Decision

In addition to the legal rights that flow from the USPTO, trademark registration makes good business sense for artists and record labels. Primarily, registration makes it easier for an artist to establish standing to stop others from using similar or identical marks in a way that could confuse, dilute, or tarnish the goodwill associated with the registered mark. For example, in 2015, Black Eyed Peas front man will.i.am and fellow pop star Pharrell Williams settled a two-year long dispute over Pharrell’s trademark application for an I AM OTHER mark.21 Will.i.am opposed Pharrell’s application arguing that approval of the mark would dilute the will.i.am brand because the two were confusingly similar.22 Similarly, these disputes also frequently arise in the context of cover bands. Earlier this year, the classic rock band the Doobie Brothers filed a suit against the Doobie Decibel System, a cover band that performs the Doobie Brothers’ classic hits. The Doobie Brothers registered their trademark in 1980 and argue that the Doobie Decibel System’s performance of the Doobie Brothers’ songs and the use of a phonetically similar name will create a likelihood of confusion and will create direct competition between the two bands.23

Obtaining a federal trademark registration not only is important to distinguished bands, but also may be useful for aspiring artists. Registering a band name may create advantages to those attempting to break into the music industry.24 On top of protecting the priority and rights in the band name, registering a band name may sometimes be a prerequisite for obtaining a record deal with a label company. For example, Simon Tam of the Slants, who operate under a self-titled independent record label, has appealed the USPTO’s refusal to register his band name THE SLANTS as a trademark on the basis that it was disparaging: “[I]n the music industry it’s extremely important because there are licensing agencies and there are record labels who actually refuse to do business with acts who do not have a registered trademark, or who do not have a name that can . . . have a registered trademark.”25

Given the rise in popularity of the so-called 360 licensing deals in which labels provide financial and branding support for the artist in exchange for a higher percentage of revenue, record labels are taking on more financial liability. As in any business deal, record labels are weary of exposing themselves to unforeseeable and expensive litigation. A federal trademark registration offers the label additional security that no other band name exists on the Principal Register so that there is a lesser risk of receiving an infringement claim, and a greater chance of success against an infringing third-party mark.

Additionally, registered trademarks can provide record labels and artists the ability to proactively prevent infringement via preemptive court orders that prevent vendors from selling infringing merchandise outside of venues during performances. For example, in 2014, Lady Gaga preemptively filed for a court order to keep counterfeit goods from being sold outside her show at Madison Square Garden.26 These orders are not easy to secure, and artists would have an even more difficult time obtaining legal relief without the presumption of ownership and other rights that come with trademark registration.

The demand for artist-owned trademarks is also relevant when artists license their names and images as spokespersons for companies. Companies may require that artists own the legal rights to their performing names as a prerequisite for signing them to spokesperson deals.27 Acting as a spokesperson for a company can attract additional revenue, and act as a channel to enhance the artist’s brand or image. Owning the rights in the names allows artists to freely license their rights to the companies for marketing purposes, while preventing the companies from owning the artists’ personas entirely and better controlling the permitted uses of the registered mark.

Thus, trademark registrations protect established artists rights in their brand, help guard revenue streams, and provide artists with additional control over their brand when embarking on new business ventures.

Limitations of Trademarks: Actual Use in Commerce vs. Protecting a Catchy Phrase

If trademarks are a new source of revenue in the music industry, it is important to understand what is required of a mark for it to be registered with the USPTO. Two key requirements of a protectable trademark are that the mark is used in commerce,28 and that the mark is used “in connection with” goods or services.29 Thus, artists cannot merely protect a catchy lyric absent some other commercial use. Further, even if a mark is attributable to an artist, it may not be protectable as a trademark unless the mark is used in commerce in connection with a good or service.

The second limitation of trademark protection is that the mark must operate as an indicator of the source of the goods. This problem arises when the mark appears on the goods being sold but is not acting to support recognition. Compare Jimmy Buffett’s use of the MARGARITAVILLE brand versus Taylor Swift’s application for THIS SICK BEAT. Jimmy Buffett has been working for years to transform “Margaritaville” from a mere a song name into an industry.30 This likely worked because “Margaritaville” was not a concept before it was a song. His mark was a creative combination of two words that were not likely previously used together, and he developed an entire industry around the song.

In comparison, there has been debate in the media as to whether Taylor Swift should get approval from the USPTO for her 16 trademark applications for “This Sick Beat,” a phrase from her song titled “Shake It Off.”31 Swift’s applications indicate her intent to use this phrase with just about everything from toiletries to wind chimes. However, “sick beat” is arguably a slang phrase in common use, with “sick” meaning “crazy” or “cool.”32 And singing a lyric in concert—even over and over again—does not create a trademark use of the phrase.

Media and online commentary have focused on whether a simple phrase from a song of a different title is enough get the USPTO to give Swift a limited monopoly over the phrase. Unlike Buffett, who created a new word and built an entire song around it, here it could be argued that simply putting three words together in a phrase does not rise to the same level of creativity. While creativity is not a requirement for trademark registration, it is useful to prevent the mark from being rejected on the basis that it is likely to be confused with another mark or is merely descriptive of the goods or services, and it may be easier for the musician to create a commercial impression with a more creative mark.33 Recently, Swift announced her collaboration with Keds to release a clothing line,34 which may be the evidence she needs to prove to the USPTO that “This Sick Beat” creates brand awareness for the consumer, and will actually be used in commerce to sell the goods identified in the trademark applications, rather than just being a stunt to protect a catchy phrase.35

Conclusion

In conclusion, as technology continues to change the way consumers purchase music, artists and record labels are likely to continue seeking alternative ways to generate revenue. These new business ideas and branding efforts will further enhance the value of trademark registration as a worthwhile business investment, as registration offers revenue protection, reduces the risk of litigation, and provides advantages when signing licensing or other business deals. Given such benefits, trademark registration, as Taylor Swift sings, will never go out of style.

Endnotes

1. See U.S. Trademark Application Serial Nos. 86,434,770 (filed Oct. 25, 2014), 86,434,774 (filed Oct. 25, 2014), 86,434,777 (filed Oct. 25, 2014), 86,434,779 (filed Oct. 25, 2014), 86,434,780 (filed Oct. 25, 2014), 86,434,783 (filed Oct. 25, 2014), 86,434,785 (filed Oct. 25, 2014), 86,434,786 (filed Oct. 25, 2014), 86,434,787 (filed Oct. 26, 2014), 86,434,788 (filed Oct. 26, 2014), 86,434,789 (filed Oct. 26, 2014), 86,434,791 (filed Oct. 26, 2014), 86,434,792 (filed Oct. 26, 2014), 86,434,793 (filed Oct. 26, 2014), 86,434,794 (filed Oct. 26, 2014).

2. See U.S. Trademark Application Serial Nos. 86,434,916, 86,434,919, 86,434,920 (filed Oct. 26, 2014).

3. See Registration Nos. 3,763,607, 4,104,885; U.S. Trademark Application Serial No. 86,451,406 (filed Nov. 11, 2014).

4. See U.S. Trademark Application Serial Nos. 86,531,906, 86,531,926, 86,531,930, 86,531,933, 86,531,941, 86,531,945, 86,531,951, 86,531,957 (filed Feb. 11, 2015).

5. See U.S. Trademark Application Serial No. 85,365,687 (filed July 7, 2011).

6. Niall McCarthy, Music Streaming Revenues Overtake CD Sales in the U.S., Forbes (Sept. 9, 2014), http://www.forbes.com/sites/niallmccarthy/2014/09/29/music-streaming-revenues-overtake-cd-sales-in-the-u-s/.

7. While people may have lost interest in purchasing music, even in the age of live streaming, live performances generate substantial revenue. For example, Coachella headliners have secured seven-figure paychecks. One Direction’s “Where We Are Tour” drew 3.4 million attendees and grossed over $290 million in ticket and merchandise sales, and U2 grossed $736 million during its “U2 360° Tour.” See Kate Franco, Coachella Music Festival Breaks Own Revenue Record, Desert Sun (Cal.), July 8, 2014, http://www.desertsun.com/story/Life/entertainment/music/coachella/2014/07/08/coachella-music-festival-breaks-revenue-record/12388681/; Chris Parker, The Economics of Music Festivals: Who’s Getting Rich, Who’s Going Broke?, L.A. Weekly (Apr. 7, 2013), http://www.laweekly.com/music/the-economics-of-music-festivals-whos-getting-rich-whos-going-broke-4167927; List of Highest-Grossing Concert Tours, Wikipedia, https://en.wikipedia.org/wiki/List_of_highest-grossing_concert_tours (last modified Oct. 29, 2015).

8. Securing music licensing agreements allows artists to license rights to their music to a company for use to promote other industries, like to movies, commercials, and video games in exchange for a commercial exposure and the promise of a stream of future royalty payments. For example, in 2013, OneRepublic licensed “Counting Stars” to a Jeep commercial, and ultimately the song hit the number two position on the Billboard Hot 100 in January 2014 and sold over seven million copies worldwide. See OneRepublic: The Hot 100 Chart History, Billboard, http://www.billboard.com/artist/314580/onerepublic/chart (last visited Oct. 30, 2015); Sammy Said, The Top 10 One Hit Wonders, Richest (Feb. 19, 2013), http://www.therichest.com/expensive-lifestyle/entertainment/our-favorite-one-hit-wonders/?view=all.

9. Partnerships, sponsorships, and collaborations allow musicians to generate a new fan base and collect earnings from other industries that may not be as negatively financially impacted by the changes in technology. Notably, the Apple and Dr Dre collaboration to develop Beats Headphones is now valued over $1 billion, and Katy Perry has a spokesperson agreement with CoverGirl, whose “CoverGirl Lash Blast Mascara” alone grossed over $57 million in 2014. See Rupert Neate, Dr Dre Beats Valued at More Than $1bn following Carlyle Deal, Guardian (Sept. 27, 2013), http://www.theguardian.com/music/2013/sep/27/dr-dre-beats-1bn-carlyle-sale; Sales of the Leading 20 U.S. Cosmetic Brands in 2014 (in Million U.S. Dollars), Statista, http://www.statista.com/statistics/315593/sales-of-the-top-us-cosmetic-brands/ (last visited Oct. 30, 2015).

10. Kamal Moo, What Is a 360 Record Deal?, Johnson & Moo, http://www.johnson-moo.com/360-music-deals-360-contract/ (last visited Oct. 30, 2015).

11. John Latimer, Six Things That Should Be Included in Every Band Agreement Contract, Music Biz Workshop (May 21, 2012), http://themusicbizworkshop.com/2012/six-things-that-should-be-included-in-every-band-agreement-contract/.

12. Settlement Reached in Beach Boys Name Dispute, Billboard (Mar. 21, 2008), http://www.billboard.com/articles/news/1046108/settlement-reached-in-beach-boys-name-dispute.

13. Evan Minsker, Black Flag’s Greg Ginn Sues FLAG, Henry Rollins, Pitchfork (Aug. 4, 2013), http://pitchfork.com/news/51756-black-flags-greg-ginn-sues-flag-henry-rollins/.

14. Jenn Pelly, Black Flag and FLAG Settle Trademark Lawsuit, Pitchfork (Apr. 17, 2014), http://pitchfork.com/news/54819-black-flag-and-flag-settle-trademark-lawsuit/.

15. Lisa Ryan, Ex-Commodores Guitarist Wins Docs but Not Sanctions, Law360 (July 31, 2015), http://www.law360.com/ip/articles/686074.

16. 15 U.S.C. § 1057(b).

17. Id. § 1057(d).

18. Id. § 1057(c).

19. Id. § 1115(b)(5).

20. Id. § 1111.

21. See U.S. Trademark Application Serial Nos. 85,640,747, 85,640,753, 85,640,758, 85,640,768, 85,640,776, 85,640,795, 85,640,797 (filed June 1, 2012).

22. See Jon Blistein, Pharrell Seeks Court Ruling on Trademark Case, Rolling Stone (July 2, 2013); Jon Blistein, Will.i.am Takes Legal Action against Pharrell’s “i am OTHER” Brand, Rolling Stone (June 26, 2013).

23. See Jeff Giles, Doobie Brothers File Lawsuit against Similarly Named Cover Band, Ultimate Classic Rock (July 28, 2015), http://ultimateclassicrock.com/debbie-brothers-cover-band-lawsuit/.

24. Kenny Love, Should You Trademark Your Band Name?, Music Biz Academy.com (July 2005), http://www.musicbizacademy.com/articles/klovetrademark.htm; When Two Bands Have the Same Name: A Legal Guide . . . , Digital Music News (June 10, 2013), http://www.digitalmusicnews.com/2013/06/10/twobands/.

25. Bob Garfield, The Case for Allowing Offensive Trademarks, On the Media (May 22, 2015), http://www.onthemedia.org/story/why-cant-you-trademark-slur/transcript/; see U.S. Trademark Registration Serial No. 85,472,044 (filed Nov. 14, 2011).

26. Dareh Gregorian, Lady Gaga Files Suit to Keep Counterfeiters from Selling Bogus Goods Outside Madison Square Garden Concert, N.Y. Daily News (May 9, 2014), http://www.nydailynews.com/entertainment/gossip/lady-gaga-counterfeit-goods-concert-article-1.1786493.

27. How to Trademark a Music Artist’s Name, A Step by Step Guide for Musicians, Music Industry How To (Feb. 18, 2015), http://www.musicindustryhowto.com/how-to-trademark-a-music-artist-name-a-step-by-step-guide-for-musicians/.

28. You can also apply for a trademark on an “intent to use” basis, where the mark owner has not yet used the mark in connection with a good or service, and will later provide actual evidence of use. 15 U.S.C. § 1051(b).

29. Id. § 1127.

30. After the success of the song “Margaritaville” in 1977, Jimmy Buffett launched a number of different restaurants and home products. He grosses about $1.1 million per show. See Jimmy Buffett’s Margaritaville, Wikipedia, https://en.wikipedia.org/wiki/Jimmy_Buffett%27s_Margaritaville (last modified Sept. 27, 2015).

31. See supra note 1.

32. See Sick, Urban Dictionary, http://www.urbandictionary.com/define.php?term=sick (last visited Oct. 30, 2015).

33. 15 U.S.C. § 1052(d)–(e).

34. Taylor Swift Released a Clothing Line but You’re Already Dressing Just like Her, Mashable (July 23, 2015), http://mashable.com/2015/07/23/taylor-swift-fashion-icon/.

35. Only two of Swift’s Applications for THIS SICK BEAT have been refused for publication. On September 11, 2015, Application Serial Nos. 86,434,783 and 86,434,774 were issued “Final Office Actions” for insufficiently describing or identifying certain goods. However, the remaining 14 applications for THIS SICK BEAT are pending approval. Application Serial Nos. 86,434,785 and 86,434,777 were issued “non-final office actions” for insufficient description of goods and services on October, 22, 2015. Application Serial No. 86,434,780 was “published for opposition” October 13, 2015; Nos. 86,434,779, 86,434,787, 86,434,789, and 86,434,791 were “published for opposition” October 20, 2015; and Nos. 86,434,770, 86,434,786, 86,434,788, 86,434,792, 86,434,793, 86,434,794, and 86,434,795 were “published for opposition” October 27, 2015. On September 16, 2015, Application Serial No. 86,434,777 an “Office Action” was issued requesting the identification of certain goods to be clarified. Similarly, on September 22, 2015, Application Serial No. 86,434,785 was issued an “Office Action” requesting a clarification of goods. Additionally, all three of Swift’s applications for CAUSE WE NEVER GO OUT OF STYLE have been notified for publication and will likely be published on the Principal Register by year’s end. See supra notes 1–2.