Did you ever wonder how long dormant groups like the Beatles
or ABBA can continue to protect all of their trademark rights? No?
Well I do. I have had this issue come
up on more than one occasion and I think that we have three groups to thank
when it comes to protecting bands' legacies and trademark rights: the Kingsmen, the Drifters and the Platters. All three groups have been involved in
litigation regarding the use of their band names in the live performance class. It appears that so long as a band's
recordings continue to be commercially available then the members of the band,
or the owner of the trademark rights to the band's name can continue to protect
these rights. This can be important when trying ti stop “fake” groups or trying to
resolve disputes between present and former band members regarding the right to
use a same.
The court in Kingsmen
v. K-Tel International Ltd makes this important point:
Moreover the fact that these
individuals continue to receive royalties for Kingsmen recordings flies in the
face of any suggestion of intent to abandon the use of the name Kingsmen. These plaintiffs have no more abandoned their
right to protect the name of the Kingsmen than have the
Beatles, the Supremes or any other group that has disbanded or ceased
performing and recording but continues to collect royalties for the sale of
previously recorded material. We must
reject defendant's contention that the name Kingsmen has been abandoned to the
public domain.
The Kingsmen case
has been relied upon with approval by Judge Samuel Alito in the case Marshak v. Treadwell, et al. Judge Alito cited the above-referenced
section and stated that "a successful musical group does not abandon its
mark unless there is proof that the owner has ceased to commercially exploit
the mark's secondary meaning in the music industry." In that case the court noted that the proof
of non‑use would be that the recordings of the "Drifters" were not
played and the resulting royalties were not paid. In another case Herb Reed Enterprises v. Florida Entertainment Management, Inc. the
court stated that "although non‑use of the mark for three consecutive
years constitutes prima facie evidence of abandonment, the standard for non‑use
is high. Non‑use requires "complete
cessation or discontinuance of trademark use" where "use"
signifies any use in commerce and includes "the placement of a mark on
goods sold or transported" . Even a
single instance of use is sufficient against a claim of abandonment of a mark,
if such use is made in good faith.
This important distinction has also been discussed in the treatise
Gilson on Trademarks. Ann Gilson La Londe writes about the above
cited cases: "three cases involving
disbanded musical groups found that where the groups' recordings are sold and
played and group members continue to receive royalties the marks continue to be
commercially exploited and thus there is no time of non‑use".
These cases provide some real guidance in working with
artists who want to make sure that their trademarks are protected past their days of active
performing.
