Friday, June 16, 2017

Protecting Band Trademark Rights: Three Cases

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.