BUSINESS
Lindsay Bailey is an entertainment lawyer with Taylor Oballa Murray Leyland LLP and is jointly Vancouver and Austin-based . She has a diverse practice , working with clients across the music , new media , fashion , visual arts , and film & TV industries and enjoys transactional and related work with her clients where these areas converge . Lindsay is a registered trademark agent in Canada and is registered to appear before the USPTO for her clients . www . tomllawyers . com .
Melissa Arseniuk is currently completing her third and final year at the University of Ottawa Faculty of Law , where her studies and legal research focus on technology , privacy , and entertainment law . By Prior Lindsay to law school Bailey , Melissa & was Melissa a journalist Arseniuk
whose work appeared in Rolling Stone , the Washington Post , People , and the National Post , among others .
Band Branding & Trademark Law 101
As your music career takes off , it is almost inevitable that another performer or band will try to harness your success and steal your brand . It ’ s important to keep an eye out for copycats , but what do you do if you find out someone is ripping you off ?
Trademark You don ’ t need to register your band name in order to receive trademark protection , but registering a trademark has its benefits , so it ’ s never a bad idea . It ’ s important to know that registration is done by country or “ territory ,” so if you ’ re active in both Canada and the U . S ., you should register with the federal trademark office in both countries to ensure your name is adequately protected . If you have a worldwide tour next year or your online community is growing with international fans , you may want to explore wider trademark registration , either in key countries abroad or a worldwide trademark registration .
Infringement Registered or unregistered , the first thing a prudent performer should do when faced with an alleged evil twin is figure out if the offending behavior is in fact trademark or copyright infringement .
So , what is trademark and copyright infringement , you ask ? Trademark law deals with names , logos , and slogans , while copyright law deals with creative works – compositions , performances , and recordings . A band ’ s name involves trademark law , while a song engages copyright law .
This article focuses on trademark law , so we will leave copyright law for another day , but suffice it to say that while copyright law protects your band ’ s music , trademark law protects your band ’ s brand – specifically your band name and any logo or icons that you may be using to promote your band , and how you use these trademarks online , on streaming services , with your promotional materials , and in your merch .
So , what would you do if you come across a band using the same ( or a very similar ) name ? If your answer was “ I have no idea ” – or , worse yet , “ I ’ d call them out on Twitter !” – step away from the “ tweet ” button and keep reading .
If another act is performing under the same name as you ( or under a name that could easily be confused for yours ), the best thing to do is get in touch with an entertainment lawyer ASAP . Before you march onto the offending act ’ s tour bus yelling “ I ’ ll see you in court ,” it is important to work with your legal team to figure out who used the name first .
It ’ s possible that the other act has been using the name for years and was toiling away in obscurity long before you wrote your first song or picked up a guitar , in which case you might be the one infringing on their trademark . If that ’ s so , it is in your best interest to not bring the inadvertent trademark infringement to their attention , and instead work with your legal and management teams to develop a strategy around changing your name , stat .
Establishing Yourself With this in mind , artists should conduct an extensive name and trademark search before deciding on a band name . Exploring all of the digital streaming sites and social media networks is the best start , and once you think that you ’ ve confirmed that no one else out there is using this ingenious band name , you may have just landed on something . But just because you find someone else is using the name you have your heart set on doesn ’ t mean you can ’ t use it , too . If you ’ re an EDM DJ in California and the band with the same name plays metal in Estonia , you might be OK . That said , it is generally best to come up with something original to avoid any confusion or potential legal headaches down the road .
Once you have zeroed in on a band name and done some online searches , that ’ s a great time to reach out to a trademark-savvy entertainment lawyer to confirm through some searches of the trademark registers how the landscape looks on that end – and to move forward with your trademark registration if possible .
It ’ s important to note that you can trademark a band name (“ The xx ”), your given name , as long as it ’ s gained some notoriety and distinctiveness (“ Alessia Cara ”), or a pseudonym / stage name (“ Prince ”). You can also trademark a symbol , icon , or logo associated with you – like the great purple one ’ s symbol – or a slogan that you use or have pulled from your work (“ Welcome to the Jungle ”).
Tip : Have your lawyer monitor the trademark office database to keep an eye out for acts trying to use your brand or a suspiciously similar name .
Taking Action If you ’ ve established that another ( newer ) act is using your band ’ s name , the next step is to have an entertainment attorney send a “ cease and desist letter ” to the infringing act to request ( er , demand ) that they stop using the name immediately , rebrand themselves , and either close or transfer their streaming and social media accounts . This process usually takes two or three weeks , but if the copycat act doesn ’ t comply , your attorney can escalate the process and initiate court proceedings on your behalf .
It is relatively inexpensive and efficient to have a lawyer send a cease and desist letter , especially compared to the cost of going to court . Meanwhile , it ’ s important to consider the ultimate cost of doing nothing : losing control over your band ’ s brand and allowing another act steal both your thunder and income .
The views and opinions expressed in this article are not meant to substitute for legal advice , which should be sought in each particular instance .
62 • CANADIAN MUSICIAN