Trademark Issues Related To Musical Performance Groups

Ownership of Musical Group Names

In the music industry, group names generally fall into three categories: (a) self-chosen, (b) imposed, and (c) concept.

Most groups start out as informal general partnerships of their original members, who select a name under which their group will publicly appear. Use in commerce commences when the group actually begins advertising, promoting themselves, or performing under that name and, if the group is thereafter signed to a record label and releases recordings under that group name, commercial use is deemed to continue thereafter for so long as the recordings remain available or are promulgated in any media, regardless of trademark registration in any class.

Such self-chosen group names are usually the property of the original group, subject to contractual considerations as between the original group members. Most commonly, the name is retained by the group as a whole, with departing members relinquishing their rights to the name at the time of leaving the group, while replacement members generally do not automatically acquire an equivalent interest in the name upon joining.

In some instances, the name is held by one or two "lead" members, and licensed exclusively to the group. This is particularly true with respect to groups which formalize their capacity by incorporation or by forming an LLC or equivalent entity, as an alternative to having the partnership or other entity own the name directly. Where there is merely a general partnership, and no formal license or partnership agreement, state partnership laws will govern, often mandating dissolution upon the departure of any partner and precluding any of the partners from commercial use of the name thereafter absent a settlement agreement between them.

In general, individual members' ownership interest in the group name is personal to them, and not descendible except as to the last surviving original member. Thus, absent a formal agreement to the contrary, the last surviving original member will control the mark, while the heirs of deceased members will have only an economic interest therein.

In some cases, a record company may decide that it likes a particular group, but not its name, or it may appear that the group's prior name infringes earlier use by others in another locale, so that a trademark dispute would likely result once recordings using that name were released on a national basis. In such cases, the record company may impose a new name on a previously existing group. If this happens after a recording has been released under the group's original name, use in commerce of the original group name continues, by reason of the recording(s) released under that name, notwithstanding the apparent abandonment of that name for future performances and recordings. Use in commerce of the new, imposed group name begins with its initial publication, promotion, advertisement, or recording release date, whichever first occurs. The point to recall is that, regardless of whether the name is selected by the artists, or imposed on an existing group by a record company, consumer recognition and goodwill — which are inseparable from the mark — vest in the artist, rather than in the record label, subject only to certain limited exceptions.

In so-called "concept" groups, a third party — a record company, manager, producer, promoter, or other entrepreneur — forms a group and hires performers to be a part of that group, usually as employees at will. In such cases, it is the third party which will own and control the mark. The performers who have appeared as members of "concept' groups such as "The Monkees," "Backstreet Boys," "New Kids on the Block," "Menudo," "Spice Girls," and "N*Sync" — have at all times been employees, with no interest in the names of those groups.

Where a non-performing third party controls the quality of the goods and services associated with a musical performance group, such third party is the valid owner of the trademark rights in the group's name.

One narrow exception to this general rule occurs when the third party owner of the mark is involved only in its commercial use for recordings, while acquiescing to (but exerting little control over) commercial use of the name for live performances. This narrow exception appears in Bell v. Streetwise Records Ltd, in which it was determined that, although the individual performing members of "New Edition" did not have any trademark rights in the group's name for phonorecords, those original performers, both individually and collectively, did have exclusive service mark rights in the group's name for the field of live musical entertainment. This exception would not be applicable where the trademark owner has exerted consistent control over the group for both recording sessions and for live performances. Neither would it have any application in cases where the proposed registrant is other than the original recording artists, since the holder of the phonorecord trademark right would then have a superior, rather than equal or inferior, claim of use in commerce as compared to non-original performers who might seek to misappropriate and use the name for live performances. Again, the key distinction underlying this exception is consumer reliance upon there being a common identity and continuity as between the recording group and the live performance group. So long as a group's recordings continue to be sold, licensed, or receive airplay, there can be no justification for an unrelated, unaffiliated group being allowed to use or register a group name which is identical to, or confusingly similar to, the established name of a recording group, regardless of whether or not that recording group continues to record or to publicly perform.