Trademark Issues Related To Musical Performance Groups

Unlike most of our Music Business columns, this one is longer, more detailed, and has more legalese in it. However, it is for a very good reason. Innocent customers have been ripped off by paying lots of money to see fake artists perform live. Imagine paying $49.95 for a Vegas ticket to see The Temptations and there's not one single original member of the band in the show! This article goes into the LAW about imposter musical performance groups. Read it carefully.

Introduction
Over the past several years, there have been a number of instances of "imposter" musical performance groups which advertise themselves and appear under the names of well-known recording groups from an earlier era, impermissibly trading upon the reputations of those recording groups. "The Kingsmen," "The Temptations," "The Drifters," "The Platters," "The Marvelettes," and "The Coasters," are only a few of the famous group names which have been misappropriated and infringed in this manner. The issue is far from new. In Messer v The Fadettes (1897) 168 Mass 140, 46 NE 407, the court held that a musical group's name rests on the personal reputation of the original performers, and that use of that name to designate a body of musicians other than those who earned a reputation under that name would be a fraud on the public.

In an effort to curtail such public frauds, a number of states have enacted "Truth in Music" statutes — a consumer-protection law based on a model bill developed and promulgated by the Pennsylvania-based Vocal Group Hall of Fame. Truth in Music statutes require that live performance groups must demonstrate a right to legitimate use of a recording group's name, and also authorize imposition of fines and expedited injunctive relief in order to penalize and abate presentation of groups advertised under misappropriated or misleading names.

To circumvent those laws, several such imposter groups have applied for — and in some cases obtained — registration of Class 41 marks which duplicate or include the names of musical recording groups with which the registrant is, in fact, not affiliated. These official registrations are then proffered to entertainment venues (and to state agencies seeking to enforce Truth in Music laws) as presumptive evidence of a right to use those names, thereby satisfying the requirements of the Truth in Music statute, while actually thwarting the intention of those consumer protection laws.

The following discussion is intended as a primer on the issue of rights related to the names of musical performance groups, in an effort to assist in identifying and avoiding unjustified trademark registrations.

Avoidance of Consumer Confusion
Trademark law serves to protect two distinct interests. On the one hand, it is intended to guard the mark-owner's reputation, while on the other it protects consumers by aiding in identifying and differentiating among competing products and services.

Where a performance group advertises itself and appears under the same name as that of a well-known recording group the likelihood of consumer confusion and deception is absolute. Where the performance group instead uses a name which incorporates within it the name of a recording group, such confusion still remains highly probable, to a point of near certainty, particularly where (as is often the case) the performance group's advertising will emphasize only that portion of its name which duplicates the recording group's name, while minimizing or omitting the remaining portion of their "official" name. Thus the so-called "Legendary Lead Singers of the Temptations," were regularly advertised and appeared as "Legendary Lead Singers of THE TEMPTATIONS."

"The Court is convinced that Defendants seek to mislead consumers into believing that the musical act performing at their venues are associated with and endorsed by The Temptations."

What is clear from the history of various cases in which a performance group has unjustly adopted the name of a successful recording group with which it has no connection is that such adoption is invariably intended to deceive consumers, and to improperly trade upon an existing reputation and goodwill which is not their own, thereby enabling them to book engagements, and to command ticket prices, which they could not otherwise obtain.

Three Essential, Underlying Doctrines
There are three legal doctrines which should at all times be borne in mind when considering the trade name of a musical performance group. The first is fundamental to all trademarks, while the second and third are unique to the music industry.

1. A MARK AND THE GOODWILL ASSOCIATED WITH THAT MARK ARE INEXTRICABLY LINKED AND CANNOT BE SEPARATED.
   A trademark is merely a symbol of goodwill, with no independent significance apart from the goodwill it symbolizes. Goodwill can no more be separated from a business than personal reputation can be separated from an individual.
2. A MUSICAL GROUP'S RECORDINGS AND LIVE PERFORMANCES ARE PARTS OF A SINGLE BUSINESS ENTERPRISE IN THE PUBLIC MIND.
   Even though sound recordings fall within Class 9, while live performances fall within Class 41, the two classes are effectively integrated and non-severable with respect to musical recording groups. This integration is mandated by the fact that consumers reasonably expect a live performance group to be the same as the group which recorded songs under the same group name, and with which name consumers are thereby familiar. Imposter groups deceptively trade upon consumers' recognition of a recording group's name and reputation (and the goodwill attached thereto) when they adopt the same or a confusingly similar group name for live performances, and seek to register that name under Class 41.
3. A MUSICAL GROUP'S NAME IS NOT ABANDONED - AND HENCE IS NOT AVAILABLE FOR REGISTRATION BY OTHERS - FOR SO LONG AS THE GROUP'S RECORDINGS CONTINUE TO BE AVAILABLE FOR SALE, OR ARE PLAYED ON THE RADIO, THE INTERNET, OR IN AUDIOVISUAL MEDIA, OR CONTINUE TO EARN ROYALTIES OR LICENSING FEES.
   Even when a musical group has ceased making new recordings, or has disbanded entirely, or its original members have become deceased, there is no cessation of continuous use in commerce of the group name which is associated with prior recordings which continue to be sold, or to receive airplay, or to generate royalties. (See The Kingsmen v. K-Tel Int'l, Ltd. (1983, S.D.N.Y.) 557 F. Supp. 178, 183: "Even though plaintiffs disbanded their group in 1967 and ceased recording new material, there is no evidence suggesting that they failed to use the name Kingsmen during the period from 1967 to the present to promote their previously recorded albums. Moreover, the fact that these individuals continue to receive royalties for Kingsmen recordings flies in the face of any suggestion of intent to abandon use of the name Kingsmen. These plaintiffs have no more abandoned their right to protect the name of Kingsmen than have The Beatles, The Supremes or any other group that has disbanded and ceased performing and recording..."; see also Marshak v. Treadwell, (1999, DC NJ) 58 F. Supp.2d 551, affd. (2001, 3d Cir.) 240 F.3d 184, 199: "A successful musical group does not abandon its mark unless there is proof that the owner ceased to commercially exploit the mark's secondary meaning in the music industry.

Taken together, these three doctrines establish that there is public perception of a single continuing enterprise, and therefore a continuous use in commerce of a musical group's name, for both recordings (Class 9) and for live performances (Class 41), for so long as recordings bearing the group's name are promulgated in any manner, including record sales, radio airplay, internet webcasting, and all forms of audio and audiovisual licensing. This is true regardless of whether or not the mark was ever registered under either Class 9 or Class 41, as the common law protection is effectively nationwide, embracing all geographic areas in which records or downloads (DPDs) are sold or offered for sale, or which are within the range of AM or FM radio broadcasts (i.e., everywhere), or where internet connections are available.