Who Owns the Name of the Band?

The name of a musical group can be the subject of trademark ownership disputes. See Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1302 (TTAB 2015) (“when both parties are relying upon activities the two conducted in concert with one another, each in an attempt to establish prior rights in a mark over the other, the dispute centers on ownership of the mark”); see also Stott v. Split Decision Music, LLC, Opposition No. 91249613 (TTAB Jan. 31, 2024).

Manager versus Group

When band managers and band members differ over who owns the band’s trademarks, these ownership disputes often depend on how replaceable the members are.

In Rick v. Buchansky, 609 F. Supp. 1522, 226 USPQ 449 (S.D.N.Y. 1985), a musical “doo-wop” group was formed in 1961 at the instigation of David Rick, its manager, who proposed that the group perform as “Vito and the Salutations.” The court found that Rick did not act simply as an agent for the group; but that he functioned more like the producer of a theater company:

[W]ho must constantly find new performers to fill established roles without substantially altering the nature of the show itself. So Rick, as manager and promoter of ‘Vito and the Salutations,’ conceived of the group’s performance as an ‘act’ in which each member played a particular role. As individuals left the group, others were found to replace them and to assume their respective parts.

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It is estimated that at least ten persons…played the role of ‘Vito’ in ‘Vito and the Salutations’ during the 1960s and 1970s.

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While the Court would not go so far as to endorse plaintiff’s characterization of himself as the artistic wellspring of “Vito and the Salutations,” it remains clear that he was far from a mere booking agent. Records adduced at trial demonstrate that Rick paid many if not most of the group’s recording, travel and clothing expenses. In addition to arranging for studio recording time and scheduling the group’s live performances, Rick was responsible for the group’s personnel decisions and oversaw the style and substance of the group’s “act.”

In Bell v. Streetwise Records, Ltd., 640 F. Supp. 575, 231 USPQ 281 (D. Mass. 1986), on the other hand, a singing group began performing for nominal amounts of money in the Boston local entertainment market under the name New Edition. An ownership dispute later arose between the group and Streetwise Records, the record company that produced and marketed the group’s first albums. The Court held that New Edition was not a “concept group,” like The Monkees or Menudo, whose performers are cast to fill roles created by entities that conceived both the concept and name—because the group’s members were “not . . . replaceable actors in a play.” Indeed, the members had performed as New Edition long before Streetwise released their first album, and “the norm in the music industry is that an artist or group generally owns its own name.” Id. at 581. Moreover, the members “controlled the quality” of the entertainment services that they provided. Id. at 582.

Departing Member versus Remaining Group

In ownership disputes surrounding service marks as between a departing member and the remnant group, three factors are generally considered: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark. Lyons v. Am. Coll. of Veterinary Sports Med. and Rehab., 859 F.3d 1023, 1029, 123 USPQ2d 1024, 1028 (Fed. Cir. 2017) (accepting the legal framework applied by TTAB “for resolving ownership disputes when there has been a departure from or change of membership in a group and, in the absence of a formal agreement governing ownership of the mark, both the departing member and the remnant group claim ownership of the mark”); CBC Mortg.e Agency v. TMRR, LLC, 2022 USPQ2d 748, *16 (TTAB 2022); 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:39.50; see also HEC Enterprises, Limited v. Deep Purple, Inc., No. 80-02532, 1980 U.S. Dist. LEXIS 17054, 213 USPQ 991 (C.D. Cal. Oct. 3, 1980) (finding that HEC was the owner of the common law trademark, trade name and service mark DEEP PURPLE for musical services); Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003) (affirming that “Beach Boys Family and Friends” tour by former band member infringed “The Beach Boys” trademark).

 

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.