WHO OWNS THE TRADE MARK TO A BAND NAME?
While copyright often takes center stage in discussions about recording artists, trade marks tend to be overlooked. Outside of recorded music, trade marks can be very lucrative assets for recording artists. WHAT IS A TRADE MARK? A trade mark is a word, phrase, or device which distinguishes the goods and/or services of one company/person from those of another. The owner of a trade mark has the exclusive right to use the mark and prevent others from using an identical or confusingly mark in the course of trade. Accordingly, the name of a band may qualify as a trade mark. OWNERSHIP Generally, record labels are not interested in owning an artist’s name or stage name (there are some draconian exceptions, of course). Usually, a record label will ask for a non-exclusive licence to use the name for the purpose of promoting the band and the music recorded by the band. As such, the question of ownership of the band name is often left to the band members to determine. Will the founding members own the trade mark or will ownership vest in all the members? Will the members own the name in equal shares? In the absence of a written agreement, the question can be determined in the following ways: Applying the above principles to a band is not always simple when one considers the changes that often occur within a band’s personnel. THE ISLEY BROTHERS TRADE MARK DISPUTE Does a member who has stopped performing with the band still have an ownership interest in the band name? The veteran R&B/ Soul band, The Isley Brothers is currently contending with this very issue in a pending court dispute. The lead member, Ronald Isley successfully applied for the registration of the trade mark “The Isley Brothers” as the sole owner. The application proceeded to registration in August 2022, much to the disapproval of his former bandmate and brother, Rudolph Isley. Rudolph is asking the court to declare that the trade mark “Isley Brothers” is jointly owned by the brothers in equal shares. In addition, Rudolph is asking the court for a share of all proceeds received by Ronald in connection with the trade mark. It is worth noting that Rudolph stopped performing with the band in 1989. This is one of many disputes of this nature. It is also very common for band members to form factions that perform separately using the same band name or a derivative thereof. This has happened to the likes of UB40, and the Commodores, amongst many others. From a South African perspective, I was watching with keen interest to see whether the dispute between members of the popular duo, Black Motion would involve the rights to the name “Black Motion”, but the dispute centered more around physical property such as studio equipment. CONCLUSION To minimise disputes, bands should address the issue of ownership very early after formation. The first priority is to enter into a clear and comprehensive band agreement. The band agreement should address (amongst other things) who owns the rights to the band name and in what proportions, licensing, and crucially, whether members who leave the band may continue to use the band name. Once the issue of ownership has been determined, the band should ensure that it applies for registration of the trade mark as soon as possible. Bands may also consider forming a legal entity under which all its business is conducted. Ideally, the entity should own the trade mark to the band name as opposed to it being owned by individual band members. Trade mark due diligence in the context of a band may not be as enjoyable as performing and creating music but it is absolutely vital.