Last month, we discussed the basics of Intellectual Property and Copyright law - how it's defined and what it covers. This month we turn our attention to the equally confusing issue of protecting your work, name and image with Trademarks. Today's new music economy is experiencing a merchandising revolution and the only way for you to get a piece of that pie is to make certain that your band's name and image are secured.

Trademark
Any word or image that indicates the source of goods is a Trademark and those that identify the source of services is a Service Mark. Therefore the name of your band qualifies as a Trademark when it is applied to sound recordings (compact discs, records etc) and is a Service Mark when you perform live. To simplify things for this article, I will refer to both Trademarks and Service Marks as Marks. Once a Mark is used in commerce, ownership rights attach to it that protects them from misuse by third parties. Some of these rights are automatic and others require a registration with the United States Patent and Trademark Office (the "USPTO").

Fundamentally the intent of trademark law is to limit any confusion for the consumer regarding the source of goods and services. Originally, these laws were developed to assure consumers that the goods and services that they were buying were in fact what they were purported to be. Thus when you buy a soft drink called Coca-Cola you'd know what to expect from the taste and quality of that product.

Trademark laws can protect the owner of the mark as well as consumers. Some of the protections that apply to musicians include preventing someone else from using your band name within the geographical area where you perform, sell your music or otherwise participate in commercial activity. Significantly, as the owner of a Trademark, you can prevent third parties from creating and marketing merchandise using your band's name or logo.

While certain rights attach automatically to a Mark once it is used in commerce, you can increase your rights and benefits by registering your Marks with the United States Patent and Trademark Office (the "USPTO"). Taking this simple step ensures that you can protect infringements against them and be awarded damages by a federal court. A sweeping federal decision is preferable to relying on the vagaries of individual state decisions regarding the enforcement of your Mark. And it can support your Trademark registration in foreign countries as well.

Unlike the Library of Congress copyright registration process that we covered last month, the USPTO reviews each application and makes a determination whether the Mark is entitled to be registered and if so, whether it qualifies as a Trademark or Service Mark. Factors the USPTO considers include, but are not limited to, the descriptiveness of the Mark and if the Mark refers to a living person. Additionally, the USPTO determines whether the Mark is "confusingly similar" to a prior registration or pending application. For example, if the band XYZ registered their name with the USPTO, a later application for a band called ZYX would likely be denied registration, as it is confusingly similar to the prior registered Mark XYZ.

While you can file a Trademark application with the USPTO without an attorney in the same manner that you can file a Copyright application, a qualified trademark attorney would make the process easier. A trademark attorney should perform a search prior to filing the application with the USPTO in order to anticipate any challenges the registration may face; and advise you on how to approach the application to obtain the best outcome.

It is important to begin the Trademark process as early as possible so that the time you've spent building your image and fan base is not jeopardized should your Mark be challenged in any way. Such was the case a few years ago, with the band The Postal Service who received notice from the United States Post Office that their band name infringed upon the government's Postal Service Mark. Lawyers got involved and in the end, the Trademark dispute was resolved and the band was allowed to continue using the Mark. The band understandably, had been very nervous about the outcome.

Image
In the United States, most states recognize, either by statute or case law, that an individual has a property interest in his or her name, likeness, or other identifiable traits. This "Right of Publicity" provides individuals the right to manage and restrict how their identity is used. The ability to control the use of ones image is generally limited to commercial use.

The law that underlies the "Right of Publicity" differs from state to state. In some states the right is considered a "Right of Privacy." In other states, consumer protection and unfair competition principles support the right of publicity. Additionally, federal law may protect your image in certain situations such as preventing third parties from using your identity in a manner to falsely advertise a product or service, or designate the origin of the product or service.

Challenges, Pitfalls and Opportunities
As we covered last month, Intellectual Property rights protects your interests in things that are not tangible (your image, music, etc) and it is not always obvious when somebody violates your Intellectual Property interests. This intangible nature contributes to the challenges musicians face in both the digital and the physical world. Two major areas that will affect musicians are how to protect their rights as they pursue relationships with their fans or with a label.

Balancing the financial interest the band has in protecting their intangible assets with the use of it by fans is a delicate balance. Both developing and established musicians should create an "Intellectual Property policy" that will help address issues that arise without having to reinvent the wheel with each challenge. The policy should address the following matters:

Use of the band's trademarks by fans on fansites

Communities on the Internet like livejournal and myspace

Recording of concerts

Maintenance of procedures to address infringing uses of intellectual property of the band

Becoming affiliated with a label is always a complicated affair and presents a range of Intellectual Property related issues that you will have to consider.

Who owns the intellectual property?

Does the band have a say in how and to whom its songs can be used?

How future innovation in technology will be addressed as it relates to intellectual property?

Contracts will include specific legal language that will determine who owns the Intellectual Property after the contract ends. Traditionally, Intellectual Property can be either licensed or assigned. An assignment is the complete transfer of ownership rights of Intellectual Property, similarly to selling your house, all title transfers to the assignee.

A license gives the end user the right to use the property, like a lease, for a limited time. Additionally, the license should be limited to the scope of the project. For example, the band can license its name to the label for the period of the contract for use on its records. The license may also provide that the label can continue to use the mark after the contract is terminated but only on records that remain in their catalog.

Beware that contracts may include language that will try to snatch your Intellectual Property rights away from you. Your contract may have wording such as "works created hereunder will be deemed a ‘work made for’ as defined under the Copyright Act" but are not actually situations set out Copyright Act. Copyright law defines as a work made in the course of employment or certain specially commissioned works, including, but not limited to, contributions to collective works and motion pictures.

Conclusion
The digital age presents artists and copyright holders with many new opportunities to prosper from their art and image. But if you don't carefully watchdog your assets, someone else will benefit from their value. You need to be an advocate for your rights when dealing with industry representatives and elected officials. It is not enough for you to rely on your manager, label or lawyer. The best spokespersons for artists’ rights are artists. How music affects the listener may seem priceless, but in reality there is financial value to those who created it.

Nancy Prager provides legal counsel to a range of clients who have intangible assets that they need to protect, exploit and manage. Her clients include independent musicians, managers and others who have interests in copyrights and other intellectual property related to the music industry. She can be reached at nancy@pragerlaw.us and http://www1.myspace.com/nancyprager.