Can Auto Company Use Same Name as Band?

Dear Rich: A musician friend of mine has had a  musical project for 20+ years. He uses a name that he made up (not a real word) and he has included the name on several albums (on several different labels). He has achieved some international acclaim. Well, along comes a Korean automobile company, announcing that they have a new camper/car with the same name. I would hope he has some claim to the name, as he has widely published it for decades now. Did he have to file an official application for a trademark for that name? I know of a band that was paid several thousand dollars to give up its name to another band. Can my friend go to the auto company and get them to basically pay him for the use of the name? Alternatively, and perhaps more reasonably, should he simply be staking a claim to the name to prevent the auto manufacturer from coming after him and claiming some kind of bogus trademark infringement?

Your friend isn't the first musician to share a name with an automobile. Consider REO Speedwagon, The Valiants, The Road Runners, The Avantis, The Mustangs, The Rivieras, The Ferraris, The Lincolns, and our musical favorites, Galaxie 500. The difference is that in your friend's case, he was using the name before the car existed. 

Is there a claim against the car company? Even though your friend may have invented the name and used it first, we don't believe he has a trademark claim against the car company. That's because trademark disputes are resolved using a likelihood of confusion standard. Are purchasers of the Korean car likely to be confused as to whether it originated with your friend's musical project? Are consumers of your friend's records likely to be confused into thinking that the source for the music is the Korean car company? Because the categories of goods are so different (and don't compete with each other), and because purchasers of cars and music are discerning enough to distinguish between the two, we think that consumer confusion is unlikely. 

Money from the car company? Because confusion is unlikely, the car company need not pay your friend for the right to use the name. The example you mentioned -- one band paying off another band for the right to use the name -- differs from your friend's situation because consumer confusion is much more likely when two bands have the same name. That doesn't mean car companies can name their vehicles, The Beyonce, or the Beatles. Using a famous band's name implies endorsement and violates unfair business and right of publicity laws.

Should the name be registered? Federal trademark registration offers benefits but is not mandatory. If your friend's right to the name is challenged, the most important factor will be evidence of where and when he used it in commerce -- for example, advertisements, reviews, discography, etc.

Band Wants to Add New Members

Dear Rich: I'm in a band that has an incomplete lineup at the moment. Right now it is just 3 of us (2 guitar players, 1 drummer). We have a good handful of songs fully written and arranged. In the meantime, we are still looking for more people to join. How would it work if we go about copyrighting our music now just to get out there as a trio? I know when you file a copyright, you can always add to it later but is there a way to make the three of us principal songwriters and have the rest of the band (once it's completed) still get credit for the music later on?
Copyright is automatic so once your trio creates a song (song copyrights) or records an album (sound recording copyright) the three members are all co-authors and co-owners by default (assuming that all three contributed to each effort). If you filed copyright applications for either the songs or the sound recordings, you would list the three contributors as the "authors."
When you add a fourth member ... You should not revise an existing registration (or file a new one)  unless the new member modifies one of your existing songs or recordings -- for example, a bass player helps you modify an existing tune by composing a new chorus and bridge. You can always share revenue from existing copyrights with new members -- for example paying them song royalties for songs written before they joined the band but that doesn't require modifying the copyright information for existing copyrights. We recommend that you create a band partnership agreement to best deal with adding new members (and we explain how do that in our Music Law book).

Do I Sign Solo Artist, Band, or Both?

Dear Rich: I recently started a music production business and I am in the process of signing a new artist as his manager. I have some questions regarding the contract between myself and the artist. He has a solo singer-songwriter act and a small band, that I will oversee. Do I need two separate contracts, as a manager for both his band and his solo act? He has agreed to a five album term instead of year by years contract. Can I change the terms of the contract, in your Music Law book, as we both agree on our terms? If the solo artist and the band operate as two separate entities, you should sign two separate contracts. That will allow you as a manager to keep separate accounts reflecting income and expenses. Otherwise, income destined for the band may be hijacked to pay off the solo artist's debts. If they are not separate entities -- for example, the solo artist hires the band as contractors and pays them an hourly rate -- then one management contract with the solo artist should suffice and there is little need to sign the band.
What about changing the agreement? It's more common to sign a management contract based on years (or financial goals), not on number of albums. (It sounds like you are crossing a record contract with a management agreement.) After all, what happens if the artist doesn't have (or keep) a label deal? Does that mean the management agreement ends? In any case, you're free to make any changes you wish to the agreement but we would suggest that when modifying the standard agreement, always review the instructions that accompany the agreement. Also, beware that in some cases, managers may need to be licensed in California.

Another Band is Selling Our Jams

Dear Rich: If someone (call them Band 2) came to a band's show (call them Band 1) and Band 2 secretly recorded a six minute jam song which Band 1 never wrote down, nor because of it's nature never laid down in a studio etc. or otherwise recorded, and Band 2 made a song out of the jam and copyrighted it and sold downloads on their website, is that legal because the jam song was never "fixed" by Band 1? It depends on what you mean by "made a song out of the jam." If Band 2 used samples or sounds from the recording, then Band 2 would be liable under anti-bootlegging laws, described below. If they didn't copy (sample) any of the recording, then read on.
Anti-bootlegging law. It's true that copyright only protects "fixed" performances -- works that are considered "sufficiently permanent" to be perceived and communicated. And the "fixer" -- the party who records it with authorization -- is often presumed to be the author or co-author of the sound recording copyright (although not the author of the underlying song composition). In addition, in 1994, a new law was adopted -- anti-bootlegging legislation that prohibits someone from making unauthorized recordings of live performances and transmitting, duplicating, or "trafficking" in the sounds on that recording (see 17 USC 1101).
Did Band 2 violate the anti-bootlegging law? We know of no cases similar to yours -- where someone makes an unauthorized bootleg recording and then constructs a new recording (without using any sounds from the bootleg) that is similar to the unauthorized bootleg recording. We doubt whether this constitutes a violation of the anti-bootlegging law because Band 2 is not distributing the unauthorized recording to the public -- they're distributing their own recording. We think any claim regarding infringement of sound recording copyrights is going to be difficult to make. We think you'd be better off focusing on infringement of song composition copyright. (You can read about the differences between the two copyrights here).
The song composition copyright. If Band 2 registered the song composition at the U.S. Copyright Office (and you can check the records here), and Band 2  listed themselves as authors of the composition, that may amount to fraud on the Copyright Office. (Band 2 can't be the authors if they've pilfered the song from Band 1). We're also not clear about how much of this is an unprotectable "jam" and how much is a protectable "composition." That is, if you are registering a song, you can stop others from using some combination of elements such as bass parts, chord structure, lyrics and melody lines. You may not be able to stop the use of other combinations or elements, such as harmonies, drum parts, or common chord structure such as a standard 12 bar blues progression. Assuming Band 2 took enough to claim an infringement of a song by Band 1, we'd recommend using the original live bootleg recording (which you state you have a copy of) to register the work at the Copyright Office and then pursue a claim of infringement of the song copyright. Because the facts on this are so unusual, we'd welcome any reader comments.

Wants to Blu-Ray School Band Concerts

Dear Rich: I’d like to do multi-camera recordings of local high school band concerts and choir concerts.  I think I’m entering new territory by recording and possibly streaming the concerts. All proceeds from the selling of DVDs and Blu-ray discs go back to the school’s programs. I won’t be making any money off these endeavors. What kind of permissions do I need to secure? Do I need to contact the publisher for each piece that is performed? The correct legal answer is that yes, you would need to contact the publisher for each piece and get a sync license (we talk about it here), as well as permission from the school band performers and conductors (to avoid right of publicity claims). Since sync licenses are so difficult to obtain, we believe you can probably protect yourself just as well by getting a mechanical license instead of sync license. (Mechanicals are used only for audio recordings, syncs are for audiovisual recordings.) That would deflect any disgruntled publishers ... though we doubt any would want the negative publicity resulting from a brouhaha with a high school band.
Practically speaking ... If you are only selling the disks locally to members of the community, you can probably forego most of the permissions mentioned above. (It's what often happens when a tree falls in the intellectual property forest.) It may help to have something in writing (emails are fine) between you and the school that indicates you have their permission for your endeavor. If you intend to sell to a broader audience, you will probably need to get the permissions discussed above (and described in detail in the Getting Permission book.)

Can We Get Out of Record Deal?

Dear Rich: I am in a band and last year we signed a distribution and publishing agreement which has turned into an absolute mess. I used to sing in the band but subsequently have found myself less our singer and more our copyright lawyer. I am better at singing. Our agreement made us solely responsible for paying for and producing the master recordings - we did. The label's responsibility was in providing marketing, booking, and distribution - they didn't. As a result we told them they were in breach of contract and gave them a 60 day notice letter wherein they had 60 days to remedy their non-performance or be in breach and the contract would be terminated. The confusing part is that they then proceeded to put our recording up for sale through physical and digital means. We told them to stop selling based on the fact that no separate "Exclusive Co-Publishing Agreement" was ever reached. Below is an excerpt from our agreement outlining the publishing deal (names changed, Sub=band, Company=label): 

 You hereby agree to grant and assign to Company affiliated publishing company, Mr Publisher (ASCAP) a division of Mr Publisher Media Group LLC a 50% copyright and performing rights interest less collection fees and 100% administration rights in and to each musical composition written, owned or acquired by you during the term of this recording agreement ("Compositions"). In connection therewith, you agree to enter into a separate Exclusive Co-Publishing Agreement with Mr Publisher (ASCAP), the terms of which shall be negotiated in good faith, but which shall include the right of Mr Publisher (ASCAP) to administer the Compositions throughout the world and may elect to charge an administration fee of (ten 10%). Should Company and Sub decide to terminate this agreement all rights of copyright will revert back to Sub unless Company can prove substantial progress in its tenure of administering compositions. 

Since we are splitting the copyright does that mean they are able to continue selling our music without our permission? Are we able to register our masters with the copyright office on our own given they have a 50% stake? So confused... Whenever the Dear Rich Staff gets a long letter that includes excerpts from a contract, our first thought is usually, "Get thee to an attorney." We think that's the proper course of action in this case. Here's why:
The cure letter. If your basis for claiming breach of contract was a failure to market, book and distribute the band, then by providing the "cure" letter you gave the company 60 days to correct those omissions. If the label failed to market, book and distribute within 60 days of your letter, the agreement is terminated. Putting the music up for digital and physical sale isn't enough to cure. The label needs to demonstrate an effort to market and book the band, too (and correct any other omissions mentioned in your cure letter). If not cured, the label is in breach and your grant (assignment) of publishing rights would be terminated as well. In other words, terminating the record deal for breach would allow you to retain all of your publishing rights and there would be no reason to execute a written publishing agreement.
Get out of it! So, you should stay focused on ending the contract  which, by the way, seems a bit lopsided (welcome to the music business). As we understand it, you pay to produce the album and you give up half of your publishing. The label doesn't seem to be taking any risk. After all posting a recording is easy, and creating physical CDs can be done without much of a financial commitment. So, unless the label has an impressive track record with other artists, you'd do best to pool your money, hire a lawyer and make sure the agreement is fully terminated quickly. The annoyingly difficult part is getting the label to take down the music it has posted for sale. In conjunction with getting an attorney, you should also register your music at the Copyright Office and with a performing rights society. And of course, another reason to check with an attorney is that we could be completely wrong about all of this. A second opinion will help.
Hiring a lawyer. If paying for a lawyer is a challenge, find out if there's a volunteer lawyer for the arts service near you.

Needs LLC for Band

I greatly appreciate the downloadable forms that come with your Music Law book. However, would you have a sample LLC Agreement or can you point me to a good one to use for a band? We can't point you to an LLC for a musical group but hopefully the next edition of our book will include an LLC operating agreement for a band. Until then, you will need to copy (or adopt) the relevant provisions from the partnership agreements into the LLC agreement.  This article explains some of the differences between the two arrangements.
As you may already know, there's more to forming a band LLC than preparing the LLC operating agreement. Unlike a partnership, you need to file documentation with your state government. This article explains the steps to LLC-dom.

Can Band Leader Sign Contract for Band?

Dear Rich: Our band is built around a charismatic lead performer, kind of like Bruce Springsteen and the E Street Band. The band got asked to sign an agreement with an indy label. Except when it came time to sign, only the leader of the band signed, not the rest of us. Does that mean that only he is bound by the agreement? Does this mean that only the leader gets money from sales of recordings? The band members are probably not bound by the agreement (and therefore not entitled to income from it). Most labels that want to bind musicians make them sign the paperwork. However, the answer really depends on (1) how your band is structured -- that is, what type of entity you are (2) in what capacity the leader signed the agreement, and (3) what the agreement stated -- specifically are the band members named as "parties" to the agreement.
Leader as sole proprietor. If the leader hires the band members and pays them as contractors --- for example, contracting for performances -- then he is a sole proprietor and the band members are considered independent contractors. In that case, you would not be bound by the agreement unless you signed it, as well.
Partnership? If the band is a general partnership (the parties share in the liabilities and profits), band members may be bound by the signature. (You do not have to have a formal partnership agreement to be a partnership.) Typically, you're a partnership if you all contribute to the business (equipment, time and money) and share income (performance, royalties, etc.) In that case, any general partner can bind the band. So, if the leader signed the agreement on behalf of the band then the band could be bound. (Here's an article about contract signatures.) If you have a copy of the agreement, check to see whether the partnership is named as a party to the agreement, in which case all of the partners are bound "individually and collectively".
Corporation or LLC. If the band has incorporated or formed an LLC, the leader could also bind the band if corporate or LLC documents authorized the leader to sign on the band's behalf.