Cease and Desist Using Band Name

Dear Rich: I just received an email today regarding a copyright/trademark infringement from an international source -- a band in England claiming to have an international registration for the a band name similar to our band (a local band in WI playing shows). To me it seems like a scam but a trademark search does reveal the registration. I know there are many other bands with a similar name in and around the country. Is this for real? What's my course of action? The British band has a valid U.S. trademark registration for a design mark --  a combination of the band name and an image. That gives it a leg up in any trademark battles because registration creates a nationwide presumption of priority -- that is, a presumption that the band was the first user of the name and that your subsequent use is likely to confuse the British band's fans. That's a presumption that you may be able to overcome. The fact that there are many bands with similar names may benefit your band if you can demonstrate that these bands have coexisted without any fan confusion -- that is, nobody has shown up at the gigs disappointed that they weren't seeing the band from Britain.
How far will they take it? Of course, sending out a threatening email doesn't cost anything. But hiring an American attorney and pursuing the claim may be too expensive for the British band. You may want to research the British band's business -- Are they signed to a label? Are they touring in the U.S.? Have you Googled "[band name] lawsuits"? It's possible that you may assess the risk as blue or green, not orange or yellow. On the other hand, knowing there are so many bands with similar names may prompt you to change yours.

Musician Claims Contract Signed Under Duress

Dear Rich: I recently resigned as a guitarist from a band I had co-founded due to harassment. Upon leaving (and under duress), I was forced to sign a 'departure contract' formed by one of the band members (no legal background). This contract had stated that I am not to be paid any money for the work I had put into the band. I was the main songwriter and producer in this project and wrote guitars, bass, drums. They gave me performance credits on the album but will not acknowledge compensation for this work. The band has been getting some strong publicity now and I would like to know what my rights are as a now departed member of the band?  Should I contact a music lawyer? Should move on or wait it out? I would just like to get closure and know that the work I put in wasn't rewarded to someone else. In order to reach a state of epistemic "closure," you must "uncloud" your uncertainties (at least that's what Wikipedia says). So here goes.
Can the contract be enforced against you? A valid contract is one that a court will enforce. Some reasons your contract might not be enforceable are if (1) it violates the law or public policy, (2) there's no consideration -- you didn't receive any benefit from the arrangement, (3) the other side fraudulently induced you to sign, or (4) you were coerced (duress) into entering into the agreement. If fraud or duress are present, then you can void the contract. All parties are released from their obligations and you can pursue your claims against the band. In cases of intentional fraud—for example, if a band mate deliberately lied to induce a deal, you can elect to seek additional damages under tort law. (BTW, even if the agreement is valid, you may also have claims that the other side breached it, thereby terminating the agreement.)
What is duress? Duress occurs when a party’s consent to a contract is physically or mentally coerced. A party under duress lacks the legal free will to refuse to sign. Therefore, the agreement is not voluntary and the contract that results must be voided. Threats of physical force are rarely used as a means of inducing a contract. Instead, economic duress has emerged as a bigger issue. Economic duress (also known as “business compulsion”) occurs when, for example, a supplier of goods jacks up the price on a customer who is in desperate need of goods, or one party threatens to breach an existing contract unless the other party agrees to some further demand. But keep in mind that proving duress in a court or at an arbitration -- which is where you'll have to prove it -- requires more than threats. You'll also need to show you had no other choice but to comply, a sometimes difficult task.
Does the agreement transfer copyright? The musical compositions and the musical performances are works that are subject to copyright. In order for the band to acquire those rights, the agreement (or some other written agreement) must specifically transfer these rights. If the agreement doesn't say anything about copyright ownership, your rights in those works may be unaffected and you are probably free to register your rights in your name. Along with that, you can exploit your interest in the songs and collect royalties for their use.
Bottom Line Dept. If you want true closure, you should see a music attorney.

Should We Register at BandName.com?

Dear Rich: We have three possible band names that we want to use. We're going to decide when we finish our record next month. We can't afford to file a federal registration for all three so you do you think it's worth it to pay $45 to register the three names at BandName.com. We're not positive, but we don't think that BandName.com would want you to register band names unless you are using them. To "reserve" band names at the directory would defeat one of the purposes of the site, which is to put the world on notice as to which names are currently being used.
Is it worth it to register? According to our research, BandName.com is an online directory of band names that you can search at least six times without having to pay a fee. After six searches, there is a $15 fee that enables unlimited searching and registration of your band’s name. If you're doing a lot of searching for band names, it's probably worth the $15. Bandname.com appears to be a fairly thorough band directory that includes bands that have registered and more importantly, many who have not. We tested two obscure bands that had not registered with the service and they both showed up. At the same time -- and as the site points out --  just because a band name is in the directory doesn't mean that the name is currently in use.
What does registration of the band name get you? We’re not sure what the registration of a band name at BandNames.com gets you … apparently your band’s name is included in the online and print directories, thus serving as notice to others searching the directory that you are claiming rights in the name. It’s true – as the website claims – that establishing prior usage is the key to preventing legal challenges. But registering at BandNames.com does not establish prior usage, it merely records your claim. You establish prior usage by selling recordings, playing shows and by selling music and merchandise on the Internet under the band name. In other words, much as we like it as a search engine of band names, we don't think that registering with the service will gain any new rights for you.

Old Band Videos: No Releases

Dear Rich: We have extensive old video footage of bands (a lot of it is over 15 years old) that I have been dubbing and want to try and do something with online and try and make a little cash. The bands were aware we were filming and had the option to purchase the masters, but chose not to. Could these be considered our art as we shot them and physically possess them. Most of the bands are now defunct and it would probably be hard to track them down for a release form, as most of our dealings were verbal agreements. If we start to do new ones, I would get a release from the band, but even if they signed it, would we (video crew people) be able to upload and charge for others to view and or purchase them?  Just thinking about the legal hoops you will have to go through has made us turn up the caffeine drip. (We've set out the legal rules below.) May we suggest another  strategy? Forget everything we're about to say and just do what you want. Unless one of the former band members later became a lawyer (and it happens) or is willing to hire an attorney, chances are likely your posted videos will become just more flotsam on the sea of low level infringements that are either drowning or enhancing popular culture (the grand jury is still out on that one). In any case, based on the odds, you're likely to survive intact. If there is an objection you may have to take down the video (not unlikely), or you may even have to deal with a lawyer (possible, but unlikely). However, what is extremely unlikely is that DOJ helicopters will land on your front lawn, forcing you to retreat to your safe room with a shotgun. (And can anyone tell us what's to become of the copyright of the fabulous MegaUpload theme song?)
Right, you had a question. You probably own the copyright in the videos because you shot them. The band (or their publishing company) probably owns the copyright in the songs (unless they are cover songs). If you want to include copyrighted music in a video, you need what's called a sync license from whoever owns the song publishing. Getting releases would help as you plan to make money from the band's trademarks and the members' individual personas. (BTW, whoever owns or possesses the masters doesn't matter too much; what usually matters the most is who possesses the legal rights.) BTW2, we've answered similar questions before (just type "sync license" into the "Search Dear Rich" box on the right) ...  just sayin'.