Band on the run – trademark strategies for television talent show artists

‘Strategy’ is the current buzzword for trademark professionals, but what does it involve? There is one general strategy that, circumstances permitting, most trademark professionals will advocate for new brands:

• Conduct clearance searches at the outset in key territories where the mark will be used.
• Once the mark is confirmed clear and all possible issues have been investigated and mitigated, register it for the goods or services on which it will be used, taking into account fair and reasonable expansion for the brand.

Generally speaking, such a strategy is best adopted if lawyers are consulted in the early stages of brand development and a good while before the product launch. But what if the circumstances are such that the trademark is unknown the day before launch? What if on that launch day, millions of people across several territories are exposed to the mark for the first time?

One particular industry where such issues are prevalent is the entertainment industry, in particular television talent shows. On average, over 7 million viewers in the United Kingdom tune in to watch the X Factor every Saturday evening. It is no exaggeration to say that singing hopefuls can become overnight sensations. The latest season introduced us to eight-piece boy band Stereo Kicks which, within four weeks of the show’s launch, had a Twitter following of 30,000, growing to 200,000 within 10 weeks. Against such a backdrop, traditional search and filing strategies are not necessarily viable.

This article considers effective (and ineffective) strategies and the lifecycle of a trademark in this environment, where the level of uncertainties and time pressures is far higher than in other industries. In particular, it looks at entertainment-specific cases where failure to conduct searches has proven problematic, examines possible searching models to be adopted for such marks and highlights the pitfalls to be aware of when applying to register a band’s name as a trademark.

Band names as trademarks

A band name is a sign which distinguishes a band and its goods from others. As such, it is a trademark in accordance with Section 1(1) of the UK Trademarks Act 1994 and Section 4 of the EU Community Trademark Regulation (207/2009).

The ability to commercially exploit the band name, the level of merchandising revenue and endorsement opportunities are all contingent on the reputation and goodwill attached to the band name. In short, it is an extremely valuable asset.

Following an appearance on shows such as X Factor, singing hopefuls can become overnight sensations – with trademark protection often far from their minds

Clearing the band name

The inherent nature of talent entertainment shows as fast paced and unpredictable means that the value of a potential brand may not be appreciated when a band name is created. As such, questions of timing and the scope of searches arise.

The bands themselves, unless they have already experienced some degree of success, are unlikely to know of any legal issues surrounding their name. Take 2013 X Factor contestants Kingsland, whose name was inspired by a road which they lived near in London. They were forced to change their name to Kingsland Road after a threat of action from a Canadian boy band of the same name. While this example illustrates that an agreeable settlement does not always require drastic change, it demonstrates what can happen when home-grown talents rapidly gain international exposure. Luckily for Kingsland Road, the additional word ‘Road’ did not greatly alter the band’s identity. However, not all battles can be so easily resolved. Home-grown bands may build up a local reputation and goodwill which must be abandoned in exchange for a name that enables international expansion.

Even before the new reality talent shows, there were numerous examples of bands that encountered problems with their names, principally due to issues arising in territories far afield. Understandably, little thought was given to this when the bands formed initially; and by the time that it did become an issue, it was often too late to change the band’s name easily. As a result, somewhat clumsy solutions have been reached. The band Suede is known as London Suede in the United States; likewise the Charlatans UK and the English Beat.

Returning to the X Factor format, some of the bands are formed when the judges bring solo auditionees together to form one group. Here the circumstances are somewhat different. While the time pressures of deciding on a band name are arguably greater, show producers have some control over the name and can conduct searches before broadcasting the name to the public and press. We know that searches can be conducted with a 24-hour turnaround.

Searches can avoid situations such as that in 2011, when contestants Rythmix had to change their name to Little Mix after a music charity of the same name filed a trademark opposition against the UK trademark application and threatened legal action. This year the public was invited to suggest a band name for now-named Stereo Kicks and the winner was announced during one of the Saturday shows. It would be interesting to know whether a worldwide search was conducted before this happened, particularly bearing in mind this risky strategy of relying on ‘inspiration’ from the public.

Some might argue that name changes are not a big deal; the publicity which surrounds such disputes is arguably the perfect platform on which to promote the new name and develop goodwill in a concentrated period of time. However, the One Direction (US versus UK) trademark infringement action, in which the claimant sought $1 million in damages, shows that the stakes can be high. While the dispute was settled with the US band changing its name and the UK One Direction continuing without change, one can guess that the resolution of the dispute presumably came with a hefty price tag.

The One Direction case illustrates that the fame of some of the contestant bands and the value and goodwill associated with their names can reach such a level that it is simply no longer a viable option to change names. A future claim for trademark infringement is the risk that must be borne when international clearance searches are not conducted. It is therefore imperative that a search be undertaken at the most appropriate point in time. However, this is not always easy to identify. The potential size and geographical reach of bands appearing on the show are unknown in the early stages, so – even in the face of difficult search results – the uncertainty of an act may mean that responsive action is not taken.

It is difficult to say that one search strategy is the perfect fit. While it is generally advised to conduct a search as soon as possible, particularly due to the possibility of rapid growth, this must be balanced with a cost/benefit analysis, according to the band’s progress through the talent show and likelihood of global success. The scale of exposure to the public and predicted success may determine the level of searches to be conducted and the stage at which they are conducted.

Trademark registration

If searches are carried out at the beginning of the cycle, then potential risks to successful registration will be highlighted and considered. In light of the potential overnight success of bands, the earliest filing opportunity should, generally speaking, be taken.

The later a trademark application is filed, the greater the leverage of an earlier rights holder which realises that there might be an opportunity for financial gain in objecting, even where there is no strong conflicting commercial interest. Further, as is explained below, delaying to register band names may increase the risk of objection on absolute grounds.

Drafting specifications when parameters are unknown

For more standard trademarks, the specification of goods and services is likely to be clearly delineated at the outset in accordance with the plans of the business, both present and future. A clothing brand, for example, may well consider filing in Classes 3 (perfumes) and 18 (bags), as well as 25 (clothing). However, band names know no such bounds. Given the widespread adoption of social media, a band’s music can cross borders in a matter of minutes and open various, sometimes unexpected opportunities for merchandising.

Readers might recall JLS’s controversial collaboration with Durex back in 2011 or have seen One Direction-branded toothpaste in their local supermarket – commercial endeavours that were unlikely to have been anticipated early in the careers of either band. A common thread of classes can be seen in recent applications by Simco Limited for this season’s X Factor bands Blonde Electra, Stereo Kicks and Overload Generation, in Classes 9, 16, 25, 28 and 41. Perfume and toothpaste deals do not appear to have been anticipated.

Owners of band name trademarks need to be aware of the bona fide intention to use declaration in the UK trademark application form. There are risks associated with broad and expansive trademark specifications, including refusal at examination, opposition or cancellation for bad faith and subsequent revocation for non-use. Such a declaration is not required when filing a Community trademark application, though many advocate its introduction.

The One Direction case illustrates that the fame of some of contestant bands and the value and goodwill associated with their names can reach such a level that it is simply no longer a viable option to change names. In 2014, Forbes listed them the second highest earning celebrities under 30, with the group earning an estimated $75 million from June 2013 to June 2014

2013 X Factor contestants Kingsland were forced to change their name to Kingsland Road after a threat of action from a Canadian band of the same name, illustrating that an agreeable settlement does not always require drastic change

When too much fame is a hindrance

Trademarks which consumers will perceive as a description of the goods or their subject matter will be refused registration under Section 3(1)(c) of the Trademarks Act.

In the United Kingdom, issues are likely to arise in respect of ‘mere image carriers’, listed as “posters, photographs, transfers and figurines” in the UK Manual of Trademarks Practice, though likely to be many Class 16 goods in practice. As expressed by Arnold QC (as he then was) when commenting on the registrability of LINKIN PARK for printed matter, books and posters: “if one imagines a consumer who wants a poster depicting ‘Linkin Park’ asking a shop assistant whether that shop stocks such things, he would be very likely to say ‘Do you have any ‘Linkin Park’ posters?’”

As the fame of the name grows, so does the likelihood of an objection being raised for goods of this type.

However, while famous names may be refused registration for mere image carriers, as they are incapable of functioning in a trademark capacity, passing off (discussed later) may nevertheless provide a remedy where the manner in which the band name has been commercially exploited misleads the public into believing that the use by a third party has been licensed or otherwise endorsed by the band (recent merchandising cases include Hearst Holdings Inc v AVELA Inc [2014] EWHC 439 (Ch) and Fenty v Arcadia Group Brands Ltd [2013] EWHC 2310 (Ch)).

Given the nature of talent entertainment shows, it is easy to see how a band’s overnight fame could act against it in terms of obtaining registered trademark protection for certain goods. Would the public not describe a poster of Stereo Kicks as a ‘Stereo Kicks poster’? The same restricted approach does not seem to be applied at the Community trademark office. The recent applications by Simco Limited filed between September 30 and October 10 2014 have all been accepted in Class 16. One wonders whether the outcome would have been different had the applications been filed later, once stronger fan bases had established themselves. Or perhaps we might simply infer that the bands’ fame has not penetrated the European market yet.

For now, depending on the trademark’s territorial reach and degree of fame, Community trademarks may offer greater benefits to applicants for band names.

Ownership of trademark registration

The question of who owns the trademark registration for bands launched via television talent shows is an interesting one. The trend has been for the production/record label to legally own the registrations, for both band names and individual contestant names. Having been given a potentially life-changing opportunity, it is assumed that contestants are happy to agree for all IP rights in their name to be owned by the production company. This can lead to issues should the production company and band ever part company – particularly as relationships can disintegrate quickly, with some X Factor winners being dropped within a year.

Some artists may find that their fame and status enable them to negotiate a better deal, including taking ownership of their name. In May 2014 the LITTLE MIX trademark was assigned from Simco Limited to Eternal Dance Media Limited, a company set up by the members of the group. A similar story exists for the ONE DIRECTION marks, which were assigned to 1D Media Limited.

If the band can own the trademark from day one or subsequently acquire it, advice should be sought as to who should own the mark, taking into account the fact that band members do sometimes change over time.

Unregistered rights

In the absence of registered rights, band name owners may have recourse to the law of passing off in the UK courts.

Three elements established in the Jif Lemon case (Reckitt & Colman Products Limited v Borden Limited [1990] 1 WLR 491) must be proven:

• There is goodwill or reputation attached to the goods or services;
• There has been a misrepresentation by the third party that will lead or is likely to lead the public to confuse its goods as being those of the band; and
• Damage has resulted or will result from the misrepresentation.

There are no hard and fast rules in respect of the period of time in which goodwill is accrued. Passing-off rights can be established extremely rapidly. Given the amount of publicity surrounding X Factor contestants, it is not inconceivable that some band names will have acquired sufficient goodwill to substantiate a claim for passing off after only a couple of weeks of being broadcast at prime time to millions of viewers.

Passing off should not be seen as an alternative to trademark registration, but rather as supplementary to such protection. The fact-dependent nature of a passing-off claim means that forecasting outcomes can be difficult.

Compare, for instance, two passing-off claims brought by funk band Liberty and 1970s rock band Blue against 1990s and 2000s bands of the same name. Liberty was able to show residual goodwill and misrepresentation to succeed despite the facts concerning bands of different music eras and genres. In the second action (later settled), Justice Laddie was reported to have said, when comparing the bands: “Are you seriously saying that fans of one group would mistake one for the other? There is somewhat a difference of appearance. One is aged like you and me, the other is a boy band.” Such a response might be criticised and it is difficult to see how the same approach could be taken in recent times with the trend of past bands re-emerging on YouTube. Nevertheless, this does not alter the fact that the success of establishing misrepresentation lies in the strength of the evidence submitted and will always turn on the facts of the case.

Conclusion

In the real world, it is only in very exceptional cases that a normal brand becomes a sensation overnight. A band name launched rapidly from a television talent show demands a different approach with a much greater sense of urgency and greater risk of infringement from that usually adopted in other sectors.

The launch of a clothing brand or new soft drink can be carefully managed, with trademark clearance and protection strategy closely integrated into a prolonged preparation period. The launch of bands is not as easily managed. They can become household brands overnight and operate in a creative/entertainment industry where the importance of a clearance and protection strategy is still surprisingly overlooked.

This is despite the fact that in the digital age, exploitation of the band name is an increasingly valuable revenue stream, as traditional revenue from music sales continues to fall. With the role of social media, the YouTube generation and music apps and websites, a band’s fame can cross borders in a matter of minutes. Managers and producers want to strike while the iron is hot and exploit the band’s fame while it is at its peak, particularly as this may be only a matter of months, if not weeks.

However, the strategies that lawyers ordinarily advocate for new brands do not always seem to be followed in the rapid trademark lifecycle of band names, particularly those emerging from entertainment reality shows. Otherwise, there would be far fewer trademark disputes further down the line.

For the reasons explored in this article, it is far from easy to have the foresight, time and resources to build a cohesive search and protection strategy into the rapid launch, growth and often fall of a new talent show band.