By Maria T. Cannon
Maria T. Cannon is a junior associate at Amineddoleh & Associates, LLC, in Manhattan, an art and cultural heritage law firm, practicing entertainment, media, art, data protection and privacy law. in Manhattan. Maria earned her J.D. from the University of North Carolina Law School and completed her undergraduate degree at Wake Forest University in English Literature. She is admitted to the New York State Bar.
Budding musical talent often approaches our firm with questions about trademark registration for their artist names. This has long been the case, but what’s changed is my personal opinion as to when a recording artist or group should trademark their band’s name. In previous years, I’ve hedged on the side of being fiscally-conscious of my clients’ bank accounts. While (as an EASL lawyer) I know the clear pros of registering a band’s trademark (national protection, increased brand visibility, and legitimization in the industry), I’ve always wanted to view the timing of a band’s trademark as a piece in the band’s holistic journey.
For example, it’s never made sense for me to suggest that a band who is only doing local shows (and has no plans or desires for national tours) invest in trademark protection. Bands of that tier are typically in it for the fun and release of performing, and not to set out as the next major artistic force. I’ve even been hesitant to push more mid-tier clients (bands who are regularly performing and have a sizable online fan base, but who are generally restricted to a single geographic area and modest number of monthly streamers) to register right away. For those clients, I’ve often advised registration as a next step after first investing in more consumer-facing products, such as videography for social platforms and professional fashion consulting and styling. It has made sense in those cases for bands to wait, as they test out their identify as a group and build the appropriate street-cred to justify spending hundreds-to-thousands of dollars on registration.
Advocating caution in those situations is tough, because I’m certainly pro-registration. However, the financial drain it can put on a band just starting out has been hard to ignore. For truly famous bands who have trademarked their IP, and gone on to become wildly successful, the benefits of early registration seems so obvious. Yet for some of these mid-tier, talented yet not-quite well-known artists, registering too soon can put bands in the red, before they’ve even had the chance to make a real go of their acts.
As a result, I’ve emphasized to these clients of the benefits of registration – using, for example, The Grateful Dead and the evolution of the “Dancing Bears” from colorful sketch to the preppie label Smathers & Branson licensing deal – to ensure that trademark registration is something we talk about very soon down the line. (https://www.smathersandbranson.com/collections/grateful-dead-1?limit=10000&sorting%5Bprice%5D=asc&gad_source=1&gclid=CjwKCAjwvIWzBhAlEiwAHHWgvcnhBs-KGMNgVWpI0RrdSyZgcunz4GB60SYm61vXi3hKIpbzdBh13BoC_B4QAvD_BwE) The band is a business, I’ve always said, and registering a trademark will be one of many business decisions. I want to advocate for a more fiscally reasonable approach to the registration process, while informing the client that the benefits of registration reign over the only downside (cost).
I still believe that registering a trademark is a business decision, and should be made by the client at the right time. What has changed is that I now think that the “right time” is sooner in a band’s life than it was even 10 years ago. The rise of AI, potential to go viral on TikTok, and easy direct-to-consumer merchandizing means that IP registration should now be the first group purchase as a band. Even before doling out funds from recent gigs on content for social, protecting the brand name and identity is essential to ensuring the band’s legacy.
Moreover, the increased trademark protection for brands resulting from Jack Daniels needs no introduction. (Jack Daniels’s Props v. VIP Prods., LLC. 599 U.S. 140 (2023)) Combined with the potential for talented, yet unknown bands to go viral makes the increased protection for a band’s mark used in a source-identifying way crucial for bands who do hit it big to protect their artistic integrity. A copycat could easily use a band’s name and logo in a source-identifying way on its own unofficial merch. Worse, online scammers could use unregistered band names and logos to produce fraudulent accounts that ruin the reputation of noble artists. As a result, for working artists who regularly produce audio and video content, the continued possibility for overnight visibility cannot be undervalued. Combined with the strengthened power for source-identifying work from Jack Daniels, bands need to register – and register early.
Thanks to TikTok, Reels, and other short-form video platforms, artists should always be prepared to go viral – and to have internationally visibility pose a real threat to their IP. Now, when mid-tier, content-producing artists come to our firm and ask about the best time to register their marks, I tell them, “Yesterday.”
Note: Jack Daniels should scare any possible copycat who uses a band’s registered trademark as a source-identifier. This is a no-brainer to anyone who read the opinion, even though the lower courts continue to discuss exactly what the agreed-upon test for a source-identifying infringing use is (is it a question of law? Of fact? Both?). In the interim, we can advise our clients that, with the strengthened trademark protection for brands resulting from Jack Daniels, the smartest move is to protect their bands’ IP as if it they were already recognizable brands, ripe for potential infringement by swindlers looking to profit off their success. See, Jack Daniels’s Props v. VIP Prods., LLC. 599 U.S. 140 (2023). See, also, Homevestors of Am., Inc. v. Warner Bros. Discovery, Inc., Civil Action No. 2201583-RGA, 2023 U.S. Dist. LEXIS 18653, at *8-9 (D. Del. Oct. 18, 2023) (explaining that the Jack Daniel’s Court failed to explain a method for determining whether the mark used in a source-identifying way “is a question of law, question of fact, or mixed question of law and fact.”) Id.