At Cordero Law, we strongly advise our music industry clients to file for registration of trademarks related to their band, music compositions, and other artistic works. Trademark is another word for “brand.” Every band and musician has a unique and valuable brand — trademark — and creating, popularizing, and defending a brand usually involves great effort. As the US Trademark Office states, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. See general information here.
However, after engaging in the hard work of creating your trademark, there comes the happy day when you are offered a recording contract or a music publishing contract. When that happens, great caution must be taken to maintain legal control over the band’s trademarks.
Generally speaking, recording contracts require that the band, musicians and songwriters give up — assign — any copyrights with respect to the music. That is normal.
However, every artist should be very reluctant to give up their trademarks. This can happen accidentally even if an artist is aware of the issue because a recording contract can use sneaky legal language. When an artist assigns a copyright or trademark, that means that the artist transfers ownership to another. This is what happens, for example, if you sell your house or car, you transfer ownership to the buyer. Instead of assignment of their trademarks, artists should insist on licensing their trademarks. A license is permission to use that does not grant ownership. A license can have a term, such as one year, or be perpetual. Licenses can also be exclusive, only one person/company has permission to use, or non-exclusive. For musicians, trademark licenses should be non-exclusive and of a limited term.
As said, legal language in recording contracts can be “sneaky” with respect to trademark assignment. Consider this provision in a hypothetical recording contract:
“Assignment of Copyright And IP — To facilitate distribution and commercial exploitation of the Work, BAND hereby assigns to the COMPANY all right, title and interest in and to the Music Recordings and the Work and all other intellectual property related to the Work. BAND grants a perpetual license to the COMPANY to use the likenesses and biographical information of the individual BAND members for the marketing of the Work.”
The “sneakiness” comes in the phrase “… and all other intellectual property related to the Work…” Trademarks are a type of intellectual property. With this language, the band will be required to sign a document assigning ownership of the band’s trademarks since the trademark is related to the music (or so the production company will argue). Note that the band members are also giving up trademark rights with respect to their individual likenesses.
As noted, musicians and artists WANT a production company to be able to USE their trademarks, without allowing the company to OWN them. The above contract provision should be changed to remove the language about “all other intellectual property” and language should be added stating something like: “BAND grants a limited non-exclusive license to the COMPANY to use BAND’S name and other trademarks.”
Contact an Experienced New York Music Lawyer Today
For more information, contact the business, entertainment, and IP lawyers at Cordero Law. Our entertainment law practice focuses on the music industry. We can help if you have questions about registering your trademarks, about recording contracts or about music licensing agreements. You need top-tier music industry attorneys to help with these complex legal matters. Contact us via our online Contact Page or by calling (212) 960-8890.