Law Office of Alan Korn

Specializing in art, entertainment, intellectual property and business law.

CHOOSING A BAND NAME

This column deals with some of the issues bands deal with when choosing a band name. To illustrate these issues, I’ll refer back to my own experience as a member of the Cat Heads. Sam thought up the original name, which we all agreed was quite clever. Did Sam own the name, because he thought it up? No. Remember that rights in trademarks and service marks are only established through actual use in commerce. Based on our actual use of “Cat Heads” in commerce, the band partnership acquired rights in the name, rather than the clever guitarist who thought it up.

After a few well-received shows the Cat Heads developed a decent local following. If another band named Cathead from England came along and signed to a major label, could we have sold the right to use the name in our geographic area? Yes. Band names are a form of property that can be transferred, or in some cases even owned by entities outside the band. For instance, there are many famous situations where band managers or record company claimed to own rights to a band name, arguably entitling them to fire old members and add new ones. One such dispute involved Fleetwood Mac’s old manager, who sent a fake “Fleetwood Mac” on a U.S. tour in the early 1970s. On the other hand, where the name and goodwill of the group is personal and unique to its members, it may not be possible to transfer that name to another band.

But I digress. The Cat Heads did reasonably well for a while, but after several tours and two records deemed “commercially disappointing” by the record company, we decided to break up. By then, the Cat Heads had acquired a limited amount of goodwill in the name. However, the band never had an oral or written agreement concerning who could use the name if the band broke up. So who kept the name?

In some cases, this question has led to lengthy and expensive litigation. Several court rulings have addressed who owns a band name. In the case of the soul band The Dramatics, one court ruled that the name belonged equally to each of the members, so that any former member could continue to use the name on a non-exclusive basis. This result is not particularly satisfying, since fans of the old band are generally unhappy to pay money to see a band with entirely new members. In another case involving the band Rare Earth, which had earlier incorporated for business reasons, the court ruled that ownership of the band name belonged to the party that retained corporate control. Another court ruled that the manager of Vito and the Salutations owned the band name, because he had “exerted influence over the style and content of the group’s act” and “functioned much like the producer of a theater company or owner of a sports team.”

Unlike the manager of Vito and the Salutations, our manager wanted nothing to do with us or our name after we disbanded. Instead, two former Cat Heads decided to continue recording and performing as It Thing. Sam and I choose to call the band the (ex) Cat Heads. Is this permissible? Because there was no written agreement concerning who could use name, each former member was arguably entitled to use the name on a non-exclusive basis, as described in the Dramatics case above. [1] On the other hand, was it a good idea? Well, some feelings were hurt, and things could have gotten confusing if It Thing decided to call itself the (New & Improved) Cat Heads. Did retaining elements of the old name preserve any “goodwill?” Perhaps, though sales of our subsequent album were also “commercially disappointing." After a year we gave up and, except for some occasional college airplay, use of the Cat Heads name in commerce was officially discontinued. On the other hand, it was fun to refer to ourselves as “formerly (ex) Cat Heads.”

Another brief digression: Assume the Cat Heads haven’t performed in 12 years, but they still generate a small amount of income from college radio airplay. Can another band use the name? Well, in a case involving the 1960s pop band the Buckinghams, a court ruled that although that group had broken up and not performed in many years, another band was still not entitled to use the name. The court pointed out that the original Buckinghams continued to receive royalties from record sales, and this was deemed sufficient proof that the name was still being used in commerce.

Fast forward to the present. Sam is back in town, and we decide to reassemble the (ex) Cat Heads. Since Barry’s in England performing in a Ramones cover band, Florence is recruited to join the band. Because Florence writes half our songs, we decide it’s time for a new name, one that is descriptive and maybe has some “goodwill” of its own. We discuss The Dores, using Florence’s surname. The name is descriptive, and the spelling is unique. However, the Doors still enjoy world-wide name recognition, and we could be sued or mistaken for a ’60s cover band. How about Korn? Too late. While descriptive (of me), the name Korn is has also acquired “secondary meaning” for another band (no relation), and there could be likelihood of confusion and possible litigation if I try to reclaim it. What about “Korn, Jr.” or “Korn, U.K.”? While slightly less deceptive, this name could still annoy to a large record company, and there remains the risk of being mistaken for a “corny” San Francisco tribute act. We decide to abandon “descriptive” surnames, which are entitled to somewhat less trademark protection anyway. We decide to find a name that is “suggestive,” or better yet, “arbitrary and fanciful.”

Different names are thrown back and forth. We come up with some good ideas, and figure an initial DIY (“do it yourself”) search is in order before hiring a firm to conduct a thorough U.S. trademark search. We consider a database search of the U.S. Office of Patents and Trademarks to see what names may already be taken. We also check out other music industry resources, including the Billboard Directory, Phonolog Reports (an index of records that is available in computerized form in larger record stores), “All Music Guide,”, Alta Vista and other Internet search engines.

Our search produces a decent list of names that may still be available, including “Cat Star,” “The Alabama Girls,” “Dear Doctors,” “Soundpile” and “Cheap Truck.” We settle on the Mudsills for no particular reason except we all agree on it. We immediately go to City Hall to register it as a fictitious business name. Because we’re not strongly attached to the name, and because the name has not yet acquired any goodwill, for the moment we put off a decision to register for an ITU (“intent to use”) application with the Office of Patents and Trademarks. But to avoid future hassles, we decide to create a basic agreement that says no leaving member can use the name.

So, that’s our story. We’re now officially the Mudsills, and assuming we don’t break up or sell the name to some major label “No Depression” band, it’s possible the Mudsills (SF) may soon be playing a town near you. If not, at least you picked up a few good tips on what to do (and not do) when choosing your next band name.

Postscript (January 2001): The Mudsills lasted all of 6 months. We performed a bit around the Bay Area and recorded a fine 3 song cassette demo (copies are still available — contact me for details). Because the mark has not been used in commerce for over 3 years, it is now considered “abandoned.” At least until our next reunion show...

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1. Interestingly, the 9th Circuit Court of Appeals recently ruled it was permissible for the former bass player of a popular 1960s band to describe himself in advertisements as a “former member of Steppenwolf,” although he had agreed not to record or perform in any bands using the name Steppenwolf)

Alan Korn
Law Office of Alan Korn
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