TMN Ask A Lawyer: What’s In A Name?

TMN Ask A Lawyer is a semi-regular column where our readers receive expert legal advice from a renowned entertainment lawyer.

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:: ASK A LAWYER - BREACH OF CONTRACT

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::ASK A LAWYER - P2P FILE SHARING

Q: My band recently received a cease-and-desist letter from a company that has the same name as us; what will happen if we don’t change our name?

A: Naming your band can be quite a fraught exercise. There are only so many names to go around, many of which may have been used by bands in the past, are being used by people and companies in other areas, or have certain cultural sensitivities (as Shihad found out in 2001).

The answer to your question depends very much on who the complaining company is and how much appetite you have for risk.

As you use a name in connection with your goods and services you build up goodwill in that name. People begin to connect the name with the business or the brand, and the value of the name increases. If someone else then starts to use the same name in an identical or similar area they can leverage off of your success and all the hard work you’ve put in, or they could damage your reputation if they aren’t great and people confuse them with you.

The trade marks system provides registered protection for the use of names, logos, and other things such as colours and smells, in connection with particular goods and services. Given you’ve asked about names here, we’ll limit our discussion to that.

To obtain a trade mark you have to show that you have been using the name, or are preparing to use the name, in connection with the types of goods and services you’re seeking registration for (these areas are called “classes”). For instance, you could register the band name “Splash” in connection with recordings and live musical performances, and a pool company could also register “Splash” in connection with pools. The identical registered trade marks can easily coexist because there’s no crossover in the types of business.

If the company that sent you the letter has registered a trade mark in classes that cover music then their chances of success in an action against you are probably quite good, so you should think about changing your name. If they haven’t registered, they may still have a case, but there’s more scope for you to fight.

There are three ways you could respond to the letter:

1. change your name;
2. do nothing and hope they go away; or
3. go on the offensive.

Option one is pretty straightforward. If you can’t be bothered with the hassle and you haven’t been using the name for long enough to have built up a huge following, consider changing it.

Options two and three carry more risk. If you choose to do nothing, and you continue to use your name, or if you push back and say they have no claim, it’s possible that the company will commence court proceedings. If this happens it can be quite expensive to fight, even if you have a good case. If it gets as far as court, the party that loses will usually have to pay the legal costs of the winner in addition to any orders for compensation made by the judge, and you may end up having to change your name anyway.

If you’ve received a cease-and-desist letter it’s a potentially serious situation, so you should have a lawyer look at it and advise you on what to do next. That might cost you a few hundred dollars, but that’s much less than it will cost you to make the problem go away if it gets to court.

Andrew Cameron works for Brett Oaten, who established his legal practice during the grunge era, and specialises in music and other entertainment matters. In the music industry Oaten principally represents artists and some current clients include 360, Angus & Julia Stone, Empire Of The Sun, Lorde, and Troye Sivan. Oaten is also a founding board member and life member of FBi Radio.

Submit your questions to info@themusicnetwork.com or tweet them at us: @themusicnetwork

To read more about Brett Oaten and to get in contact, visit his firm’s official website brettoaten.com.au. Oaten tweets at: @brettoaten