Why You Need to Be Aware of the UDRP
The Uniform Domain Name Resolution Policy (UDRP) provides important protections for trademark owners against illicit domain name registrations that infringe on their exclusive trademark rights.
This article published on Tech.li provides an overview of the requirements for a trademark owner to succeed in a UDRP action, and provides a real-world example of just how effective a UDRP action can be.
You can read the full article here: Why You Need to Be Aware of the UDRP.
Is someone cybersquatting or typosquatting on a domain name that should rightfully be yours? Click here to contact Fabian, LLC for a free consultation.
Revisiting the Californication Trademark Dispute
When two companies want to use the same trademark, the analysis usually focuses on whether and to what extent their respective goods or services are offered to the same groups of consumers (this is, of course, a gross oversimplification, but for these purposes it is somewhat sufficient).
However, before you even get to this question, a company seeking to enforce trademark rights first needs to make sure that it in fact is in possession of a protectable trademark.The dispute that arose between the Showtime network and the Red Hot Chili Peppers regarding use of the term “Californication” highlights this issue. It also addresses one of the questions that I receive most often, “Can I use a trademark that is already in use by someone else?”
You can read the full article here: Revisiting the Californication Trademark Dispute.
Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists business owners in protecting their interests so that they can stay focused on running their businesses. Visit fabianlegal.com for more information, or follow Jeff on Twitter @jsfabian.
Or, to join our mailing list and receive our free e-book, “Intellectual Property for Business and Media”, please click here.
Media and Entertainment Law – My Top 10 Articles of 2011
As the year comes to a close, we take a look back at our top 10 sports, media and entertainment law blog posts from 2011:
Brand Monitoring for Musicians, Athletes and Other Performers
Legal Representation for Individual-Sport Athletes
Negotiating Sponsorship Agreements – From the Sponsor’s Perspective
Legal Basics for Starting an Independent Record Label
Music Contracts 101 – The Management Contract
Income Provisions in Publishing Contracts – Bonuses, Advances and Royalties
Can I Protect My Book or Album Title as a Trademark? Sort of. It Depends.
Generic Domain Names Make Good Strategy but Bad Trademarks
Cybersquatting: What it is and What You Can Do if Someone Cybersquats on Your Trademark
How and Why to Register the Copyrights in Your Website Design
It’s been a great year, and I look forward to helping more athletes, musicians and entertainment professionals in 2012.
Visit http://fabianlegal.com for more information.
Legal Representation for Individual-Sport Athletes
For most professional individual sport athletes, aside from competition awards, sponsorship, endorsement and licensing contracts represent the lifeblood of their existence and the road to ultimate financial stability through their craft. When pursuing these types of income-producing opportunities, it is crucial for athletes to make sure that they are not taken advantage of, and to ensure that their rights and interests are adequately represented and preserved by these contracts. I have previously written about some of the key contract terms in sponsorship, endorsement and licensing agreements. This article focuses on one key aspect of these types of athlete contracts—exclusivity.
Exclusivity can mean different things and have different implications in different circumstances. First, exclusivity can pertain to the athlete’s rights and obligations to use and promote a sponsor’s products. For certain products, such as skateboard decks, bowling balls, or golf shoes, this type of exclusivity makes sense—the athlete can reasonably be expected to use and promote only a single sponsor’s products in these primary product categories. However, in other product areas like apparel, exclusivity makes less sense, and can limit the athlete’s income-producing opportunities. A possible exception would be in video shoots, where a sponsor may want the athlete to wear exclusively its apparel throughout the duration of the shoot. For the benefit of both parties, though, these types of exceptions should be expressly accounted for in the parties’ written agreement.
Second, with respect to endorsement contracts and license agreements, exclusivity can relate to a product type, or even an entire field or market of products or services. For example, an energy bar manufacturer may seek to have the athlete endorse only the manufacturer’s energy bars. On the other hand, it may seek to prevent the athlete from endorsing any other energy products—or even any other food products—citing the potential for dilution of marketing power and oversaturation of the product market. This type of broad exclusivity can significantly limit the athlete’s income-producing opportunities. Such exclusivity restrictions should typically be avoided if at all possible—particularly in the early stages of an athlete’s career, though they may be appropriate under the right circumstances.
By negotiating the terms of their sponsorship agreements, license agreements, and endorsement contracts, individual sport athletes can better position themselves to maximize the economic returns from their careers.
Fabian, LLC represents athletes, agents and entertainers in a wide variety of transactional legal matters. Visit www.fabianlegal.com or www.marylandentertainmentlawyer.com for more information, or contact us directly at 410.908.0883 or jeff@fabianlegal.com.
Yes, You Need to Read the “Miscellaneous Provisions” in Your Contract
This post on Fabian, LLC’s IP, Business and Franchise Law Blog discusses some key “standard” contract provisions that need to be understood and considered–if not heavily negotiated–before you sign any binding agreement. The provisions discussed are particularly relevant to the media and entertainment industries: Yes, You Need to Read the “Miscellaneous Provisions” in your Contract.
Legal Basics for Starting an Independent Record Label
As more and more musicians seek to make a living (or at least make a profit) off of their music, and as many would-be music licensees look for alternatives to the high royalties demanded my many of the major record labels, there is a growing demand and and developing trend toward smaller, independent record labels coming onto the scene in a big way. Independent record labels, when adequately funded and led by people with the necessary drive (or the right connections), serve an important and valuable role in today’s music marketplace. However, these are not the only important precursors to a successful label. The music business is driven by contracts, and independent record labels need to have the appropriate contracts in place and at the ready in order to (i) protect themselves, (ii) protect their artists, and (iii) enhance their legitimacy and increase their chances of landing distribution and licensing deals. This article provides an introduction to some of the basic contracts involved in developing and operating an independent record label.
Operating Agreement
The first critical contract for any independent record label is the Operating Agreement, partnership agreement, bylaws and shareholder agreement, or other governing documents for the record label itself. In an industry such as the music business where so much is at stake and so many players can be involved in any given transaction, it is particularly important for the record label to operate and administer itself as a proper legal entity. In addition to supporting the record label’s limited liability protection (as an LLC or corporation), the Operating Agreement (or comparable document) will set forth each of the owners’ respective ownership interests, management and voting rights, and rights to receive distributions from profits. While two business partners may be on the same page today, nothing guarantees that won’t change tomorrow, or when a significant amount of money is at stake later down the road.
Recording Artist Agreement
The next, and perhaps most obvious agreement that is critical for any record label is the agreement between the label and its artists. This agreement will set out the parties respective rights to share in the financial rewards of the artist’s efforts to create records, and the label’s efforts to produce and sell them. This will include a royalty and advance structure, and will identify which party is ultimately responsible for recording costs, mechanical licenses, and other expenses associated with the distribution and licensing of records. Beyond the financial aspects of the parties’ relationship, the recording artist agreement will set forth ownership rights, performance and delivery obligations, and other terms governing the parties’ relationship.
Music Production Agreement
With the bevy of independent producers in today’s music marketplace, it is a good idea for independent record labels to have a standard music production agreement on hand, and make sure to have it executed when their artists go into the studio to record new tracks. The production contract indirectly (if not directly) benefits the record label by clarifying and establishing ownership rights in the songs produced, and also provides representations and warranties that will protect both the artist and the label in the event that a sample or backup vocal results in a copyright infringement claim at some point down the road. In addition, among other things, the production agreement can also be used for ensuring timely delivery of a commercial-quality master recording that can be reproduced and distributed by the label.
Record Distribution Agreement
On the other end of the process, the record distribution agreement comes into play when the label makes a deal to have an artist’s records on the shelves or available for consumer download. Like the other agreements discussed above, a properly drafted record distribution agreement will, among other things, establish financial terms, define the scope and duration of the retailer’s license to display and sell copies of the record, and generally govern the parties’ relationship.
Form Licences and Other Contracts
In addition to these fundamental agreements, the record label should also have access to standard form license agreements and other contracts tailored to its specific operations that it can pull out and offer to the relevant parties at the appropriate times. While studios and other licensees will often have their own preferred forms of license agreements, this will not always be the case, and the independent record label should be able to accommodate the parties (and the artist) to help see the deal through. Of course, for certain types of licenses this will not always be practical. The record release agreement—for use when seeking airplay—is another common contract that the record label should have on hand.
All of these contracts are likely to be used at one time or another by a successful independent record label. By recognizing situations when contracts are required, and by using the appropriate contracts at the appropriate times (before deals goes through), independent record labels can help ensure that their own interests, as well as those of their artists, are adequately protected.
Fabian, LLC is a boutique law firm located in Baltimore, Maryland that provides transactional legal services to record labels, management companies, musicians, and artists and professionals in other creative industries. Visit www.fabianlegal.com or www.marylandentertainmentlawyer.com for more information, or contact the firm directly at 410.908.0883 or jeff@fabianlegal.com.
SlideShare Presentations on Trademark Registration and Brand Monitoring
Trademark registration and ongoing trademark monitoring are critical legal tasks for entertainers and professionals in the creative industries. These two presentations on SlideShare discuss the trademark registration process and provide an overview of trademark monitoring:
What to Expect During the USPTO Trademark Registration Application Process
Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit eTrademarkSolutions.com for more information, or follow Jeff on Twitter @jsfabian.
Legal Considerations for Developing a Brand-Based Product Line
This extensive post on Fabian, LLC’s IP, Business and Franchising Law Blog provides an overview of the basic legal considerations for developing a brand-based product line: Legal Considerations for Developing a Brand-Based Product Line.
Brand Monitoring for Musicians, Athletes and Other Performers
In a previous article providing Trademark Information for Bands and Musicians, I discussed the basics of how to get a trademark, and how protect your trademark once you have it. While that article focused on bands and musicians, the principles discussed apply equally to athletes and other artists and entertainers as well. Simply put, anyone marketing themselves or going into business for themselves should be taking steps to actively protect and enforce the trademark rights in their name, company name, group logo and other brands.
Protecting Names as Trademarks
Artists’, musicians’ and athletes’ names can (and should) be protected as trademarks. Performers from Michael Jordan to Eddie Vedder have protected their names as registered marks with the USPTO. Trademark registration is a critical first step in protecting a performer’s or group’s name from misappropriation. More information on trademark registration can be found here: Guide to Efficient Trademark Registration Applications.
Brand Monitoring Protects Against Harm from Infringement and Unauthorized References
Applying for trademark registration is, however, only the first step in the processes of trademark protection and trademark enforcement. Once you begin using your name or other words or logo as a trademark, you must also continuously monitor, protect and enforce your trademark rights. Failure to do so can result in loss of your exclusive rights altogether.
A strong brand monitoring strategy involves conducting targeted and regularly-scheduled investigative research to uncover improper references to your trademark. This goes well beyond checking Google, Twitter and Facebook—and encompasses a large number of federal, state, domain name, social media, search engine and industry-specific resources. By maintaining a comprehensive brand monitoring program, musicians, athletes and other performers can help ensure that they (and they alone) are controlling their image on the web.
Functions Served by Brand Monitoring
As alluded to above, brand monitoring serves a number of important functions. These include:
- Identifying and proactively addressing actual and potential infringers;
- Addressing public perception—working with brand ambassadors and responding to/mitigating negative references (both justified and unjustified);
- Monitoring distributors, retailers, affiliates and other licensees to ensure proper use of your brands ;
- Keeping tabs on the competition—to see what is (and isn’t) working for them, and to identify any references to your brand;
- Avoiding loss of exclusive rights.
You can read more about the benefits of brand monitoring here: What is Brand Monitoring? and The Benefits of Brand Monitoring.
Only by maintaining an active brand monitoring and trademark enforcement program can you be sure that no one else is taking advantage of or harming your brand.
Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists artists, athletes and other performers in protecting their brands so that they can stay focused on running their businesses. Visit eTrademarkSolutions.com for more information, or follow Jeff on Twitter @jsfabian.
To schedule a counseling session, contact the firm at 866.545.7859, or use our Contact Form.
Trademark Information for Bands and Musicians
For serious musicians, trademark protection is a next in line to copyrights when it comes to establishing and protecting the performer’s or group’s intellectual property rights. This article discusses the how and why of trademark registration and—equally important—ongoing trademark monitoring and enforcement.
How to Get a Trademark
A common question I hear from musicians (and other business owners as well) is, “how do I get a trademark?” This question is actually slightly off point, because so-called “common law” trademark rights actually arise automatically once a band or musician adopts a name or logo and begins using it to brand their music and merchandise. However, this common-law trademark protection is greatly enhanced by filing to obtain a registered trademark with the United States Patent and Trademark Office (USPTO).
Whereas common law rights provide only limited protection, by obtaining a registered trademark with the USPTO, the band or musician acquires exclusive rights throughout the United States to use the trademark in connection with their performances, records and merchandise. This national exclusivity is crucial because it prevents other bands (and other companies like merchandisers and labels) from adopting a confusingly similar trademark that could negatively impact the band’s commercial viability—and ultimate success.
Importantly, registered marks are limited in their scope of protection to only those classes of goods and services identified in the trademark registration application. Musical performances, recorded music, t-shirts and other merchandise all fall into different classes, and so the band or musician must consider what items it wants its trademark registration to cover. Each class carries its own filing fee, so many times bands and musicians will initially limit the scope of their trademark registration to only one or two classes. As a result, even after one trademark registration is obtained, it is important to re-evaluate the band’s registered marks and trademark protection strategy on an ongoing basis.
In addition, as the band evolves and modifies or adopts new logos, it will need to evaluate whether additional registered marks are necessary. A new logo that deviates from the original may be considered sufficiently distinct to require its own trademark protection.
Trademark Monitoring and Trademark Enforcement
Once the band or musician secures adequate trademark protection by obtaining registered marks, it must continue to monitor and enforce its trademark rights on an ongoing basis. Like any other business, musicians and bands are subject to threats of infringement, counterfeiting and misuse, and each of these threats puts at risk the value derived from obtaining the registered marks in the first place.
Although not often discussed, trademark monitoring is an essential component of a sound trademark protection strategy, and more bands and ordinary businesses than you might think maintain comprehensive trademark monitoring and trademark enforcement programs. If someone else is using your trademark, you need to know about it, and you need to address the situation promptly before it gets out of hand. Infringers (especially unwitting ones) are typically more willing to comply with cease and desist demands when they are still in their early stages of development—and haven’t yet spent substantial amounts of money to develop and promote the trademark brand. A comprehensive trademark monitoring program will cover domain names, social media accounts, trademark registration applications, business names, and a wide array of music-specific and other resources.
By acquiring and protecting exclusive rights in their trademarks, bands and musicians can better position themselves for commercial success, and help combat and address the inevitable issues of infringement and counterfeiting that attend most successful commercial ventures.
Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists musicians and other brand owners with selecting, protecting and monitoring their trademarks on an ongoing basis. Obtaining exclusive rights is the only way for brand owners to confidently build value in their brands, and monitoring trademarks to identify infringers and improper references is absolutely critical to maintaining these exclusive rights over time. Jeff Fabian assists brand owners in protecting their brands so that they can stay focused on running their businesses. Visit eTrademarkSolutions.com for more information, or follow Jeff on Twitter @jsfabian.
To schedule a counseling session, contact the firm at 866.545.7859, or use our Contact Form.
Guide to Efficient Trademark Registration Applications
This post on Fabian, LLC’s trademark service website, etrademarksolutions.com, discusses some of the key considerations for filing trademark registration applications with the United States Patent and Trademark Office (USPTO): Guide to Efficient Trademark Registration Applications. These tips are important for bands, musicians and athletes who desire to obtain exclusive rights to protect their names.
Nike and Trademark Monitoring – Just Doing It
This post on Fabian, LLC’s Intellectual Property & Business Law Blog discusses a recent case in which Nike protected its “Just Do It” trademark from unfair competition by an apparel competitor who sought to adopt a “Just Jesu It” trademark: Nike and Trademark Monitoring – Just Doing It.
