Recording - December 2010 - 61

registration, you can use the ® next to your mark to show the public that your mark has been registered. How long does a trademark last? Trademark rights can last indefinitely so long as the owner uses the trademark to identify the goods (or services in the case of a service mark) without any significant lapse in time, and takes reasonable steps to stop infringers from utilizing his/her mark. If you register your mark with the USPTO, your Federal registration is good for 10 years with additional 10 year renewal terms. However, between the fifth and sixth year from the date of your initial registration, you must submit an affidavit stating that you are still using the mark as well as provide some other basic information. If you fail to file this affidavit within this time period your registration may be cancelled, in which case another band could come along and use that name for their band. Who owns the trademark? Once your band has registered the name you’ll want to make sure there is an agreement on such issues as who owns the trademark and whether a former member can use the name when promoting themselves after he/she left the band. This is often addressed in a band’s partnership agreement or, if the band has been incorporated, it may be addressed in the corporation’s bylaws or the limited liability company’s operating agreement. If these issues are not addressed and agreed upon in writing things can get a bit ugly and expensive real quick. A few years ago Phil Varone, the former drummer for Skid Row, filed a complaint against his former band members and claimed they were preventing him from using the name Skid Row. Similar lawsuits have been filed by former members of The Beach Boys, Deep Purple, The Doors, The Drifters, The Platters and Survivor. Just recently, Tommy Iommi and Ozzy Osbourne settled their dispute regarding the rights to the name Black Sabbath. In that case, no one filed a trademark registration for the band’s name until Tommy Iommi did so in 2000, almost 30 years after they formed. While you don’t necessarily have to file a trademark once you begin, it is wise to do so once you’ve reached a certain level of success so that you can protect yourself and enjoy the benefits of your success.

Bruce here: I first formed Wiggling Air Records when in 2005, the rights to my first solo album, Slider—Ambient Excursions for Pedal Steel Guitar, reverted to me, and I had the opportunity to rerelease it. At that time I wasn’t at all aware of what the symbols ™ or ® stood for; I barely knew what © stood for! Sure, like any other sighted person living in America, I’d seen both of these symbols untold thousands of times in my life, but I had no clue of their purpose. So I thought nothing of not including them in my album graphics. It was when I neared completion of my recent release, Hybrid, that Todd told me he thought it would be a good time to consider applying for a trademark for my record company name. I said “okay, what does that mean?” When Todd explained it to me in much the same way he’s now explaining it to you, I came to realize that especially with a second album released by my company, I was beginning to amass a sizable investment of time and money in operating under the name Wiggling Air Records. Now while it’s true that at this point in time, with only limited success in its track record, it may not seem all that worthwhile to go through the effort and expense of being so careful to protect this name, years of experience have taught me that success is only ever one significant series of events away from one’s grasp. One need look no further than American Idol to realize how true this can be, but well before American Idol hit the scene, the history of the music business was already rich with artists whose rise to fame was meteoric. I’m sure you’ve heard the expression “dressing for success”: with regard to the release of Hybrid, I decided to do everything as correctly as I could so that if things went really well I wouldn’t find my options limited or learn of vulnerabilities at a time when I might be able to take advantage of all the hard work I’d put into my label. Todd Gascon (gascon@recordingmag .com) is a technology and entertainment attorney at ZentLaw in Sunnyvale, California. Mr. Gascon’s practice is focused in the areas of intellectual property law, including copyrights and trademarks, with a particular emphasis on digital media, music, motion pictures, visual arts and all entertainment issues relative to the Internet. For more information on Todd and ZentLaw, visit www.zentlaw.com. Bruce Kaphan (kaphan@recordingmag .com) is a producer/engineer/musician/ composer who currently lives in the San Francisco Bay Area. For a discography and more information on Bruce, visit www.brucekaphan.com.
RECORDING DECEMBER 2010

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Recording - December 2010

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