IF YOU'RE in a band that's playing clubs and maybe recording some songs, then you should make a belated New Year's resolution: cover your butt. Or rather your band name's butt. Legally, I mean.
Say you form a band and call yourselves the Mudskippers. You play the local bars for a few years, finally headlining and drawing crowds. You release a great CD, and a week after you get a good review, say, in The Post, you find a cease-and-desist order in your mailbox telling you that you can't call yourselves the Mudskippers anymore. It seems that the fabled Mudskippers of Poughkeepsie registered the name (their "service mark") a year ago with the U.S. Patent and Trademark Office and have been selling their CDs all over the place, and now they're dang protective of their service mark.
This is the problem that several Washington area bands have been dealing with lately, and it's due in large part to the growth of the Internet.
Way back when, there were probably bar bands in dozens of cities around the country called the Mudskippers, but now that the local is global and we're all wired together, those fictional Poughkeepsie Mudskippers found out about the fictional Washington Mudskippers by using a search engine and typing in "Mudskippers." That's how folks these days keep tabs on any improper use of an exclusive name.
The Washington "girl group" oldies band the Towering Bouffants recently heard from the lawyers of a Memphis band, the Bouffants, telling them to drop the use of the name Towering Bouffants, or else. Well, things got a little ugly, and the Memphis band filed suit in federal court saying the Washington group's name was a copyright infringement.
Lead Washington Bouffant Diana Quinn says she figures it was her band's Web site that triggered the fight. "We put up our Web site in February '97, and I'm assuming they found our name that way. How else would they have heard of us?" Quinn asks. "We don't have a record out. We don't tour out there. The funny thing is, that when I was putting up our Web site, I saw that band's name, but said to myself, `Oh, that's totally different, that's not a problem,' and I dismissed it. Well, let me give some advice. Don't dismiss something like that these days."
Quinn and her partners Melinda Root and sister Jane Quinn looked into a legal fight but the cost was too high. "I think we could have won. We had a good case anyway, but it was obvious that it would be a verrrrry expensive fight, and for what? We're not trying to be a national band. We backed down." If you're looking for the Towering Bouffants in the local club listings, you should start looking for the Fabulettes. "I might even like that name better," Quinn says. "And you can bet I've service-marked our new name. It costs $250 if you do it yourself. Everyone in a band should do this."
"If you're in a band you should definitely get a service mark to protect yourself," says local entertainment lawyer John Simson. He explains that you need a service mark rather than a trademark because the band provides a service in the form of music. "You the band are not the product, generally speaking," Simson says. "More than ever, because of the Internet, bands are going to have to be willing to invest the time in taking care of the appropriate paperwork." Simson explains that sometimes a band's logo or the way their name is spelled can be trademarked, but for the most part, a band can cover itself with a simple service mark registration.
For more information on trademarking and service-marking your band's name, click on www.uspto.gov. Or call Diana. "Oh, sure, people can call me at 202/544-7011. Maybe I can save them some trouble." For more information on Quinn's newly named band (and the several others she's in), get online and go to www.fabulettes.com.
But Quinn and her consorts aren't the only local musicians with name troubles. Because of Internet searches, the Hula Monsters are duking it out with a California band of the same name, even though the Washington Monsters have been at it for 10 years, while those West Coast upstarts have been around only since 1994. Bassist Moe Nelson says that even though the name hasn't been service-marked, a lawyer has advised the band that they indeed have common law rights to the name throughout the mid-Atlantic, based on "prior use in interstate commerce." Sure, fine, but registering it with the government would have nailed the case shut. As it is, the local Hula Monsters haven't decided on what step to take next, given that a legal case would take big bucks, something a bar band doesn't generally have.
Elizabeth Smiroldo, a local rock singer and leader of a band that bears her first name, had a problem last year with another performer going by Elizabeth. Smiroldo received several bullying letters with claims to prior use and national followings. She didn't back down, feeling she was on solid ground with her longstanding presence on the Ultimate Band List site (check it out at www.ultimatebandlist.com) and with her own national presence through her CD released by local label Deep Reverb. Finally she got legal help. "I took the threatening letters I got to WALA (Washington Area Lawyers for the Arts) and they drafted a letter citing pertinent cases in my favor," Smiroldo says. "The bottom line is, I have a legal right to use my own name, but it was a very trying time."
You can reach the Washington Area Lawyers for the Arts at 202/393-2826 or online at www.thewala.org.
Another local band, Power Lloyd, is fighting a different kind of fight, not about a name, but about a symbol. They've chosen to take on the big boys, in this case, the rock band Stone Temple Pilots. That West Coast band with several million records sold has a lot of money, but that hasn't stopped Power Lloyd from taking legal action over the use of a white star on a black background. That's the cover of the brand new Stone Temple Pilots CD, "No. 4" and is also the graphic on the cover of Power Lloyd's 1998 release "Election Day." Looking at the two side by side, they are mighty similar. And while coincidence could have played a part (heck, lots of designers use black and white stars), Power Lloyd's reach in the industry leaves room for the possibility that the STP folks had seen Power Lloyd's CD before releasing theirs.
"Long story," says PL co-founder Gene Diotalevi, "but the people who produced [our] record had also worked with Guided by Voices, and through those channels it got into the hands of some people at MTV, and we had a song on their soundtrack to `Celebrity Death Match.' When they got ahold of an advance copy of the new STP record, someone at MTV news called us up and asked us what we were going to do about it."
In order to know what to do about it, Diotalevi and his musical partner David DePippo first had to see the STP cover. "We checked their Web site and were, to say the least, shocked," Diotalevi says. "It was just like our cover, and it wouldn't be such a big issue except that the white star is on all of our gear, our cases, our shirts. It's really our logo. And I can't go into my opinion of what's coincidence or not, but we had sent that first record everywhere in the business, to labels, radio stations. We mailed out a lot of them." When Power Lloyd made initial contact with STP, no one would return their calls or letters. "We wanted to be good guys, but they pulled a real rock star attitude and nobody in that camp would talk to us, so we moved on it and mailed a cease-and-desist letter to their record company."
That filing brought out STP's legal team. "They made an offer to settle that was unacceptable to us," says Power Lloyd's lawyer Will Shill. "If it turns out we do need to file suit, it will be by the end of this month." The Stone Temple Pilots' lawyer, Eric Greenspan, is adamant in his position. "None of the members of Stone Temple Pilots nor the person who had the idea for the artwork ever saw Power Lloyd's album cover," Greenspan says. "In any copyright infringement action you need to show substantial similarity and access, showing that you in fact copied it. There is similarity, yes, but the band didn't copy it because they never saw it and they never had access to it."
If the case does indeed go to court, it will be as much to clear Power Lloyd of the charge of being the copycats (something many fervent STP fans are accusing them of in rather nasty e-mails to Power Lloyd at its Web site (www.powerlloyd.com), as to get back the exclusive use of the white-star-on-black-background. "It'll be interesting to see where this goes from here," Diotalevi says. "But we couldn't just sit there and not do anything. Imagine if it was the other way around. We can't let them get away with something just because they're bigger than we are."