|
E. Effective use of trade organizations Due
to the nature of music industry piracy, it is nearly impossible for a single
entity to take action against all those parties who are counterfeiting their
products, particularly with respect to the everyday counterfeiting, bootlegging
and pirating of audio and audio/video recordings. Therefore, it is very
important that effective connections to industry trade groups be established in
order to take advantage of collective efforts to combat piracy, thereby
lowering costs for the individual intellectual property right holder. Such
groups include the Recording Industry Association of America (RIAA), which is
the United States trade organization for companies that create, manufacture
and/or distribute sound recordings. The RIAA has an anti-piracy unit that
takes action against counterfeits.
Another
important national organization is the British Phonographic Industry (BPI),
which has an Anti-Piracy Unit that takes action in the United Kingdom on behalf
of their members by conducting investigations and seizures, notifying members
or affected trademark owners of the seizures and assisting in prosecutions.
On
the global level, the International Federation of the Phonographic Industry
(IFPI) is similar to the RIAA. The IFPI Secretariat is located in London, with
regional offices in Brussels, Miami, Moscow and Hong Kong. The IFPI and its
national groups are involved in conducting investigations, accompanying local
authorities to search for and seize infringing copies, and preparing
prosecutions.
1.
Exploiting trademark rights through licensing
The
use of a trademark or service mark in connection with the sale of products
other than strictly musical recordings may provide an important revenue stream.
Only a few years ago, United States and Canadian retail sales of licensed
products with respect to music properties exceeded $1 billion annually.
[17] Aside
from the issue of recording artist/recording company licenses, generally four
types of licensing agreements exist, namely tour licensing, tour sponsorships,
product endorsements and retail merchandising. Although there are numerous
considerations affecting licensing which do not relate strictly to trademark
law, it is important to keep in mind certain trademark fundamentals in any
license which potentially affects trademark issues.
Several
important factors should be considered from the trademark perspective. The
license should clearly define the exact rights which are being licensed,
e.g.,
the group name, the individual member names, the group or individual
likenesses, the tour name or album name, a tour logo or album logo or an
additional logo which will be supplied by the merchandiser for approval by the
group. The license should establish the exact scope of the licensed products,
e.g.,
all clothing or only t-shirts or hats, particularly where multiple licensees
are contemplated. The license must contain sufficient quality control and
approval mechanisms to ensure that the standards of the manufacture and sale of
the licensed products are acceptable to the licensor. Failure to include such
provisions in licenses may result in loss of trademark rights. In the retail
merchandise agreement, quality control over the initial product is even more
important since the licensee generally makes the products for distribution
through third party retailers, rather than through direct distribution at a
concert venue. Therefore, to the extent possible, controls over the channels
of trade should be made in the licensing agreement so that at least the
licensee does not unload unsold merchandise onto disreputable wholesalers or
discounters.
License
agreements should also assign to either the licensee or the licensor the
financial and legal responsibility for taking action against infringers and
counterfeiters.
Finally,
although the concept is unknown in the United States, in a number of foreign
countries where trademarks are licensed, it is necessary to record a trademark
license with local authorities. Otherwise, it may not be possible to take
action against products that infringe the licensed goods and may even lead to
loss of trademark rights.
Although
many legal and business issues are involved when representing music clients, it
is clear that trademark issues, although considered by some to be "off-beat",
are an important, yet often neglected, area of music law and it is vital that
parties involved in the music industry be mindful of the trademark
ramifications of their business.
APPENDIX A AFRICA
EUROPE
FORMER SOVIET UNION
MIDDLE EAST
ASIA
PACIFIC/OCEANA
NORTH AMERICA
CENTRAL AMERICA
CARIBBEAN
SOUTH AMERICA |
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
|
[Home] [About Ladas
& Parry LLP] [Contact Us] [Search]
[Trademarks] [Domain
Names & E-Commerce] [Patents &
Copyrights]
[Litigation] [IP
Rights Maintenance] [IP as Property]
[News & Bulletins]
© Copyright 2001 Dennis S. Prahl - Posted July 2002
Please read our disclaimer.