Contrary to a slew of recent tweets in the Twitterverse, protection and enforcement of intellectual property rights is and remains critically important across all industries. Investment of time and resources should be nurtured and rewarded. No more so than for creatives at the cutting edge of popular culture, such as those engaged in the music industry. But with the devaluing of music and rise of the streaming services, artists and bands have had to diversify and rely on alternate sources of revenue.
In Swift protection of trade mark rights can save artists from seeing red we discussed how savvy global superstar Taylor Swift and other iconic artists and musical groups such as The Rolling Stones, Guns N’ Roses, Led Zeppelin and Metallica have protected their brands by securing exclusivity over the right to create, sell or license the sale of merchandise. In this article we consider some practical and cost-efficient steps that musicians can take to ‘best position’ themselves to protect their hard work and reap financial rewards from merchandise.
Traditional merchandise typically incorporates two types of intellectual property: trade marks and copyright.
A trade mark is a ‘sign’ that acts as a badge of origin in order to distinguish one trader’s goods or services from those of another. For example, an artist or band name. A registered trade mark provides its owner/s with the exclusive right to control the use of the trade mark for the goods and/or services for which it is registered. It also allows for efficient enforcement against third party infringers in the jurisdiction where it is registered.
Copyright protects the expression of an idea and vests in subject matter such as literary, musical and artistic works in the form of lyrics, music compositions, artwork and illustrations. For example, a shirt bearing an artist’s name in the form of a logo or illustration would incorporate a trade mark and copyright work.
In contrast to trade marks, there is no system of registration for copyright in Australia. Copyright vests automatically in works when they are created, and is by default owned by the author of that work unless the author has contracted out of their ownership. Copyright under Australian law gives the owner the exclusive right to disseminate their work and sue third parties for infringing those rights in Australia. If a party commissions the creation of a work, it is prudent that the parties enter into an agreement to assign copyright.
It is also important that artists understand and consider the practical consequences of their recording contract. If, for example, the contract provides that the recording label owns the copyright in the works produced by the artist for the label, the artist may end up in a similar situation to Taylor Swift. While we are not privy to the specifics of that arrangement, it is publicly known that Ms Swift re-recorded four of her albums in order to secure ownership of the copyright in those works and recently bought back her master recordings.
With regard to trade marks, registering a trade mark can benefit musicians by:
Protecting revenue streams
An artist’s income can be derived from various streams such as live performances, physical sales of recorded music, streaming, royalties, licensing, brand partnerships and of course, merch.
Seeking a trade mark registration in relation to the goods and services sold or provided by reference to an artist or band name is a cost efficient and practical step to protect the ability to continue to use a distinct sign and stop others from using same in relation to similar goods or services.
Efficient enforcement
While unregistered trade mark rights can be enforced in Australia pursuant to the common law tort of passing off and the misleading and deceptive conduct provisions of the Australian Consumer Law, a trade mark registration provides artists with a more cost efficient and effective ability to enforce their rights.
Protecting positioning on platforms
In addition to enabling efficient enforcement of rights, registered Australian trade marks can be used to preserve and protect an artist’s ability to reach their audience for trading through e-commerce and video sharing platforms.
For instance, online retailer Amazon has a Brand Registry facility whereby the owner or authorised user of a pending or registered Australian trade mark, which is permanently affixed on goods or packaging for those goods, can register those details (even if their goods are not sold in the Amazon online store). Registering these details enables a user to search for products that may violate the trade mark and report them to Amazon with a view to having the relevant product listing removed.
Video-sharing platform YouTube also has a facility whereby the owner of a registered trade mark or an authorised user can submit a complaint of trade mark infringement with a view to removing infringing content. To take advantage of this facility certain information is required, including proof of ownership of the registered trade mark, or the user’s relationship to the owner.
Securing trade mark rights allows artists to strategically position themselves to protect their revenue streams. International artists including Metallica, Evanescence and Lady Gaga are scheduled to tour Australia in late 2025 and all have registered their names (and in the case of Lady Gaga the name of her fan club) as trade marks in Australia for goods and services of importance to them, such as:
- METALLICA for printed music books, posters, tour books, calendars, clothing, footwear, headgear, entertainment services in the nature of live audio and visual performances by a musical group
- EVANESCENCE for musical sound recordings, clothing, entertainment in the nature of a live musical performer and musical band
- LADY GAGA for sound and video recordings, jewellery, printed materials, clothing, footwear, headgear, entertainment services
- LITTLE MONSTERS for providing online chat rooms and electronic bulletin boards for transmission of messages among users concerning a musical artist, webcasts featuring music and musical-based entertainment
Takeaways for artists
Taking the fundamental step of securing registration of a trade mark assists in controlling and protecting revenue streams by arming artists with a cost efficient and effective way to seek redress should unauthorised third parties seek to profit from them by using the trade mark.
Similarly, being aware of the importance of copyright can pre-empt and potentially mitigate perennial issues.