Brandmark/Primary

No results found

AU
You are currently viewing our Australia site.
Select your preferred location for tailored content to your location.
  • Australia
  • Asia Pacific
  • New Zealand
  • Singapore
  • Malaysia
  • Hongkong
Back to News and Insights

Swift protection of trade mark rights can save artists from seeing red

Taylor Swift is a global superstar and brand. Her thoughtful lyrics and catchy tunes resonate with ‘Swifties’ of all ages, all over the world. Excitement is palpable in Australia for the Grammy-award winning artist’s impending The Eras Tour, which arrives in Australia this month for a series of live gigs in Sydney and Melbourne following sold-out concerts across the United States, South America and Japan.

The importance of considering how to best protect and commercialise a brand is a perennial question for artists and one that has not escaped the attention of Ms Swift. This article discusses how the music industry has evolved to a point where the revenue streams of concerts and merchandise are just as important as (if not more important than) musical recordings. It also illuminates the importance of including coverage for merchandise when seeking trade mark protection to enable cost efficient enforcement.

Everything Has Changed: How we consume music and support artists has transformed

Music is an expression of passion, which reverberates particularly with devoted fans of the artists who create musical works. Fans have always wanted to support their favourite artists and experience the passion personally by attending live concerts and purchasing music to listen to at their leisure.

Formats available to consumers

Advancements in technology over the last hundred years have changed the way music is consumed. Since the first release of vinyl records in the 1930s, the format of music available for purchase progressed to cassette tapes in the 1960s, compact discs (CDs) in the 1980s, digital downloads in the 2000s and now, streaming platforms.

Merchandising

The range of associated merchandise has evolved too. Fans have been able to buy goods such as programmes, patches, badges, stickers, shirts and caps bearing the name of or illustrations designed by their favourite artists for decades, which is a popular way of expressing their music preference and preserving a memento of a live concert.

Music on demand

I have a collection of about 300 CDs lovingly purchased over the years (diligently arranged in alphabetical and release order!) and many band shirts, including from concerts. However, in recent years, like many others, I’ve mainly consumed music through the Spotify® streaming platform. Gone are the days when one had no choice but to purchase a physical album. I now pay a monthly Spotify subscription fee and have access to the music of any artist who has made their works available on the platform, from classics to new releases and those already in my physical collection.

Cost

Music fans of all stripes would be All Too Well aware of the increasing cost to consume music, attend concerts and engage with their favourite artists. Post-Pandemic, the substantial influx of artists touring Australia has only been surpassed by the explosion of merchandise available for purchase at their concerts. Fans can also pay a small fortune for preferred seating, meet and greet and merchandise packages.

Audience sizes

When touring Australia in late 2023, Hayley Williams of Paramore (at a concert in The Domain, Sydney) and Dave Grohl of the Foo Fighters (at a concert in Accor Stadium, Sydney Olympic Park) remarked to their respective audiences that their respective Sydney shows were the biggest headlining shows they had ever played in Australia. The number of attendees were approximately 25,000 for Paramore and more than 75,000 for the Foo Fighters.

Concert merchandise

The variety and range of merchandise available for purchase at concerts has changed too – items such as shirts and caps are generally available but also now include hoodies, jackets, long sleeve shirts, bucket hats, beanies, bandannas, socks, tote bags, pins, jewellery, lanyards and stubbie coolers. Additionally, instead of having only one concert tour design available, a number of different merchandise designs including those unique to the concert or tour are usually available which are especially sought after by fans. Every piece of merchandise purchased at a concert generates a significant revenue stream for artists (even after production and other expenses), particularly when the concert takes place in a large venue.

I Knew You Were Trouble aka Increased scope for unlawful copying and distribution

Although technological advancements have enabled artists to reach an audience like never before, they also enable those who seek to take advantage of an artists’ success the ability to copy and distribute those works just as easily and efficiently, particularly in respect of merchandise. Merchandise of the same design as that offered at a concert or on an artist’s website can be available for purchase from unauthorised third parties online almost contemporaneously as it is available on tour, and usually at a marked discount. This can have a significant impact on an artist’s income given the adjustment to relying more on live concerts and merchandise sales to support their livelihood.

Protecting the merchandise revenue stream

Merchandise usually incorporates two types of intellectual property: trade marks and copyright. A trade mark is a badge of origin that distinguishes one trader’s goods or services from those of another, for example, an artist or band name.  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 and illustrations. A shirt bearing an artist’s name in the form of a logo or illustration would incorporate a trade mark and copyright work.  A trade mark can potentially secure a monopoly for any kind of merchandise that an artist might have a desire to sell or license, for example, The Beatles lunchboxes, Alice Cooper teddy bears, Taylor Swift candle holders, Drake ‘Hotline Bling’ pool floats and beach towels, Billie Eilish diaries and One Direction toothbrushes.  Yes, you can purchase any or all of these!

A registered Australian trade mark provides its owner with the exclusive right to control the use of the trade mark for the goods and/or services for which it is registered and allows for efficient enforcement against third party infringers in Australia. An unregistered trade mark can still be enforced in Australia pursuant to the common law tort of passing off and misleading and deceptive conduct under the Australian Consumer Law, although it is often more cost efficient to enforce a trade mark registration. To succeed in an action for passing off requires the rights holder to establish that they have a significant reputation in their brand, goods or services, that the other party has made a misrepresentation by passing off their brand, goods or services as those of the rights holder, and that the rights holder has experienced damage as a result.

To succeed in an action for misleading and deceptive conduct, applicant rights holder must prove that a significant number of persons within the relevant section of the public would be misled or would be likely to be misled by the conduct of the other party.  In addition to procedural efficiencies, the cost to register a trade mark is significantly lower than the cost of court proceedings.

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.

Recommendations for artists

As a matter of best practice, we always recommend:

  • conducting clearance searches to assess whether a potential trade mark is available for use and registration prior to commencing use of the trade mark; and
  • applying to register the signs that distinguish their brand as trade marks as soon as possible to secure rights in a way that can be easily enforced.

The importance of conducting clearance searches was most recently demonstrated in Taylor v Killer Queen, LLC (No 5) [2023] FCA 364 (currently under appeal). In this case, Kitty Purry, Inc (an entertainment company owned by musician and performer Katy Perry) and Bravado International Group Inc. (a merchandise company) were found to have jointly infringed Australian trade mark registration 1264761 Katie Perry in Class 25, owned by Australian fashion designer Katie Taylor. Bravado International Group Inc’s infringement stemmed from advertising, offering for sale and selling clothes (or goods of the same description) bearing the trade mark KATY PERRY and the other trade marks in Australia.

Trade marks in action

Music fans can hardly walk down the street without seeing fellow travellers wearing shirts emblazoned with the names of popular artists and musical groups. Many of these iconic artists and musical groups have taken the important step of protecting their brand by securing exclusivity over the right to create, sell or license the sale of such merchandise in Australia by registering their name as a trade mark in respect of such goods, for example:

  • THE ROLLING STONES for clothing, footwear and headgear;
  • GUNS N’ ROSES for clothing, T-shirts, jackets, sweatshirts, scarves, caps, hats and visors;
  • LED ZEPPELIN for posters; articles of clothing; headgear; footwear; badges, buckles and ornaments; and
  • METALLICA for printed music books, posters, tour books, calendars; clothing, footwear, headgear.

The savvy Ms Swift is a master at commercialisation and protecting the TAYLOR SWIFT brand for merchandise including picture frames; pillows; cups and mugs; kitchen mitts; hair clips; ornamental novelty pins; lanyards for holding badges, musical instruments; guitars; acoustic guitars. She has also registered the TAYLOR SWIFT THE ERAS TOUR brand for an expansive range of merchandise including jewelry; bracelets; printed posters; writing instruments; all-purpose carrying bags; towels; loungewear; headwear; headbands; footwear; shoes; sleep masks; aprons; stuffed toys; Christmas tree ornaments and decorations.

The Last Time aka Take-home messages for musicians

Taking the fundamental step of securing registration of a trade mark assists artists in controlling and protecting the revenue streams from selling merchandise.  All artists should take inspiration from Ms Swift and ensure they seek trade mark protection as soon as possible, lest they see red.

 

 

This article forms part of DCC’s Music and IP initiative and article series “The Swift Series”.