Often the first order of business for a newly formed band is the all-important selection of the band’s name. Sometimes, the name of the group includes the surname of one or more of the band members. A few notable examples are Bon Jovi, Hall & Oates, The Brian Setzer Orchestra, Simon & Garfunkel and Van Halen.
The next order of business SHOULD BE to decide who will own the chosen band name in the event of a breakup of the band or a change in personnel. Though these eventualities are probably the last thing on the minds of the members of a brand new band, they carry important consequences.
The ownership of the band name can be critical to the ability to continue to tour and merchandise. Many of the legendary Big Bands (e.g., The Glenn Miller Orchestra, The Buddy Rich Band, Woody Herman & the Thundering Herd), as well as classic Motown groups (e.g., The Spinners, The Four Tops, The Miracles) and even rock groups (The Animals, Pure Prairie League, Yes), just to name a very few, are comprised by many people who were never part of the original group (who may have died or just chose to leave the group). In some cases (known as “Ghost Bands”), none of the original members remain but through a series of ownership transfers a new party has acquired the rights to use the band name. These changes in personnel and ownership transfers can create disputes about the right to use the original band name.
One notable example of a dispute of the ownership of a band name involved competing versions of the band, Yes. Guitarist Steve Howe toured with one version of Yes. Keyboardist Rick Wakeman toured with his own version of Yes. Both of these versions of “Yes” were touring the United States at the same time and there was considerable confusion as to which version, Howe’s or the Wakeman’s, would be the one to play in the local arena. This battle of the bands led to extensive litigation over who owned the rights to the name “Yes.” These problems might never have arisen had these issues been settled when the band formed their legal entity.
Now there is a new twist on the “who owns the band name” issue: The ex-wife of Alex Van Halen, Kelly Van Halen, is being sued for using the name “Van Halen.” She is not using the name as the name of a new band, but as the name of businesses that intend to produce furniture and other household goods and clothing and to engage in the construction and interior design businesses. Van Halen, the band, was formed in 1972 by guitarist Eddie Van Halen and his brother, drummer Alex Van Halen . In 1984, Alex Van Halen married Kelly Carter and she legally took his name, going thereafter as Kelly Van Halen (the name she continues to use today as her legal name).
The Van Halen brothers formed an entity to hold their intellectual property rights—E.L.V.H., Inc. E.L.V.H. filed for and obtained numerous U.S. trademark registrations for the “VAN HALEN” name not only for entertainment services, but also for a broad variety of merchandise and goods, including recordings, musical instruments, books, posters, printed materials, clothing, etc.
In 1992, after twelve years of marriage, Alex and Kelly divorced. Now, almost twenty years after the divorce, E.L.V.H. has decided to sue Kelly to prohibit her use of the name she has used since 1984, Kelly Van Halen, in connection with her businesses. Kelly attempted to secure her own U.S. trademark registrations for “KELLY VAN HALEN” for use in connection with a broad variety of goods and services (based on a bona fide intent to use the mark in this way) for goods ranging from furniture and bedding, to clothing items, and to construction and interior design services. The lawsuit, filed in Federal District Court in California, seeks to block those registrations and to force Kelly to cease from using the “Van Halen” name in connection with any of these businesses.
While the U.S. Supreme Court has previously held that a person’s name is a form of their own property, the right to use that name is not without limitation. Under traditional trademark law, E.L.V.H. would not have to prove that the two names are identical, but only that there is a “likelihood of confusion” between its use of “VAN HALEN” and Kelly’s use of “KELLY VAN HALEN” in connection with her goods and services. Even if E.L.V.H. cannot prove that there is a likelihood of confusion, under the fairly recent law of “trademark dilution,” if it can prove that the “VAN HALEN” mark is famous and has been or is likely to have that fame diluted by Kelly’s use, it could prevail under that theory. Finally, if E.L.V.H. can prove that Kelly’s use of the “KELLY VAN HALEN” name falsely implies that there is some connection, affiliation or sponsorship between her goods and services and those of the famous band, E.L.V.H. may prevail under the theory of “unfair competition.”
Essentially, E.L.V.H. will have to prove that Kelly’s use of the “KELLY VAN HALEN” name, not in connection with a band or other entertainment enterprise, but in connection with the goods and services listed in those applications, is trading upon the goodwill in the “VAN HALEN” named owned by E.L.V.H.
So, I guess there are two morals to this story: First, be careful in deciding who in the band will own the name in the event of the departure of one or more of the founders from the band. Second, if you are in a band named after yourself and you decide to marry, will you allow the person you marry to take your name?
Pre-nup, anyone?
