Setting the Record Straight

Article originally appeared in Nevada Lawyer on 03/17/09

Can you name all six original members of The Platters? And remember who sang with Diana Ross and Mary Wilson in The Supremes? Don’t worry; this is not a pop quiz. Our point is: you may not recognize their names but their music is still very popular, so much so that there are groups popping up everywhere billing themselves as the “real thing,” when, in fact, they aren’t.

This article addresses the recent changes in Nevada law that prohibit such imposter groups from misleading unsuspecting concert-goers, and provides practical tips to help band members, concert promoters and production companies avoid stiff penalties.

Truth in Music Act
On May 31, 2007, the Nevada Legislature enacted the Truth in Music Act, NRS § 598.0922 et seq. As its name implies, the act prohibits a person from advertising or conducting a live musical performance or production in Nevada “through the use of a false, deceptive or misleading affiliation, connection or association between a performing group and a recording group.”1 In other words, a band cannot mislead the public by promoting or rendering a live performance in Nevada using the name of another band that has previously released a commercial sound recording under that name.2

This does not apply in circumstances where: (a) the performing group owns a valid service mark for the group’s name that has been federally registered with the United States Patent and Trademark Office; (b) one of the performing group’s members was a member of the original recording group (i.e., performed on the original group’s commercial sound recordings and has not left the original group or abandoned his or her affiliation with it); (c) the performing group advertises itself clearly as a “salute” or “tribute” and uses a name that’s not identical or confusingly similar to the recording group’s name or (d) the performance or production is expressly authorized in writing by the original recording group.3

The “persons” subject to the act include performing groups and their promoters, managers and agents, while the venue hosting the imposter acts is expressly excluded from any liability unless it owns and produces such acts.4 This exception (which is not included in the truth in music laws enacted in many other states) is a boon for the Las Vegas casinos that make up a huge share of the oldies tour market, as it effectively relieves them from any responsibility for ascertaining whether the acts performing at their venues have legal rights in their names.

Also, the act authorizes the Attorney General to seek injunctive relief to prevent violations of the act’s provisions, permits a court to enter judgment for restitution and subjects violators to a civil penalty ranging from $5,000 to $10,000 for each violation.5 Each performance or production in violation of the act’s provisions is considered a separate violation.

Musicians Jon “Bowzer” Bauman, formerly of Sha Na Na and chair of the Truth in Music Committee of the Vocal Hall of Fame, and Mary Wilson, an original member of The Supremes and a Las Vegas resident, played crucial roles in getting the Truth in Music Act passed quickly in both houses of the Nevada Legislature. Wilson and Bauman have been tireless advocates of the rights of the famous vocal acts from the 1950s and 60s that helped shape the American pop-culture landscape. Both have traveled across the country lobbying various state legislatures, including Nevada’s, to enact the “Truth in Music” bill they helped author. Fittingly, both artists actually broke out into song while testifying before the Nevada Senate with Wilson pleading with imposter groups to “stop in the name of love before you break my heart,” and Bauman imploring them all to “yip, yip, yip, yip, yip, boom, boom, boom, boom, get a job.”

Due in large part to the efforts of artists like Bauman, Wilson and Sonny Turner (an original member of The Platters and long-time Las Vegas resident), truth in music laws have now been enacted in Nevada and 26 other states.6 However, because the vast majority of these laws have been in effect for only the past few years, there is very little existing case law interpreting their provisions or providing meaningful guidance as to their enforcement.

Singer Management Consultants, Inc. and Live Gold Operations, Inc. v. Anne Milgram, Civil Action No. 07- 3929 DRD-ES (D.N.J. 2007) is believed to be the first legal challenge to a state’s truth in music law. In this case, the plaintiffs, claimed owners of unregistered trademarks for three performing groups (The Platters, The Cornell Gunter Coasters and the Elsbeary Hobbs Drifters), challenged New Jersey Attorney General Ann Milgram’s efforts to prevent the bands from advertising their performances at certain shows scheduled for August 2007 at the Atlantic City Hilton Casino. Milgram and the state of New Jersey contended that since the group’s trademarks were unregistered and the groups didn’t feature any of their original members, the state’s Truth in Music Act required them to obtain further authorizations from the original recording groups or refer to themselves as tribute groups.

The plaintiffs asserted in their complaint that Milgram’s enforcement of the New Jersey Truth in Music Act against the performing groups had the unconstitutional effect of nullifying their common law trademark rights in the groups’ names, which were federally guaranteed under Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1), regardless of whether the groups featured any of their original members.7 On August 17, 2007, one day prior to the shows commencing, the United States District Court for the District of New Jersey entered a temporary restraining order restricting Milgram from interfering with the Atlantic City performances.8 Although the shows took place as scheduled, the Atlantic City Hilton decided, on its own accord, to bill them as a “Tribute to The Drifters/Coasters/Platters.”

At the subsequent preliminary injunction hearing, U.S. District Court Judge Dickerson R. Debevoise decided to reserve ruling on the lawsuit until a decision was made in a separate case involving the use of The Drifters’ name. Interestingly, however, both the court and the state of New Jersey agreed that, under the Lanham Act, owners of valid unregistered trademarks are to be accorded the same treatment as holders of federally registered trademarks.9

Practical Tips
While the issues raised in the Singer Management case remain unresolved, there are a number of important measures that counsel for music groups can take to help ensure that their clients are protected by, or in compliance with, state truth in music laws.

First, counsel should determine whether their client’s band name is identical or confusingly similar to those previously used by other bands. This can be accomplished by conducting a comprehensive trademark search and providing a thorough assessment and analysis of the search results. Once the band name has been cleared, counsel should assist the band in federally registering (if applicable) the band’s name as a trademark, as well as registering any accompanying logos to protect their use of the name in association with its music performances and merchandising efforts.

Prior to commencing the registration process, however, the band will need to decide who will own the band’s trademarks and any resulting registrations, i.e., the band, certain of its founding members or a corporation, limited liability company or other entity formed by the band. Ownership of the band’s name and other trademarks and related issues, such as who gets to use the marks and what happens to them when the band changes personnel or breaks up, should all be addressed in a written band partnership agreement entered into by its members early on in the band’s existence. In addition to provisions governing the ownership and use of the band’s trademarks, such agreements should also include language regarding ownership of the copyrights to the band’s sound recordings and musical compositions, the split of royalties, performance fees and other revenues from merchandise sales, sponsorship deals, payment of the band’s debts, acquisition of
equipment and other assets and the process by which key business decisions are made and disputes resolved.

Lastly, a concert promoter or production company, before publishing any advertisements for shows featuring oldies acts and the like, should require the groups performing at these shows to provide sufficient evidence that they own the rights in their names or have obtained all required permissions or authorizations to use them. Likewise, any written performance agreements signed by these groups should include representations and warranties by the groups that they own or are otherwise authorized to use the names they are performing under.

So, the next time a client walks through your door with a great name for a band or for a unique concept to pay tribute to the classics, consider contacting an entertainment attorney or at least reviewing the recent changes in Nevada law.

Jennifer K. Craft is of counsel with Lewis and Roca LLP. She practices exclusively in the areas of entertainment law and intellectual property. Prior to joining Lewis and Roca, she was associate general counsel for Agassi Enterprises and corporate counsel for Sunbelt Communications.

Robert B. Kouchoukos is an associate at Lewis and Roca LLP and a member of the firm’s intellectual property and sports and entertainment practice groups.

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