Copyrights Archives - Cokato Copyright Attorney: The Law Blog of Thomas James

Can You Copyright a Band Name?

It is one of the most common questions artists, entrepreneurs, and other content creators ask. It is also based on a fundamental misunderstanding of how intellectual property works. While both copyrights and trademarks give owners exclusive rights, they protect entirely different things for entirely different purposes.

You just finished a killer garage rehearsal with your new band. You finally agreed on the perfect name, and you are ready to launch a website, release an album, and book your first gig. Naturally, your first instinct is to protect your new brand before someone else steals it. So, you call up a legal professional and ask: “Can you copyright a band name? If so, how?”

If you want to protect your music, your brand, and your business identity, you need to understand where copyright ends and trademark begins. I will start with the short answer first.

Can you copyright a band name? No. Copyright ownership cannot be claimed in the name of a band or any other kind of name. Copyright protection does not exist for titles, slogans or short phrases, either. In some cases, trademark rights can be claimed in a name, title, slogan or short phrase, but copyright cannot be.

Names, titles, slogans and short phrases are too short to qualify as “expression”, and they do not meet the low threshold of human creativity required for a copyright. Instead, identifying a brand is the core of trademark law.

What is the difference between a copyright and a trademark?

Copyrights and trademarks are both types of intellectual property, and they both give their owners exclusive rights, but they protect different interests, for different purposes. Copyrights protect creative expression. Trademarks protect brand identifiers.

Copyrights protect creative expression. They protect interests in the output of human minds, things like music, lyrics, artwork, website text, photographs, sound recordings, music videos, and other kinds of expression.
Trademarks protect brand identifiers. They protect names, logos, slogans, and domain names used to identify goods or services. The purpose of a trademark is to act as a source indicator and prevent consumer confusion in the marketplace.

The USPTO has a handy reference chart explaining how the kinds of intellectual property differ: Patent, Trademark or Copyright.

When does a copyright actually come into existence?

You get a copyright when, and only when, all of the following things are present:

Human expression. Copyright protects expression, not facts or ideas. And the expression must be created by a human, not by an animal, a machine or natural forces.
Originality. The work must be independently created. Copyrights cannot be acquired by copying someone else’s work.
Creativity. People frequently conflate the “originality” and “creativity” requirements, but they are really different things. Band names are a great example. You could come up with a completely original name, one that nobody else has ever used before, and yet still fail the creativity test. “Smashing Pumpkins,” for example, was a completely original name. No band had ever used it before. But it does not get copyright protection. Why not? Because the courts and the Copyright Office have decided that names, titles, slogans and short phrases do not involve a high enough level of creativity.
Fixation in a tangible medium. The work must be fixed in a tangible medium of expression. This means it exists in a sufficiently permanent or stable form so that it can be perceived, reproduced, or communicated for more than a transitory period. Examples include writing lyrics on paper, recording an MP3, or painting on canvas.

When all of these requirements are met, copyright protection is automatic. You do not need to register your work with the U.S. Copyright Office for the copyright to exist, but you generally do need to register it if you ever want to file an infringement lawsuit in court.

For a deeper dive into current issues in copyright law, read Generative AI: The Top 12 Lawsuits.

Why You Actually Need a Trademark for a Band Name

Getting back to the difference between trademarks and copyrights: when it comes to protecting a band name, a song title, a short phrase or a slogan, a trademark is what you need.

Trademarks do not have to be particularly creative. Look at IBM. It’s just an acronym for “International Business Machines.” Nevertheless, it is a valid trademark. As I reported in a previous blog post, even the word “The” is a registered trademark now.

You might be asking, “Well, how can someone claim the exclusive right to use the word ‘the’? Virtually every book, story, and article that’s written has “the” in it. Are all these writers guilty of infringement?

The answer is no. And that is because a trademark only gives its owner the exclusive right to use it as a source identifier. Unlike a copyright, it does not give its owner an exclusive right to use the mark as creative expression.

The 5 Core Requirements for a Trademark

The requirements for a valid trademark indicate the limited scope of its enforceability. To secure and maintain a trademark, you must satisfy five elements:

Use in commerce
Source identification
Distinctiveness
No likelihood of confusion
Nonfunctionality.

1. Use in Commerce & Source Identification

“Use in commerce” means the mark must be used commercially. If you market musical performance services under a particular band name, you might be able to claim trademark rights.

It must be used for the purpose of identifying the source of your musical performance services, though. Merely using something as a band name isn’t enough. For example, if you and some friends have formed a band to practice in a garage, but you haven’t actually started seeking gigs and have no definite plans to do so, choosing a name is not enough. To get a trademark, you must use the name commercially. That does not mean you have to be a commercial success. It just means you need to have begun selling your services, such as booking performances.

2. Distinctiveness and No Likelihood of Confusion

“Distinctiveness” means your band name must distinguish your band from others. If you name yourselves, “A Jazz Band,” you will probably fail this test. Descriptive terms generally lack distinctiveness. Arbitrary or completely made-up names have a much better chance. If you mention Pearl Jam, or the Rolling Stones, or Nirvana, everybody knows exactly which band you mean.

Distinctiveness is directly related to the requirement that the name must not cause a likelihood of confusion among consumers. You won’t get trademark protection if you call yourselves Counting Crows, for instance, because consumers will confuse you with the existing band.

3. Nonfunctionality

The nonfunctionality requirement means that a trademark must not serve a utilitarian purpose other than being a source identifier. For example, you can’t claim the sound of a drum as a trademark for your band. As great as it might be to claim the exclusive right to use the sound of a drum and put other bands out of business, you cannot do that because it serves a fundamental musical function.

You often hear people say that a band has a “trademark sound,” like the wailing sounds that Jimi Hendrix produced on his guitar. In reality, no one can claim trademark rights in a particular musical sound or style, though, as those are functional elements of musical performances.

Once you have a trademark that meets these requirements, you should apply to register it as a trademark. This can be started even before you begin using it in commerce, so long as you have a definite plan to start using it soon.

Key Takeaways for Musicians and Bands

And so the key takeaways from all of this are:

Copyrights protect expression; trademarks protect brand identifiers.
You cannot claim a copyright in a name, title, slogan or short phrase, but you might be able to claim a trademark
If you want to claim a copyright in a song, you must fix it by writing it down or recording it.
To claim a trademark in a name, you must use it in commerce as a source identifier.
Choose a distinctive name that does not simply describe your music and is completely different from other bands.
Protect your trademark by registering it.

Ready to Protect Your Band?

Navigating the intersection of copyright and trademark law can be challenging, but taking the right legal steps early protects your creative work from copycats. Whether you are ready to book your first commercial gig, launch a website, or officially register your band name and other brand identifiers, securing your intellectual property is the smartest move for your band. Contact me if you need help registering a trademark or protecting your creative works.

Enduring (Non-AI) Legal Issues

With so much attention being given to the legal issues that AI-powered technologies are generating, it can be easy to overlook or underestimate the importance of long-standing legal issues having nothing to do with artificial intelligence. While it would be neither possible nor particularly useful to catalog all of them in a single blog post, it might be helpful to highlight a few key legal issues that are developing alongside developments in AI law.

Copyright Law

The core principles of intellectual property remain anchored in traditional law. In that connection, it is important to understand the philosophy of copyright. Copyright is not the only kind of intellectual property there is, but it is by far the most common. Everyone who has ever written a story or a poem, scribbled a doodle, or composed an email message is very likely a copyright owner. Merit is not a requirement. In theory, even that terrible drawing of a turkey you made in first grade by tracing your fingers and hand on paper and drawing a head and two legs on it may be protected by copyright. Whether it makes sense to pay the filing fee to register something like that is a different story.

A key issue in copyright law that continues to develop is fair use. Courts have been grappling with how to interpret and apply the four vaguely worded factors they must to make findings about whether a particular otherwise-infringing use is “fair” or not. The idea of “transformative use” is at the center of this evolving doctrine. Andy Warhol Foundation for the Visual Arts v. Goldsmith, decided in 2023, is a leading case in this area now. Other limitations on copyright infringement liability, such as the safe harbors set out in the Digital Millennium Copyright Act (DMCA), are also important. There are also evolving protections for sound recordings and licensing. Other topics in copyright law include such things as the copyright registration requirement, damages for copyright infringement, diversity, copyright estoppel, the limitations period for copyright infringement, the extent of protection for shorter works, compulsory e-book licensing, and circumvention of copyright protection measures.

The Internet Archive lawsuit addressed the phenomenon of digitized e-books and the impact on authors of making them freely available to readers via an online digital library.

The new administrative court for resolving smaller copyright claims, the Copyright Claims Board, is one of the more significant developments in copyright law in a long time. Find out what to know about the new CCB.

Read about the top copyright cases of 2021.

Read about the top copyright cases of 2022.

Read about the top copyright cases of 2024.

Meanwhile, more and more works continue to enter the public domain.

Trademark Law

There has been a surge in interest in trademark law ever since the COVID-19 phenomenon. Many small brick-and-mortar businesses had to shut down as people were instructed to quarantine at home. While quarantining at home, a lot of people had the same idea: Starting a home-based, online business. Those new online businesses needed to have names. The USPTO was soon flooded with an unusually large number of trademark registration applications. Competition in the trademark space became fierce. Descriptiveness and likelihood-of-confusion challenges increased. New laws and procedures, such as the Trademark Modernization Act, were enacted to clear more room for new businesses by cancelling unused trademarks and cancelling registrations for classes of goods and services no longer being used by the trademark owners. Interest in nontraditional marks like color marks, trade dress, and sound and olfactory trademarks (smell marks) has also grown.

The clash between First Amendment values and trademark interests continues to surface from time to time. Courts have addressed trademark speech rights on several occasions now.

And of course, distinctiveness, likelihood of confusion, and registration disputes are ongoing.

Foundational Context: Major IP Developments of 2023

This section is a repost of an article I wrote in 2023 describing major developments in various areas of intellectual property law that took place that year. While I have broadened the scope of the discussion, it can still be useful to look back at what went on during that pivotal year, as it provides important context for the developments in IP law that are taking place now.

Copyright: Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

I’ve written about this case before as one of the top copyright cases of 2022 and as an aspect of photographers’ rights. The United States Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.

In the thirty years since Campbell, lower courts have been applying the “transformative use” principle announced in Campbell in diverse and divergent ways. Some interpretations severely eviscerated the copyright owner’s exclusive right to make derivative works. Their interpretations often conflicted. What one circuit called transformative “fair use” another circuit called actionable infringement. Hence the need for Supreme Court intervention.

In 1984, Vanity Fair licensed one of photographer Lynn Goldsmith’s photographs of Prince to illustrate a magazine article about him. Per the agreement, Andy Warhol made a silkscreen using the photograph for the magazine and Vanity Fair credited the original photograph to Goldsmith. Unknown to her, however, Warhol proceeded to make 15 additional works based on Goldsmith’s photograph withour her permission.. In 2016, the Andy Warhol Foundation for the Arts licensed one of them to Condé Nast as an illustration for one of their magazines. The Foundation received a cool $10,000 for it, with neither payment nor credit given to Goldsmith. The Foundation then filed a lawsuit seeking a declaration that its use of the photograph was a protected fair use under 17 U.S.C. § 107. The district court granted declaratory judgment in favor of the Foundation. The Second Circuit Court of Appeals reversed, ruling that the four-factor “fair use” analysis favored Goldsmith. The Supreme Court sided with the Court of Appeals.

Noting that it was not ruling on whether Warhol’s making of works using the photograph was fair use, the Court limited its analysis to the narrow question whether the Foundation’s licensing of the Warhol work to Condé Nast was fair use. On that point, the Court determined that the use of the photograph to illustrate a story about Prince was identical to the use Goldsmith had made of the photograph (i.e., to illustrate a magazine article about Prince.) Unlike 2 Live Crew’s use of “Oh, Pretty Woman,” the purpose of the use in this case was not to mock or parody the original work.

The case is significant for vindicating the Copyright Act’s promise to copyright owners of an exclusive right to make derivative works. While Warhol put his own artistic spin on the photograph – and that might have been sufficient to sustain a fair use defense if he had been the one being sued – the Warhol Foundation’s and Condé Nast’s purpose was no different from Goldsmith’s, i.e., as an illustration for an article about Prince. Differences in the purpose or character of a use, the Court held, “must be evaluated in the context of the specific use at issue.” Had the Warhol Foundation been sued for displaying Warhol’s modifications of the photograph for purposes of social commentary in its own gallery, the result might have been different.

Although the holding is a seemingly narrow one, the Court did take the opportunity to disapprove the lower court practice of ending a fair use inquiry at the moment an infringer asserted that an unauthorized copy or derivative work was created for a purpose different from the original author’s.

Copyright Statute of Limitations and Damages

Warner Chappell Music, Inc. v. Nealy

The U.S. Supreme Court has granted certiorari to review this Eleventh Circuit decision. At issue is whether a copyright plaintiff may recover damages for infringement that occurred outside of the limitations period, that is, infringement occurring more than three years before a lawsuit was filed.

The circuits are split on this question. According to the Second Circuit, damages are recoverable only for acts of infringement that occurred during the 3-year period preceding the filing of the complaint. The Ninth and Eleventh Circuits, on the other hand, have held that as long as the lawsuit is timely filed, damages may be awarded for infringement that occurred more than three years prior to the filing, at least when the discovery rule has been invoked to allow a later filing. In Nealy, the Eleventh Circuit held that damages may be recovered for infringement occurring more than three years before the claim is filed if the plaintiff did not discover the infringement until some time after it first began.

A decision will be coming in 2024.

Artificial Intelligence

Copyrightability

Thaler v. Perlmutter, et. al.

This was an APA proceeding initiated in the federal district court of the District of Columbia for review of the United States Copyright Office’s refusal to register a copyright in an AI-generated work. In August, the district court upheld the Copyright Office’s decision that an AI-generated work is not protected by copyright, asserting that “human creativity is the sine qua non at the core of copyrightability….” For purposes of the Copyright Act, only human beings can be “authors.” Machines, non-human animals, spirits and natural forces do not get copyright protection for their creations.

An appeal of the decision is pending in the D.C. Circuit Court of Appeals.

Infringement

Many cases that were filed or are still pending in 2023 allege that using copyrighted works to train AI, or creating derivative works using AI, infringes the copyrights in the works so used. Most of these cases make additional claims as well, such as claims of unfair competition, trademark infringement, or violations of publicity and DMCA rights.

I have been blogging about these cases throughout the year. Significant rulings on the issues raised in them are expected to be made in 2024.

Trademark: Parody Goods

Jack Daniels’s Properties Inc. v. VIP Products LLC

For more information about this case, read my article, Balancing the First Amendment on Whiskey and Dog Toys.

This is the “parody goods” case. VIP Products used the “Bad Spaniels” name to market its dog toys, which were patterned on the distinctive shape of a Jack Daniel’s whiskey bottle. VIP filed a lawsuit seeking a declaratory judgment that its product did not infringe the Jack Daniel’s brand. Jack Daniel’s counterclaimed for trademark infringement and dilution. Regarding infringement, VIP claimed First Amendment protection. Regarding dilution, VIP claimed the use was a parody of a famous mark and therefore qualified for protection as trademark fair use. The district court granted summary judgment to VIP.

The Supreme Court reversed. The Court held that when an alleged infringer uses the trademark of another (or something confusingly similar to it) as a designation of source for the infringer’s own goods, it is a commercial, not an expressive, use. Accordingly, the First Amendment is not a consideration in such cases.

Rogers v. Grimaldi had held that when the title of a creative work (in that case, a film) makes reference to a trademark for an artistic or expressive purposes (in that case, Fred Astaire and Ginger Rogers), the First Amendment shields the creator from trademark liability. In the Jack Daniel’s case, the Court distinguished Rogers, holding that it does not insulate the use of trademarks as trademarks (i.e. as indicators of the source or origin of a product or service) from ordinary trademark scrutiny. Even through the dog toys may have had an expressive purpose, VIP admitted it used Bad Spaniels as a source identifier. Therefore, the First Amendment does not apply.

The Court held that the same rule applies to dilution claims. The First Amendment does not shield parody goods from a dilution claim when the alleged diluter uses a mark (or something confusingly similar to it) as a designation of source for its own products or services.

Trademark: International Law

Abitron Austria v. Hetronic International

Here, the Supreme Court held that the Lanham Act does not have extraterritorial reach. Specifically, the Court held that Sections 1114(1)(a) and 1125 (a)(1) extend only to those claims where the infringing use in commerce occurs in the United States. They do not extend to infringement occurring solely outside of the United States, even if consumer confusion occurs in the United States.

The decision is a reminder to trademark owners that if they want to protect their trademark rights in other countries, they should take steps to protect their rights in those countries, such as by registering their trademarks there.

Patents: Enablement

Amgen v. Sanofi

In this case, the Supreme Court considered the validity of certain patents on antibodies used to lower cholesterol under the Patent Act’s enablement requirement (35 U.S.C. 112(a)). At issue was whether Amgen could patent an entire genus of antibodies without disclosing sufficient information to enable a person skilled in the art to create the potentially millions of antibodies in it. The Court basically said no.

If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. Amgen v. Sanofi, 598 U.S. ____ (2023)

Patents: Executive Power

In December, the Biden administration asserted that it can cite “excessive prices” to justify the exercise of Bayh-Dole march-in rights. The Biden Administration also has continued to support a World Trade Organization TRIPS patent waiver for COVID-19 medicines. These developments are obviously of some concern to pharmaceutical companies and members of the patent bar.

Conclusion

My vote for the most significant IP case of 2023 was Andy Warhol Foundation v. Goldsmith. Lower courts had all but allowed the transformative use defense to swallow up the exclusive right of a copyright owner to create derivative works. The Supreme Court provided much-needed correction. I predicted that in 2024, the most significant decisions would also be in the copyright realm, but that they would have to do with AI. The prediction turned out to be accurate.

The Copyright Discovery Rule Stands

The Copyright Act imposes a 3-year limitations period for copyright infringement claims. But when does a claim accrue? That is the (potentially) million-dollar question.

Last year, the United States Supreme Court held that as long as a claim is timely filed, damages may be recovered for any loss or injury, including losses incurred more than three years before the claim is filed (Warner Chappell Music. v. Nealy). The Court expressed no opinion about whether the Copyright Act’s three-year limitation period begins to run when the infringing act occurs or when the victim discovers it, leaving that question for another day. “Another day” arrived, but the Court still declined to address it. What, if anything, can be made of that?

front view of the Library of Congress building

Statute of Limitations for Copyright Infringement

The Copyright Act imposes a 3-year limitations period for copyright infringement claims. Specifically:

No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

17 U.S.C. 507(b).

But when does a claim accrue? That is the (potentially) million-dollar question.

According to the “incident of injury” rule, an infringement claim accrues when an infringing act occurs. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. 663, 670 (2014). Under this rule, an infringement victim who did not learn about an infringing act until three years after it occurred would be out luck.

Courts in many circuits, however, apply an alternative rule. Known as the “discovery rule,” it holds that a copyright infringement claim accrues when “the plaintiff discovers, or with due diligence should have discovered, the injury that forms the basis for the claim.” William A. Graham Co. v. Haughey, 568 F. 3d 425, 433 (CA3 2009) (internal quotation marks omitted). According to Patry on Copyright, this is the majority rule.

If a court applies the discovery rule, then the infringement complaint must be filed within three years after the victim learns or should reasonably have learned of the infringing act, even if that act occurred more than three years earlier.

The Look-Back Period for Damages

As I explained in Copyright Infringement Damages, the United States Supreme Court did not have the question about the validity of either accrual theory before it in Warner Chappell Music. Accordingly, it did not address the issue. Instead, the Court limited itself to deciding only the specific question before it, namely, whether damages can be claimed for all injuries that occurred before the victim learned (or reasonably should have learned) of an infringing act. The Court held that they can be. And this is true even for losses occurring more than three years before the infringement was discovered. Statutes of limitations only determine when a claim may be filed; they do not limit the look-back period for recovering damages for injury. “The Copyright Act contains no separate time-based limit on monetary recovery.” Warner Chappell Music, supra.

It must be kept in mind that the discovery rule has an important proviso. The clock starts clicking on a claim from the first date a victim actually knew or should have known of an infringement. In many cases, it may become more difficult to convince a judge that the victim’s unawareness of the infringing act was reasonable if a lot of time has gone by since the infringement occurred. Reasonableness, however, depends on all the facts and circumstances, so it has to be decided on a case-by-case basis.

RADesign, Inc. v. Ruthie Davis et al.

Michael Grecco Productions, Inc. sued RADesign, Inc. and others for copyright infringement. The complaint alleged that the defendant’s infringing use of a copyright-protected photograph began on August 16, 2017, and that the plaintiff discovered it on February 8, 2021. The complaint was filed in October, 2021. As a result, the claim would be barred under the “incident of injury” rule because it was filed more than three years after the alleged infringement occurred. The complaint, however, was filed in the Second Circuit, a jurisdiction that recognizes the discovery rule. Therefore, the question became whether the failure to discover the infringement within three years was reasonable. The district court held that it was not. The court described the copyright owner in this case as “sophisticated” in detecting and litigating infringements and therefore not entitled to the benefit of the discovery rule.

The Second Circuit Court of Appeals reversed, declaring, “This ‘sophisticated plaintiff’ rationale has no mooring to our cases.”

The U.S. Supreme Court’s Denial of Certiorari

RADesign, Inc. filed a petition for certiorari to the United States Supreme Court. The sole question presented was “Whether a claim ‘accrue[s]’ under the Copyright Act’s statute of limitations for civil actions, 17 U.S.C. 507(b), when the infringement occurs (the ‘injury rule’) or when a plaintiff discovers or reasonably should have discovered the infringement (the ‘discovery rule’).” The petition argued that the Copyright Act does not explicitly provide for a discovery rule and asserted that the courts of appeal should not have adopted one.

Unlike in Warner Chappell Music, the Court now had the validity of the discovery rule in copyright infringement cases squarely before it. The Court, however, declined the invitation to review that question. On June 16, 2025, it denied certiorari.

What a Denial of Certiorari Means

Really, the only legal effect of a denial of certiorari is that the lower court’s decision stands. In this case, that would mean that the Second Circuit Court of Appeals’ decision remains in effect for that specific case. For the time being, anyway, attorneys can cite the reasoning and holding of the Second Circuit Court of Appeals decision as legal precedent in other cases.

What a Denial of Certiorari Does Not Mean

A denial of certiorari does not mean that the Supreme Court agreed with the Court of Appeals. The Court of Appeal’s decision sets a precedent in the Second Circuit, but the denial of certiorari does not have that effect. It simply means the Supreme Court has decided not to trouble itself with the question at this time.

Caveats

Copyright owners and practitioners should not read too much into this decision. Even if the discovery rule forecloses a finding of untimeliness on the face of a complaint, a defendant may still be able to assert untimeliness as an affirmative defense. Again, the reasonableness of delayed acquisition of knowledge of infringement must be decided on a case-by-case basis. Copyright owners and their attorneys should be vigilant in detecting infringement of protected works and diligent in timely filing claims.

Read more about Warner Chappell Music and other important cases in Top Copyright Cases of 2024.