Merchandising is playing an increasingly greater role as a revenue stream for musicians. In light of disruptions faced by the music industry with many live performances being cancelled or postponed since March 2020 due to COVID-19, Triple J and Support Act brought forward their annual Ausmusic T-Shirt Day to April 17 this year (traditionally held during Ausmusic month in November).1 The campaign encouraged music fans to wear their favourite Australian music artist's t-shirt on the day as a way to support musicians, but the campaign also highlighted that merchandising is an increasingly important revenue stream for musicians going forward.
This campaign and recent examples of product releases by musicians, including Ariana Grande's 'Thank U, Next' perfume and My Chemical Romance's face masks, raise broader considerations around musicians' intellectual property rights for creating or selling merchandise. Band names, logos and album artworks commonly applied to merchandise such as t-shirts and posters, and even face masks, may be protected under intellectual property rights such as copyright, design and trade marks.
Intellectual property in merchandise
Trade marks cover distinctive signs such as band names or logos. Registration of a trade mark in Australia gives the owner the exclusive right to use the mark in Australia in relation to particular goods and services. Without an Australian trade mark registration it is harder to prevent unauthorised use of a trade mark (or a similar mark) in Australia.
There may be several forms in which a trade mark can be registered: for example, as a plain word mark, as a stylised mark (in a particular colour or font), or as part of a logo. In some cases, musicians also seek to register their album names for use on merchandise.
When preparing an application for a trade mark to be applied to merchandise, it is important to consider what products are intended to be sold at concerts, in stores or online (for example, t-shirts, mugs, music records, posters), as this will influence the nature and breadth of the application.
It is also important to remember to use the trade mark in the form in which it has been registered, in order to maintain the validity of the registration. In some circumstances the use of a new band logo or a change to the stylised design of the trade mark, may warrant the lodgment of an additional trade mark application. See also our comments below regarding ensuring the use of the mark is properly licensed if a band or musician allows third parties to use or apply their trade mark.
Unregistered rights - famous or well-known marks
In some circumstances, the owner of a famous or well-known trade mark may be able to stop others from using, copying or registering their trade mark for merchandise, even if they do not have a registered trade mark in Australia. However, these rights are often limited to the geographical area in which the reputation has developed. This might make it difficult, for example, to promote or sell merchandise when a band is touring overseas, if there is another band in that region with a similar name or trade mark. There are many examples of bands, including RÜFÜS DU SOL and The Temper Trap, who have chosen to change their band names due to the same or similar names already being in use in the United States.
Copyright protects the expression of information and ideas. These include artistic works such as album covers and literary works such as song lyrics.
There is no need to register copyright in Australia to obtain rights in the work. The author's rights are created whenever the idea is expressed in material form, as long as the work is sufficiently original in order for copyright to subsist in it. The exclusive rights allow the owner to do particular things with the protected work including to reproduce it in material form. Therefore, it is important that copyright works are only applied to merchandise by the copyright owner, or with their approval.
Generally, the first owner of copyright is the author of the work. Accordingly, if a band or musician engages someone else to design or produce a copyright work (such as a band logo) for them, it is important to enter an agreement with the author of the work so that the band or musician retains ownership of the copyright and associated rights, such as the right to reproduce the work. To give effect to a lawful assignment, the agreement must be in writing and signed by or on behalf of the copyright owner. A useful tool to protect copyright is to include a copyright notice on the merchandise. A copyright notice is a small note printed on the merchandise that includes the copyright symbol, the date on which the work was created and the name of the owner.
Unlike copyright, a design must be registered in order to protect the visual features of a product that are new and distinctive. A registered design gives the owner exclusive rights for a period of 10 years, such as the right to make a product which embodies that design. A design is embodied in a product when it is woven into, impressed on or worked into a product (rather than two-dimensional artworks such as surface printing on posters, CD covers or screen printed t-shirts). Therefore, designs are generally a more relevant form of intellectual property protection for merchandise such as uniquely-shaped mugs or perfume bottles, 3D embroidered clothing designs, or designs applied to packaging. If merchandise is to be manufactured on an industrial scale, copyright protection might not apply, and a design registration might offer better protection. However, there are time limits imposed on seeking design registration, so it is important that design registration is sought prior to commercialising a product.
Musicians often authorise sponsors or other businesses to sell merchandise at concerts or events that include their intellectual property such as band names or logos on t-shirts, records and programs among other things. This authorisation can occur in the form of a licence (written or unwritten) that sets out the limitations and conditions on how the intellectual property can be used. It is important to monitor the use of intellectual property by any licensees to ensure that the intellectual property is not applied in an unauthorised way. For example, a sponsor might be authorised to use a trade mark on t-shirts to be sold at one limited concert, but not on posters to be sold at a different event.
Licences are also an important way of protecting a musician's or band's reputation as it assists the artist in controlling the way their intellectual property is used. For example, musicians whose target audience comprises children or young teenagers, are likely to want to limit their merchandise to "age-appropriate" or "family-friendly" products, and are unlikely to ever authorise their brand to be used to promote alcohol. Licences are also a useful way of generating a revenue stream, by ensuring the musician or band receives a financial benefit from the sale of products bearing their name or images.
Anyone wishing to manufacture band merchandise should contact the owner of the band's intellectual property rights, and request a licence to apply the intellectual property to merchandise products. Similarly, anyone wishing to sell band merchandise should make enquiries to ensure that the merchandise they are planning to sell is authorised by the musician or band, to avoid engaging in trade mark, design or copyright infringement (whether inadvertently or otherwise).
As merchandising takes centre stage as a primary revenue stream for musicians whilst live performances are restricted, it is important to be aware of and take a keen interest in intellectual property rights. In particular, it is important to consider:
- who owns the relevant intellectual property;
- whether registration of intellectual property rights (trade marks or designs) can strengthen the protection for musicians or bands;
- whether the appropriate licences or authorisations are in place for any merchandising activities; and
- whether there are monitoring practices and procedures in place to ensure that any unlicensed merchandise circulating in the marketplace is swiftly detected and removed from sale.
Originally published 13th May 2020.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.