Tribute acts: what makes them illegal?

14th March 2022 Intellectual Property

Tribute acts are a wonderful idea. They may not be the real deal, but by impersonating real life legends, they bring joy to the lives of many who may not have had the opportunity to enjoy live performances of their favourite artists.

However, there have been times when tribute bands have found themselves engaged in legal battles for various reasons.

Pearl Jamm, a UK based tribute act specialising in cover songs of the alternative rock band Pearl Jam, found themselves in trouble after they received a cease and desist letter from Pearl Jam. According to the cease-and-desist letter, the use of ‘PEARL JAMM’ on merchandise and in domain names was likely to cause confusion amongst customers and cause them to inter-connect Pearl Jamm with Pearl Jam. This altercation resulted in Pearl Jamm changing their name to Legal Jam (albeit the cover band’s social media page makes it clear they were formerly a ‘Pearl Jamm Tribute’.)

More recently, pop sensation, Tina Turner, sued a German tribute act, Dorothea ‘Coco’ Fletcher, due to Ms Fletcher’s alleged uncanny resemblance to Ms Turner. According to Ms Turner’s legal team, Ms Fletcher, who has performed as Ms Turner since her 30s, resembles too much like Ms Turner in the promotional posters, to the extent that fans could easily mistake the real-life Ms Turner to be connected to the show.

So, what makes tribute acts vulnerable and exposed to potential claims of infringements from the original act and how can tribute bands protect their position against infringement? These are issues this blog seeks to explore.

Are tribute bands legal?

Legally speaking, any band or act can cover a song during a live performance as a result of licenses obtained and paid for by venue owners to performance rights organisations (PROs). To provide context, PROs represent songwriter, composer and music publisher members’ performing rights, and collect royalties on their behalf when their music is played, or these acts perform publicly.

While PROs see to the musical performance side of things, they do not manage other areas connected to the performances, namely, advertising, marketing and merchandise. These areas, if not carefully managed, may land tribute acts in hot water with the very legends they are trying to honour.

Potential IP pitfalls for tribute acts

One of the most common ways in which tribute bands find themselves in trouble is if they perform under a name which is closely linked to the name of the real act. Performing under a virtually identical or similar name can open up a can of IP worms in the forms of trade mark infringement (if the real act has a registered trade mark); passing off (applicable for both registered and unregistered trade marks); or copyright infringement (if the band performs under a logo).

Trade mark infringement

Under UK trade mark law, a person or entity infringes a registered trade mark if they use a sign which is similar to the registered trade mark; the goods and/or services offered under the sign are similar to those designated under the registered mark, and there exists a likelihood of confusion amongst the relevant public that the owner of the sign is the same as, or associated with the owner of the earlier registered mark. 

Many original artists and bands have their own registered trade marks. For instance, the Gallagher Brothers, Noel and Liam Gallagher, are the owners of the word mark ‘OASIS’ which has been registered since 1998. Therefore, if an Oasis tribute act starts performing, advertising and selling merchandise under the name ‘Oasis’, they may well find themselves in receipt of a letter before action from the Gallagher Brothers’ legal representatives alleging trade mark infringement.

There is, however, a caveat in UK trade mark law where non-use of a mark can cause the mark to be revoked. Therefore, if the Gallagher Brothers register ‘Oasis’ solely under class 41 (which covers live performances; and advertising, entertainment services provided by a music group) the mark is likely to be vulnerable for revocation given that the band last performed in August 2009. Fortunately for Noel and Liam, ‘Oasis’ is registered under classes 9 (audio and video recordings), 38 (radio and television broadcasting) and 41, which gives the mark protection against claims of non-use.

Passing off

While trade mark infringement is only applicable for registered marks, user of an unregistered brand can bring a claim of passing off against the infringing party.

To succeed under passing off, the original band or artist must prove that the tribute band’s use of their name or any other feature (in which the original band vests goodwill) constitutes misrepresentation, which is likely to cause loss/damage to the real band. Essentially, the original artist must prove that the tribute act is ‘passing off’ as the real band or artist.

If we take Oasis’ example again, to establish a case of passing off, Oasis tribute bands (those who do not have registered rights), through their use of the ‘Oasis’ sign have to convince fans that Oasis have reunited and this misrepresentation is harmful to the actual band (for instance, if sales for the real Oasis merchandise is being diverted to the tribute act).

Passing off is not easy to establish and the threshold for success is relatively high. This is precisely why many bands and artists choose to register their trade marks to claim maximum protection against infringement.

Copyright infringement

Copyright is applicable for logos as logos constitute a piece of artistic work. If a band or artist performs under a logo and that logo features in the tribute bands’ advertisement and marketing material, the original band may have cause to bring a claim of copyright (and trade mark) infringement. Contrary to popular misunderstanding, names do not qualify for copyright protection. Oasis, therefore, cannot claim copyright infringement against a tribute act performing by a similar name.

So, what next for tribute acts? 

Albeit perfectly legitimate, performing as a tribute act carries significant risks from an IP perspective, as seen above. So, what can tribute acts do to minimise risks of infringement? Below are some practical tips:

  • When choosing a stage name, it is best to steer clear from names which resemble names of the original band or artist. The more unique the name the less chance of customers confusing the tribute band with the real act, thereby minimising risk of infringement.
  • Once a unique name is chosen, ensure the name is registered as a trade mark to heighten importance of the brand and to also minimise infringement. Trade mark registrations should be subject to relevant clearance searches. Clearance searches will reveal similar marks operating in the market and help minimise scope of infringement and opposition.
  • Make it clear the act is a tribute act! This should reassure the original act that the tribute act is not trying to fully replicate the original band with the intention to misrepresent.
  • If tribute acts or management companies do receive an infringement claim, they should seek legal advice immediately. It may be that the claim is weak, yet too often, tribute acts (especially those who feel they cannot compete with a large organisation) wish to immediately hand over their rights. Obtaining the correct legal advice is important in preserving your brand.

JMW Solicitors LLP have a dedicated Intellectual Property team who handle a breadth of cases (both contentious and non-contentious). Please see a link of our page: https://www.jmw.co.uk/services-for-business/intellectual-property-solicitors. For advice or further questions please contact 0345 241 5305 - the team would be delighted to assist!

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Anamitra Mukhopadhyay is a Solicitor located in Londonin our Intellectual Property department

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