Dropping the Mic on Indie Artists: How Trademark Law Fails to Protect Independent Artists Against Music Industry Giants

• Jurisdiction: United States,Federal
• Citation: Vol. 30 No. 1
• Publication year: 2022

Dropping the Mic on Indie Artists: How Trademark Law Fails to Protect Independent Artists Against Music Industry Giants

Kaitlin Hocker
University of Georgia, jwt74222@uga.edu

Dropping the Mic on Indie Artists: How Trademark Law Fails to Protect Independent Artists Against Music Industry Giants

Cover Page Footnote

J.D. Candidate, 2023, University of Georgia School of Law. I dedicate this to Ms. Anita "Lady A" White.

This notes is available in Journal of Intellectual Property Law: https://digitalcommons.law.uga.edu/jipl/vol30/iss1/7

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Hocker: Trademark Fails to Protect Independent Artists

DROPPING THE MIC ON INDIE ARTISTS: HOW TRADEMARK LAW FAILS TO PROTECT INDEPENDENT ARTISTS AGAINST MUSIC INDUSTRY GIANTS

Kaitlin Hocker^*

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TABLE OF CONTENTS

I. INTRODUCTION.................................................................................191

II. BACKGROUND...................................................................................192

A. THE LADY ANTEBELLUM CASES ......................................................................................................192
B. THE LANHAM ACT VS. COMMON LAW FOR TRADEMARK INFRINGEMENT CLAIMS...........................................................195

1. The Lanham Act...................................................................195
2. Common Law........................................................................197

C. SEARCH ENGINE AND STREAMING COMPLICATIONS IN TRADEMARK LAW......................................................................198

III. ANALYSIS.........................................................................................199

A. THE REBELUTION CASE IN COMPARISON WITH THE LADY ANTEBELLUM CASES.................................................................199
B. COMMON LAW RIGHTS AT A NATIONAL LEVEL ......................................................................................................204

IV. CONLCUSION.................................................................................205

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I. INTRODUCTION

"Anita 'Lady A' White was worried she would be erased. Now she worries it has already happened."¹ An independent musician loses more than just a name when a famous musician—backed by a record label—begins using the same band name. They can lose their livelihood. This intellectual property injustice happened to Anita "Lady A" White.² In June 2020, the well-known band "Lady Antebellum" ('TAE") took on White's band name—"Lady A"—as their own.³ The band formerly known as "Lady Antebellum" claims it did not intend to damage Lady A's musical career.⁴ Rather, the band changed its name "in recognition 'of the hurtful connotations of the word 'antebellum.'"⁵ Even so, LAE's name change has detrimentally affected Anita White's career.⁶

Trademark law should protect independent creators. Trademark law's traditional purpose is to protect consumers from confusing the identity of the source of the goods and services they intend to buy.⁷ It is also a tactful mechanism to protect creators like independent artists, who lack the resources to wage full-blown lawfare. Independent artists are defined by their self-made qualities—they produce their music without the backing of a record label or business partnership.⁸ Because they lack the financial support of a record label, they often only have a "moderate budget."⁹

Independent artists must have viable legal recourse against giants of the music industry. They should not be forced—by their lack of financial and legal resources—to capitulate to well-known artists' whims. The law protects these trademark rights through both the Lanham Act and common law,¹⁰ but both

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have advantages and disadvantages for plaintiffs.¹¹ And with the rise of trademark lawsuits related to how consumers interact with creators' marks,¹² the age of online streaming demands a more nuanced approach to settling these band name disputes.¹³

Part II of this Note provides a background to the Lady Antebellum cases, which will serve as a lens for whether trademark law adequately protects independent artists against trademark infringement suits over band names. Part II also briefly explains the Lanham Act and common law trademark infringement claims. Part III evaluates which legal recourse best serves independent artists like Anita White. This Note concludes in Part IV that trademark law infringement recourses should be reformed with consideration for how the internet has affected the music industry by extending common law trademark rights to a national level.

II. BACKGROUND

A. THE LADY ANTEBELLUM CASES

Anita White, the original Lady A, began her musical career "as a [backup] singer in a Motown Revue band during the 90[]s."¹⁴ She performs various genres, ranging from soul to Blues to gospel and funk.¹⁵ White is truly a self-made artist in every sense of the word; in 2015, she produced a mini tour featuring herself and other artists from her hometown of Seattle, Washington.¹⁶ For thirty years, Lady A could perform her music under the stage name that she had made for herself, acting as her manager and agent, with no conflicts over trademark infringement or threats to her band name until June 2020.¹⁷

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In June 2020, during a summer of increased awareness for the Black Lives Matter movement after the murder of George Floyd,¹⁸ LAE's "hearts . . . stirred with conviction."¹⁹ LAE changed their name from "Lady Antebellum" to "Lady A" to make the band "more 'inclusive' as the word, '[a]ntebellum,' had associations 'referring to the period of history before the Civil War, which includes slavery.'"²⁰ The band asserts that it did not intend to deprive Anita White of her band name with the band's name change and claims both LAE and Anita White decided to "'peacefully coexist' during the Zoom call [addressing the dispute]."²¹

According to Anita White, the series of conversations between her and LAE did not occur in the way that LAE describes.²² White asserts that she "was 'not happy' with the agreement" and "obtained new counsel following the discussions."²³ White tried to avoid litigation by offering a settlement agreement between her and LAE, asking for $10 million, "which she says would have been split between herself and donations to Black Lives Matter."²⁴ Also, White asserts that she "[did not] think coexistence would work" because she had been virtually erased both from streaming services and from the internet more broadly.²⁵ White even offered creative alternatives, such as White taking on the name "'Lady A the artist,' [while LAE] could be known as 'Lady A the band.'"²⁶ These efforts were futile because LAE insisted that coexistence would be possible.²⁷

Unfortunately, White was correct—coexistence was impossible; LAE filed suit against White²⁸ in the Middle District of Tennessee "seeking a declaratory judgment that [LAE is] not infringing on [White's] purported trademark

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rights."²⁹ LAE claims in the suit that the band had been using both federally registered trademark names "Lady Antebellum" and "Lady A" simultaneously for years.³⁰ LAE applied to register the mark "Lady A" for several commercial uses of the mark, which the United States Patent and Trademark Office ("USPTO") approved as early as 2011.³¹

In this lawsuit, LAE asserts that up until 2020, Lady A never made challenges to LAE's "'open, obvious, and widespread nationwide and international use of the LADY A mark as a source indicator for [LAE's] recorded, downloadable, and streaming music and videos . . . live musical performances . . . or souvenir merchandise.'"³² LAE also made the assertions that Anita White never registered "Lady A" or applied for registration of the trademark and that LAE's music on streaming services is "immediately distinguishable," ensuring that no "consumers have been confused about the source of [LAE's] music and [Anita White's] music."³³ On these assertions, LAE contended that they were not infringing on any of Lady A's rights to her band name.³⁴

White tried to counter LAE's motion for summary judgment by moving to dismiss for lack of personal jurisdiction—an attempt to move the lawsuit to Washington, where she resides.³⁵ In the alternative, White asked the court to dismiss the case because LAE's suit was an "improper 'anticipatory' declaratory judgment action."³⁶ White also moved to transfer the case because "she anticipate[d] witnesses residing in Washington . . . will be needed to provide corroboration of her trademark rights" and will not be able to travel to Tennessee.³⁷ The court's analysis of the motion to dismiss for lack of personal jurisdiction was partially based on White's claim that she "owns nationwide common law rights in the mark."³⁸ The court concluded that she had purposefully availed herself to the forum of Tennessee through these actions and saw no other compelling reasons to allow the motion.³⁹ The court denied both motions.⁴⁰

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Following LAE's lawsuit against Anita White, White filed a countersuit against LAE on September 15, 2020, in the Western District of Washington.⁴¹ She filed claims against LAE "for trademark infringement and unfair competition."⁴² Under this suit, she filed a "Motion to Dismiss or, in the alternative, to Transfer or Stay."⁴³ The court denied White's motion to transfer.⁴⁴ Although the court originally granted the motion to stay,⁴⁵ the court ultimately "knocked back White's additional attempts to dismiss the lawsuit outright."⁴⁶ The initial litigation between LAE and Anita White filed by LAE is currently ongoing, and it seems certain that the case will continue in the Middle District of Tennessee.⁴⁷ That venue puts White at a grave disadvantage in the suit because she is defending her trademark of the name "Lady A," under the legal basis of common law trademark infringement rights.⁴⁸

B. THE LANHAM ACT VS. COMMON LAW FOR TRADEMARK INFRINGEMENT CLAIMS

1. The Lanham Act

The Lanham Act, enacted in 1946, was legislated by Congress...