From: SM
To: DCB
Subject: need help with album titles
Date: Mon, 25 Apr 2011 19:29:48 +0000
here are some of the better/ less generic songs, unmastered
im just getting started on this today but if one of these titles
is great i dont have to do any more.
i like the first two:
XXXX XXX
XXX XXXX XXXXX
XXXXXX XXXX
XXXX
XXXXX XXXXXXX XX XXXX
XXX XXXXX
From: DCB
To: SM
Subject: RE:
Date: Tue, 26 Apr 2011 17:18:05 -0500
i can't get the songs to play.
have to wait for cassie to come home.
meanwhile
meanwhile
think about using a very small title-
an acronym or a one/two/three letter word.
i'll listen later and write back anon.
From: SM
i'll listen later and write back anon.
From: SM
To: DCB
Subject:
Date: Wed, 27 Apr 2011 07:34:50 +0000
u need i tunes??? maybe. dont you have that
From: DCB
To: SM
Subject: suggestions
Date: Wed, 27 Apr 2011 15:40:39 -0500
XXXXXX XXX XXXXXXXXXX
XXXXXXXX XXXXXXXX
XXXXXXXXXXX XX XXXX
XXXXXXXX XXX XXXXXX
XXXXXXXXX XXXXXXXXX
XXXXXX XXXX
XXXXXX XXXXXX XXX XXXXX XXXXXXX
XXXXXXXX XXXX XXX XXXXX XXXXX
but i really think you should call it:
To: DCB
Subject: suggestions
Date: Wed, 27 Apr 2011 20:08:15
La Guns!! I like it !!!
La Guns!! I like it !!!
From: DCB
To: SM
Subject: Mktg Strtgy
Subject: Mktg Strtgy
Date: Wed, 27 Apr 2011 23:09:20
1.fearlessly contaminate brand
2.gum-up google
3.cripple criticism
4.smother smalltalk
5.overpower signifier
6.declare V.I.P.tory
From: Record Exec
To: Entertainment Lawyer
Sent: Monday, May 09, 2011 5:51 PM
Subject: LA Guns
One of our artists, SM, wants to call his new album "LA Guns",
spelled exactly like the 80's glam metal band of the same name.
Do you see this as a problem?
From: Entertainment Lawyer
To: Record Exec
Sent: Monday, May 09, 2011 5:51 PM
Subject: LA Guns
Our initial reaction is that this is a manageable risk but Paralegal is going to look at an old case where Aerosmith got into a fight over the same issue involving the PUMP title/ group name. Also these people do still have a registration of their mark in a logo form for recordings and live music:
We want to look at that.
From: Entertainment Lawyer
To: Record Exec
Sent: Tuesday, May 10, 2011 5:51 PM
Subject: LA Guns
We have taken a look at information on the L.A. Guns group at http://en.wikipedia.org/wiki/La_guns , and have reviewed the case of Pump, Inc. v. Collins Management, Inc., 746 F. Supp. 1159 (D. Mass. 1990), in which an obscure group called Pump unsuccessfully sued Aerosmith for putting out their album "Pump." In the Pump case, the court rejected out of hand the possibility that consumers would think the album was put out by the group Pump (this would be regular confusion) because Aerosmith was so much more famous. But he carefully considered whether there would be "reverse confusion"--that consumers might mistakenly think the Pump group was falsely associating itself with Aerosmith's album. The court decided that would not happen.
Here, there is no possibility of reverse confusion because the L.A. Guns are an established band, so no one would think they are trying to associate themselves with the SM album. But the theoretical possibility of regular confusion (sometimes called "forward confusion") cannot be discounted, since the L.A. Guns are an established group, certainly more famous than SM's album and quite possibly more famous than SM himself. So, without taking into account additional facts, it's conceivable that a consumer might buy SM's album entitled "LA Guns" while mistakenly believing it's an album by L.A. Guns.
But the Pump case provides some guidance for assessing the likelihood of confusion in this situation. In finding no likelihood of confusion, the court stressed that the Pump group had a registration for this trademark
and that Aerosmith presented the word "PUMP" with a completely different typestyle. Second, the court stressed that Aerosmith used its own AEROSMITH mark prominently on the cover of the album.
In this case, L.A. Guns have a registration for this mark:
Thus, to reduce the risk of receiving a demand letter, the client should do at least the following two things on the album cover and associated merchandise:
1. Present "LA Guns" in a stylized type not reminiscent of anything having to do with the L.A. Guns group (and it would be helpful not to use periods after the L and the A in the album title).
2. Present SM in a larger typestyle than the typestyle used for "LA Guns." The typestyle for SM should also be distinctive and unlike anything having to do with the group. It would be helpful if SM appeared above, rather than below, the album name "LA Guns."
We also note the helpful fact that, according to Wikipedia, because of personnel changes and disputes, there are now two groups using the name "L.A. Guns," both including former members of the group from its heyday. (Also, on 11/24/08, one of the factions of the group tried to cancel the above registration, but then gave up by 8/23/10.) Normally, in order to have trademark rights, there must be a single source for products or services marketed under the mark. That is not the case here. Thus, if one of the groups were to send you a demand letter, the first point you would make would be that if consumers are distinguishing between two groups called "L.A. Guns," they certainly can distinguish between one or more groups called "L.A. Guns" and an album called "LA Guns" that prominently bears the name of an artist with a completely different name.
In the end, we cannot guarantee you that neither of the two L.A. Guns would not send you a demand letter. But given the state of their mark, and assuming you take the steps outlined above, we believe it would be a manageable risk for SM to call his album "LA Guns." (We assume that if SM were ever deposed, he would say that he did not choose "LA Guns" as a reference to the group. If that is not correct, then the risk would be substantially higher.)
From: Record Exec
To: Entertainment Lawyer
Sent: Thursday, May 12, 2011 5:11 PM
Subject: LA Guns
We are wondering whether an alternative spelling might pass the test:
L.A. Gunz
with the title on the spines and back cover, not the front cover of the LP,
CD or digital packshot.
SM would like to retain the periods.
From: Entertainment Lawyer
To: Record Exec
Sent: Monday, May 19, 2011 6:57:51 PM
Subject: LA Guns
It's not really a question of passing the test; it's more a question of reducing the risk. This is not a black-or-white issue. I think the spelling is helpful, although some consumers might not remember how the group spells its name, so the Z might not make a difference to them. But if you are going to use the Z, I doubt the inclusion of the periods makes much difference. I think spelling is more distinctive for a consumer than punctuation, partly because artists tend to be more consistent re spelling than re punctuation.
I think not putting the name of the album on the front cover greatly reduces the risk, and I don't think putting it on the back cover carries much risk if you follow the rules in my 5/10 e-mail. The issue to me is the spine. Often, album names appear in block letters on the spine. But if the name of the album appears on the spine in a distinctive logo format that is nothing like that used by the L.A. Guns group, and SM appears more prominently than L.A. Gunz on the spine, I think you will have done much to make the risk manageable and it would probably be reasonable to proceed, although I think it would be a good idea to show us the artwork for the spine and the back cover before proceeding. One impression that you should be careful not to give the consumer is the impression that this is a joint album of both groups--that might sound ludicrous to you, but you never know what an unsophisticated consumer might think.
So I think the client is on the right track but that you should show us the artwork before proceeding.
On May 19 2011, Record Exec wrote:
It sounds to me like we can do this now...
From: British Entertainment Lawyer
To: Record Exec
Date: Monday, May 20, 2011 8:43:50 AM
Subject: LA Guns
Still makes me nervous
From: Record Exec 1
To: Record Exec 2
Date: Friday, 20 May 2011 19:19:40
Subject: Fwd: LA Guns
British Lawyer is a bit nervous it seems.
How do you want to handle?
From: Record Exec 2
To: Record Exec 1
Date: Friday, 20 May 2011 19:52:44
Subject: Fwd: LA Guns
SM was pretty wedded to la gunz
From: Record Exec 1
To: Record Exec 2
Date: Friday, 20 May 2011 21:27:03
Subject: Fwd: LA Guns
OK but we have a serious issue here.
Lawsuits a-flying these days.
From: SM
To: DCB
Subject: Fwd: LA Guns
Date: Sat, 21 May 2011 08:41:51 -0700
It looks like I'm gonna have to back off the la guns title. Might not be worth the headache . I said what about LAGunz(UK) and even that seems like it might get a letter.
From: DCB
To: SM
Subject: Fwd: LA Guns
Date: Sat, 21 May 2011 11:05:50 -0500
I don't want anybody to get hurt.
I can just see the two factions healing their schism
I can just see the two factions healing their schism
and coming after you with both barrels blazin.
These headbangers are angry and vindictive.
These headbangers are angry and vindictive.
They've been looking for revenge since '92
and let's face it--
you weren't far from the scene of the crime.
From: SM
and let's face it--
you weren't far from the scene of the crime.
From: SM
To: DCB
Subject: Re: advice pmease
Date: Mon, 23 May 2011 23:48:42 -0700
Went with XXXXXX XXXXXXX
Even though I can barely remember the title.
