Being in South Florida, one of the premier leisure and vacationing locations in the world, a wide variety of ‘celebrity impersonators’ come through our area to entertain tourists and locals at south beach clubs, retirement communities, cruise ships, and elsewhere. A fairly common question we get is, “(I)s it legal to be a tribute act.” The legal analysis is the same whether you are a kick ass Guns and Roses cover band, show up to parties as Barack Obama, or put on original stage productions using Frank, Sammy, and Dean as characters. Here is a quick primer to think about before setting up shop [link to set up corporation].
For simplicity purposes, let’s use a tribute band as an example. Lets say an Artist plays in an Aerosmith tribute band called “Back in the Saddle.” The band actively advertises and markets themselves as “Back in the Saddle: An Aerosmith tribute band” in a non-descriptive font and typeface size, on the internet, flyers, and shirts. The band also dresses up like the guys in Aerosmith and mimics their mannerisms on stage. First, we hope Artist is familiar enough with trademark law where Artist understands immediately that “Aerosmith” is a trademark (and a very famous one at that!) and cannot use that name in commerce. Remember the golden rule of trademark law, first in time, first in right, and Aerosmith has certainly used the word “Aerosmith” (in connection with live music performance) before Artist has. However, this does not mean Artist is banned from using the word “Aerosmith” in the commercial marketplace. The Courts of the United States have carved out “fair use exceptions” to trademark law (based off the First Amendment granting of free speech) and certain situations exist where one person or entity may use another person’s trademark.
The test that applies for tribute bands is called the “nominative fair use,” as a tribute band is using the original trademark (Aerosmith) to describe the original trademark holder’s product, despite the fact that the tribute band is describing their own product. There are three parts to this test.
1. Whether the product/service in question is readily identifiable without use of the trademark
2. Whether only so much of the trademark is used as is “reasonably necessary” to identify the product of service
3. Whether the user does anything that would, in conjunction with the trademark, suggest sponsorship or endorsement by the original trademark holder
Doing a quick analysis of our tribute band, the first part of the test is rarely an obstacle to as it would be nearly impossible for an Aerosmith tribute band not to use an Aerosmith song title and/or identify themselves as an “Aerosmith tribute band.” The second part of the test is much more problematic. Courts have found that using the original band name is acceptable to describe the tribute act, but not using a specific font that the original band used, logo (think rolling stones lips), or slogan. This analysis is done on a case by case basis so there is no sure fire rule here, but to be safe, an Artist should just use the name of the original act, for our purposes “Aerosmith,” when describing their entertainment act. Lastly, Courts have found that tribute bands have “suggested” endorsement by the original act by prominently and boldly playing the band name on promotion material. For an Artist and tribute act to be limit their exposure, they should never more prominently have the original band’s name larger than their own on advertising materials, and use the original name in some exorbitant way. Also under this third factor, Courts place great weight on tribute acts uses phrases that limit potential customer confusion on their flyers, such as “A Tribute to” or “Original Member of” when marketing to the public.
Lastly, rights of publicity and celebrity vary state to state and is not federal law like trademarks so it is impossible to give an exhaustive legal analysis of whether you can impersonate an entertainer in a given state, but overall first amendment free speech protection will generally protect an impersonator entertainer and not prevent the individuals that make up a famous entertainment act from shutting an Artist down.
Overall, there is no way for a tribute act to completely limit legal exposure as a tribute act will always be walking a fine line, but marketing responsibly and not taking to much from the original act will generally drastic limit an Artist’s legal exposure.
Bradley Legal Group, P.A. are Intellectual Property lawyers, Entertainment lawyers and Music lawyers servicing clients in Miami, Fort Lauderdale, Boca Raton, West Palm Beach, Orlando, and Nashville. We also affiliate with entertainment lawyers licensed in New York and Washington, D.C. © 2011 Bradley Legal Group, P.A.