Behind the Stage: The TTAB's “Non-Performing Band Member” Ruling on Disputed Ownership of SPLIT DECISION Trademark

The US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) recently took on one of these fights in its ruling in Billy Stott v. Split Decision Music, LLC Opposition No. 91249613 (January 31, 2024) [Not precedential]. The TTAB held that Split Decision Music, LLC (composed of the current band members) was the owner of the band’s name SPLIT DECISION, not the band’s former manager Billy Stott.

While there have been many trademark disputes between artists and management, Stott took a novel approach by trying to cast himself as a “non-performing primary band member” and asserting this as the basis for his ownership claim to the band’s name. The TTAB rejected this argument, plus a Management Agreement that said Stott owned the band name and found in favor of the applicant/band members.

The Background

The band SPLIT DECISION was formed by two individuals in 1990. The following year, the band engaged Stott as the manager. In a declaration, Stott claimed that he asserted at the beginning of the relationship, “I was to have complete artistic and creative control and own all intellectual property including the Split Decision band name. All of the then current band members acknowledged this. I also made this clear to all subsequent band members when I hired them.” The founding band members acknowledged that Stott was “extremely hands-on” and played an important role in developing and promoting the brand. Stott continued his relationship with the band for nearly 30 years, during which time there were many changes in band members including the departure of the founding members. 

However, after the initial few years of this long-lasting relationship, the TTAB found that the band matured and took control over its services. Stott’s level of contributions declined to the point that band members and club owners considered him solely as a booking agent. In refuting Stott’s claim that he was a “full, non-performing primary band member,” multiple prior and current band members stated that Stott didn’t influence the band’s music, clothing, or performances, nor did he make hiring decisions as to the members.

Stott also argued that he was the sole owner of the SPLIT DECISION name pursuant to a Management Agreement. This agreement, signed by certain members of the SPLIT DECISION band (as well as members of an entirely different band), nearly 20 years after his first involvement with the band, included the following provision: “Musician acknowledges that the names of the band and that the trade secrets and confidential information are owned and shall continue to be owned solely by the Manager.” The TTAB found Stott’s reliance on the agreement (which did not identify any specific band name) to be “misplaced.” In siding with the band, the TTAB agreed that, even though the agreement said Stott owned the name, that did not make it fact. 

On this issue, the TTAB leaned on the landmark case of Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (D. Mass. 1986). In that case, the court concluded that the band’s members (not the record company) owned the band name NEW EDITION because the band existed and performed as NEW EDITION before the record company’s involvement, as well as controlled the quality of their services. In the SPLIT DECISION dispute, Stott failed to establish that title to the band name, which predated his relationship with the band, had ever been assigned to him. As a result, he was not the owner of the name despite asserting otherwise in the agreement.

Finally, as to Stott’s self-bestowed title of “primary, non-performing member” of the band, the TTAB rejected this claim. They found that objective evidence weighed against Stott in terms of the three main factors considered in ownership disputes over service marks: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark.

Insight From the Decision

Musical bands and groups often experience constant changes, including in their member lineup and affiliations with managers and labels. This fluidity can create legal complexities including who owns and controls the trademark rights in the name. The owner and controller of these rights can determine what future content and performances are associated with the name, as well as control and benefit from potentially lucrative merchandising and licensing opportunities. The TTAB’s decision in SPLIT DECISIONS can help fine tune what measures can be taken to avoid similar discord. Here are some key takeaways:

1. Clear, Written, and Early Contracts Are Key: When a band is formed, ownership and control over the band name should be expressly addressed in a written agreement. Anyone who becomes involved with an existing band and believes that they should have rights in the band name should identify existing stakeholders and ensure that the necessary assignments are in place for them to establish chain of title to the name. Studios and managers signing existing groups should encourage the artists to tackle these issues early, as future trademark disputes could significantly interfere with the promotion, sale, and distribution of content, as well as touring, performances, and appearances conducted in connection with a disputed name. 
2. Quality Control Can Impact Ownership: Trademarks communicate to the public that the goods/services associated with the mark are tied to a common source. The same applies to band names. The controller of the nature and quality of the music associated with a band name may very well have trademark rights in that name. In the context of a band or group, the controller is whoever determines the band’s look, sound, performance, lineup, members, etc. As a result, the controller might be the band’s collective members, a bandleader, or even a non-performer such as a studio or manager. As disputes over who is the controller can result in fact-intensive fights, specifying who is responsible for the quality of the band’s services also should be covered by written contract.
3. Legal Implications of Departures: When there is a shakeup in the members of a band or group, legal uncertainties may arise, especially in the absence of a pre-existing written contract. As trademark fights between current and former band members typically are protracted, expensive, and, frequently, personal, it is best to agree upfront how ownership of the band’s name will be impacted when there is a change in the members, and who can continue to use the mark and how. Along with this, it is important to be aware that changes in the band’s lineup, management, or creative direction could merit the need for updated contracts. This can help ensure that trademark and other intellectual property rights and ownership are clear and agreed upon by all relevant parties, thereby minimizing potential disputes in the future.
4. Trademark Registration: Bands and artists should clear and register their performance names as trademarks. Clearing a mark prior to use (or at least early on) can help avoid adopting and becoming attached to a name that infringes someone else’s rights. Registering the name as a trademark can help the owner better protect the name from infringers and unauthorized users, which might include former band members, managers, and tribute/cover bands.