Imagine That IP Law Blog

The summer of 2023 marks the most significant summer for concert goers since the start of the COVID-19 pandemic. With a highly anticipated concert line up ranging from Taylor Swift and Beyoncé to Billy Joel and Stevie Nicks, fans are spending hours waiting in ticket queues and arriving hours early to shows to buy merchandise. When purchasing goods within the venue or from a distributor licensed by the artist’s team, consumers assume that the products are made to high quality standards and accurately reflect the artist’s brand. However, despite the quality assurance, many fans are still deterred by high prices and opt to purchase commemorative tee-shirts from sellers outside the venue. For decades, these opportunistic third parties seeking to capitalize on a musician’s established brand have utilized tours to earn a quick buck from fans looking for cheaper merchandise.

As musicians prepare for massive tours, attorneys with clients who design, manufacture, or distribute unlicensed merchandise should be aware of the fine line between infringement and artistic expression. This situation arises for several reasons, including the fact that celebrities frequently submit intent-to-use trademark applications prior to using the mark in commerce. This means that, until a celebrity puts their mark into commerce, which is often not until a tour begins, it is unclear what the artist’s official mark will be or how their team will use it in commerce. In addition, many celebrities excessively register intent-to-use marks. They do this to preemptively expand their legal rights. This helps to ensure that there is no likelihood of confusion between the celebrity’s trademarks and a third party’s, as well as to prevent unauthorized vendors from diluting the artist’s brand. As a result of aggressive trademarking practices from celebrity teams, third parties can unknowingly find themselves infringing a musician’s trademark by producing almost any unlicensed product.

It may be surprising that major celebrities would specifically target seemingly small-scale infringers such as the roadside tee shirt seller outside a show. Yet, the reasons that many celebrities do helps rationalize their trademarking strategies. First, touring has become a major expense for artists and their teams. How merchandise profits are distributed and who gets a cut is often a major business negotiation, which creates an incentive for an artist’s team to cut off trademark infringers during tours to maximize profits. Secondly, some artists enforce their rights in order to protect their fans from buying a low-quality product, such as a concert keepsake, or believing that the cheaper product was approved by the artist. The latter is more likely the case because, if consumers believe that the celebrity is the source of a poor product, then the intangible parts of the artist’s brand, such as goodwill, begins to deteriorate. In turn, this makes the commercial value of the celebrity’s brand less valuable on the market. In addition, the music business has largely become a digital industry, particularly over the last two decades. Touring is one of the last true physical parts of musicians’ careers and a rare opportunity for their teams to come face to face with trademark infringers. While many online trademark infringers may never become known, stopping infringers outside of concerts tests the effectiveness of an artist’s injunction and other judicial remedies that an artist’s legal team obtained before the tour started.

One of the most prominent celebrity trademark enforcers is Taylor Swift. In 2009, Swift developed TAS Rights Management consisting of a team of attorneys who actively monitor and respond to intellectual property claims for and against Swift. Historically, the preparation for a tour correlated with increased intellectual property enforcement against infringers by her team. For example, in 2018, prior to the start of her Reputation Stadium Tour, Swift’s legal team filed a preemptive lawsuit against various Jane and John Doe’s seeking an injunction against the sale of counterfeit merchandise outside of her shows. In addition to an injunction, the popstar’s legal team sought an order requiring the distributors to fully cooperate with an investigation as well as an order requiring the payment of monetary damages.

Swift also provides a strong example of excessive celebrity trademark registration before a major tour. Presently, Swift is performing on The Eras Tour, for which her team registered the tour’s name as a word mark with the USPTO for use on standard concert merchandise and services. TAS also registered “The Eras Tour” for use on “cooking spoons,” “crystal,” “ornaments of china,” and various “educational services,” among other unique goods and services that may actually never be used in commerce by her team.

Swift is not alone by any means in her efforts to protect her trademarks from third party vendors while on tour. For example, in 2017, Harry Styles’ merchandising team brought a similar preemptive lawsuit against unknown and future infringers who intended to sell unauthorized merchandise outside of his shows. Just this year, the singer’s team successively argued for an injunction in an Illinois District Court aimed at preventing infringing goods sold by international distributors from reaching the United States. These efforts coincide with a recent trend by individual artists and major corporations, such as Live Nation and its subsidiaries, to publicly denounce infringing merchandise sellers at concerts in the media and legal arenas. Both the public and legal orders put prospective infringers on notice that these actions are unwelcome at their shows and often make enforcement on-sight easier for venue security or the police.

This summer presents an interesting opportunity for companies who want to capitalize on the return of touring. Along with understanding celebrity trademarking practices, attorneys should counsel their clients on the potential benefits of trademark licensing to establish a legal relationship between the celebrity’s team and the client’s business. In addition, due to the fact many musicians preemptively file complaints and receive rights against infringers prior to commencing a tour, attorneys should work with their clients to evaluate and explain the costs associated with infringement near a show. These costs range from being asked to leave the premises to a restraining order and turning over profits to an artist’s team. Despite these potential sanctions, it remains unclear when potential and past infringers will start to enjoy being inside the stadiums watching the performances more than working on the outside.