Hi guys - Great news! We finally have an expert opinion on the trademark ordeal. They looked over my post ‘Proof: Management lied to us’ & the prosecution history and answered a few specific questions I had.
The lawyer wanted to remain anonymous but has given me permission to copy and paste their answers here.
This is not only a lawyer but also a lawyer who has years of experience working in intellectual property specifically. This is such a valuable opinion. It is still just one person’s opinion, so don’t take it as fact, but it is a very informed opinion of someone who actually has the expertise to interpret the prosecution history and explain the terms.
Meg: Starter questions - 1) What can they get from the trademark deal - is it just merch/sponsorships or music too? 2) Can their contract interfere with it and can the label still take money even though LAND owns it? 3) Can Camila be accused of trademark infringement because of e.g. promoting 5H on social media or wearing merch etc…?
A trademark is meant to be a physical mark designating the origin of something in trade. That’s all it applies to. There is trademark infringement when someone uses a similar mark to imply a similar source and confuse consumers as to the source of the goods or services. In the context of a band, it is relevant to official merch but that’s about it.
It has nothing to do, really, with touring or record sales. Their mark could be used on those things, and they would have to grant a license to the record label and the tour company to use the mark, but that in itself is not worth much because there’s no competition for their name. There aren’t multiple labels competing with each other to get to use their trademark like there are t shirt companies competing to be official 5H t shirts
They already have a record deal that obligates them to produce music through that label. Almost assuredly, one line in that record deal is a requirement that they grant a license for all relevant trademarks. Same for whatever their touring deal is.
And yes, the label can still take money. The label or management make the deals. The trademark is just a small part of that. The deals would require a license and would pay a fee to the owner of the trademark, here, the girls. In theory, if they could withhold the trademark, the deals would fall through because the trademark is necessary for it to be official, but, again, almost assuredly there is a clause in their contract requiring them to appropriately grant licenses to the mark when they make other deals.
Theonly think not owning the mark would do for Camila is that she couldn’t license the mark out for merch. She can still say she was in the band – that’s a fact. If there is a particular logo, she probably can’t use that (like on her website or something) but stating a fact about her involvement in the band isn’t trademark infringement. And whatever she fails to do – like promoting, etc. – only has to do with her obligations under her record, management and PR contracts. It has nothing to do with the trademark.
Think of a trademark as a seal or a sticker. Whoever owns the trademark gets to decide who has permission to put that seal or sticker on something and designate it as “official.” That’s really all a trademark gives you.
The reason the girls owning their trademark is important (and the boys of 1D) is that no one else can ever officially be 5th Harmony. Their label can’t decide to fire them all and then hire new girls and keep calling the 5th Harmony.
That’s come up with 1D where people wonder whether the boys can leave Syco, reform as another group with a different name, and Syco could create a new 1D. While they can form another group if they want, Syco doesn’t own the 1D trademark, so it can never use that name for anything in the future.
Meg: So basically the girls could technically refuse to give the label permission to use their mark in order to make money off of sales and touring, but that would only make the deal fall through, and it probably doesn’t apply anyway because their contracts probably have clauses set up for this scenario where they have to give the label the right to use the license?
It’s not nothing, because it means no one else can ever BE 5th Harmony without their permission, but it doesn’t give a lot of tangible rights other than licensing fees for merch and stuff.
Meg: That makes so much sense.
Lawyer: Intellectual property is complicated, but the names of things really give away what they are. A “trademark” is literally a mark for trade. A “copyright” is literally the right to make copies.
The devil is in the details, but those are the broad strokes.
Meg: Honest opinion though - I know you can’t judge for sure - but do you think that if the band partnership (without Camila) was formed in dec 2015, the assignment happened in April 2016, and the registration happened in dec 2016 at the same time as Camila left…. do you think they all knew she was leaving?
Lawyer: Yes, or at least they were working under that assumption.
Meg: Yeh thats how i feel - I don’t know much about law but I’m trying to explain to people that these things take a lot of time, effort and preparation.
Lawyer: You can’t just up and quit one day. It takes negotiations and preparations.
[After looking through and working out the prosecution history]
Meg: What do you think about the extensions and the timing? The registration came through 2 days after Camila left. I find that suspicious. They filed an extension request to submit the Statement of Use (SOU). Do you think they were trying to time it right by submitting the SOU in august?
Yeah, I don’t know why they’d do that. It was allowed back in 2014. So they fixed everything by then, they just needed to provide examples of how it was being used. You’re probably right that it was some internal thing that was delaying things. But it’s so weird, because a trademark is easily assignable. There’s no reason not to complete the registration and then just assign it to some other party later once you’ve worked things out. There’s no reason that the party that registers it needs to be the party who eventually ends up with it.
So, Simco could have gotten it registered and then assigned it just to the 4 of them when all was figured out.
Meg: that confirms what I suspected. They basically used the registration date as the big PR event and acted almost as if that was the assignment. But because fans don’t understand the terms, they don’t question it. So basically they ‘saved’ the registration so that they could use it for PR and bring the trademark deal to light. i.e. saved it for when Camila left to set up a positive publicity narrative for the new 4H era.
That makes sense.
Because I see no other reason for delay. If you had a company that hadn’t done anything yet, putting together the SOU would be hard, but they could have done it easily. There’s no practical reason to delay that.
I think that the assignment in April to just the 4 of them is pretty definitive proof that they knew as of then that C wouldn’t be continuing with them.
Meg: I did have a debate with someone recently who said “its not proof, - they could have added C into the partnership if she decided to stay for another album”. But that just doesn’t make sense to me - surely if they didn’t know it would be the other way round - they would put her in and then take her out if she left.
If you have a 5 person band, the default is to include everyone. Why would you leave her out when she’s part of the status quo at the time?
I hope everyone reads this whole thing carefully. This clears up so much confusion on the deal and the terms. Their interpretation of the timings just from looking at the prosecution history also confirmed a lot of my suspicions. Especially the stuff about prolonging the process so that the registration would happen in late December after C left. I am so grateful to this lawyer for taking the time to look at it and answer my questions. This is a rare piece of gold in the sea of misinformation that is tumblr.
I think we can safely say that the trademark deal is a little bit of benefit for the girls, a whole lot of PR and a pretty solid chunk of evidence towards idea that Camila’s exit was known and planned way in advance.
Thanks again to this wonderful human being for taking the time to help us confused harmonisers.