Choosing a name
Why is a name important?
The name you use to identify your band, work or performance is vital and valuable: it is the lifeblood of your reputation. If your artwork or performance is successful, the name will become a very important asset, for it is the name that sells tickets to an exhibition or a performance.
If you fail to protect your name you may be forced to change it, and the reputation that you have earned in that name will be lost. You will have to begin working with a new name and creating a new identity. A worst case scenario could include being required to change your name on the eve of that all important gallery opening or on the opening night of your performance.
How do you select a name?
When choosing another name than your own one to identify your work or performance, you need to select one that is original, such as an invented word or a word that would not normally be associated with your particular artform. An example of the latter would be the name BLUR used by the English pop music group. Choosing an original name has the following advantages:
· it will reduce the likelihood that you will infringe someone else’s rights;
· it will make it easier for you to establish a reputation in the name; and
· it will make it easier to register the name as a trade mark.
Before using a name it is important to conduct searches to see if there are other artists or businesses that have rights that may prevent you from using the name you have chosen. You can do this yourself or through a professional search agency. It is a good idea to select several quite different names in case you find that someone else has the right to use the one you first wanted and you need an alternative. It can be cheaper, and is quicker, to check all potential names at the same time. Your investigations should include:
· your own enquiries to determine whether any of the names you have chosen are already being used. Search the internet, street press, magazines, and other publications for other businesses relating to the particular art form you work in.;
· a business name search through the Australian Securities and Investments Commission’s (ASIC) website which lists all Australian registered company and business names. You can contact an ASIC Business Centre for assistance;
· a trade mark search through IP Australia's offices and website for both registered trade marks and marks that have been applied for;
· an Australian Business Number search through the Business Entry Point. This will display all entities, including trusts, which may have a similar name and are registered for GST purposes;
· a domain name search, for example in relation to the .au domain, through the Aus Registry WHOIS Service www.ausregistry.com.au (for .com.au, .net.au, .org.au; .asn.au,.id.au and .gov.au) and the AUNIC Status service www.aunic.net/aunicstatus.html (for .edu.au). For global top level domains, see the WHOIS service (www.whois.net); and
· a social networking search on websites such as Facebook, MySpace and Twitter.
If you plan to work overseas, you may need to extend your investigations to the countries that interest you.
If these investigations fail to find any use of your chosen name or similar names, you may start using the name with some degree of confidence. Be aware, however, that your searches may not have been thorough enough to guarantee that someone does not already havet rights in the name.
If you discover that someone else already has the same or a similar name, you are faced with the option of choosing another name or names (and repeating the investigations), or of conducting further investigations to determine who is using the name, and in relation to what goods or services. The second option will involve more time and effort and may require obtaining an opinion from a lawyer as to whether the proposed name use is likely to infringe the rights that the other person has in their name.
You might be able to use a name or similar name to one that is already being used by someone else, particularly if the existing use of the name is in an area unrelated to the arts industry in which you are involved. It is, however, best to proceed with caution and it is certainly more advisable to use a unique name.
Who owns names in a partnership?
The membership of arts related partnerships is seldom static. Break ups often raise contentious issues such as who has the right to use the name in the future, and how much compensation, if any, should be paid to leaving partners.
As with most things, preventative measures are best. If the group of artists enter into a formal partnership agreement, all rights and obligations will usually be defined in writing. Many arts related partnerships, though, do not have formal partnership agreements. Should this be the case, each State’s respective partnership legislation specifies that all parties are entitled to share equally in the capital and profits of the business and must contribute equally towards the losses sustained by the partnership. Therefore, the name is owned by all of the partners equally and partners can use the name in partnership with the other members but not individually unless permission is given by the other partners or the rights are sold.
Australian name registration and protection systems
There are number of Australian legal systems for the registration and protection of names used in business, some of which are mandatory, and not all of which apply throughout Australia. To further complicate matters, each system has its own rules.
Registered trade marks
The best way to protect a name is to register it as a trade mark. If you can afford to register your name, then do.
A common misconception is that trade mark registration only applies to logos or the style in which a name is written. Once a name is registered as a trade mark (other than in a logo), however, the registered owner may enjoy a monopoly over the use of that name (that is, the right to prevent others from using the name or a similar name) for - and only for - the particular class or classes of goods or services (or both) for which it is registered. See Arts Law’s Information Sheet Trade Marks for more information about this regime.
Business names
If you operate a business under a name other than your own name, or if you are a company operating under a name other than the company name, you must register the name used as a “business name” with the Department of Fair Trading or Consumer Affairs (or its equivalent) in the States or Territories in which you trade. In addition, most banks will not open an account for a group of people unless they have a registered business name.
You may also need to register a business name if you cannot use your real name to identify your work or performance because someone else has already established a reputation in the same name, and use by you of your real name would be likely to mislead or deceive the public or incorrectly suggest a connection between you and the other person.
It is important to realise that:
· registration of a business name does not give you the exclusive right to use the name, or confer any other rights in the name;
· registration of a business name may be useful, though, to establish the reputation or connection between a name used and a particular business; and
· the rationale behind the business name system is a public policy one: to let consumers know who is actually running a business by making this information publicly available.
Any name may be registered provided that it is not capable of being confused with the name of a company, business or association already registered, and is not misleading or undesirable. For example, these kinds of words can be misleading: "corporation", "club", "society" or "institute". If an application is rejected on these grounds you will be notified. Further information in support of your application may also be requested. In many cases the relevant department may first reject the application, but may be more favourably inclined to consider a further application if you can provide persuasive written information to support it.
Registration costs vary depending on the State or Territory (as at July 2010 they range from $80 to $160 for a one year registration), and business name registrations must be renewed. There are other responsibilities associated with registration, including notifying any changes to the details recorded.
Reputation and misrepresentation
For most artists, especially when starting out, the cost of registering a trade mark seems too high. There are, however, potentially a number of other avenues of protection.
Under an action at general law called “passing off”, protection is given to those who use a name and develop a reputation in that name. This may not protect the person who first thought of the name. More important is who has established a reputation in the name. If there is a dispute in relation to the use of a name, and in the absence of any of the parties to the dispute having the name registered as a trade mark, it may come down to the question of who established a “sufficient” reputation in the name first. What constitutes a “sufficient” reputation is difficult to define and depends on the facts of each case.
In addition, the Federal Trade Practices Act and similar Fair Trading State legislation prevent corporations and individuals from engaging in misleading or deceptive conduct. These laws have been used to stop people or companies from using particular names, or to place restrictions on their use.
It is a good idea to keep copies or records of articles, interviews, posters, performances and releases to help establish that you have a reputation using a particular name.
Online presence and registration
Many artists choose to promote their professional identity, including their name, online This could involve registering your own domain name and/or registering an account on a social networking or media sharing site.
Domain names
The most visible way to establish yourself online is by having your own domain name. Having your own domain name allows you to design a website to function as the face of your arts practice.
Be aware that domain names are granted on a ‘'first come, first served'’ basis. As a result, you are not automatically entitled to use your business name or trade mark as a domain name just because you have registered it.
Domain names are not owned by registrants but rather licensed from a domain name registrar. Once a licence is granted, the registrant has the exclusive right to use the name in that domain for a limited period (which can be renewed) under the terms of the licence. There is no property right in a domain name.
The registration system to licence a domain name is different from the company, business, and trade mark registration systems. To register a domain name you must go through a domain name registrar. If you want to register a domain name ending in .au, you can access an accredited registrar through the Australia Domain Name Administrator. A list of accredited registrars may be found at www.auda.org.au/registrars/accreditted-registrars/. Costs for registering a domain name vary depending on the type of domain chosen and the registration term.
It is possible for the same domain name to exist on another domain at a different level, for example www.mydomain.com (global) and www.mydomain.com.au (Australian). The same domain name may also exist at the same level but on a different domain (i.e. www.mydomain.com.au and www.mydomain.net.au). There may also be similar sounding or similar looking domain names on the same domain.
The Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of expanding significantly the range of available domain names. This could lead to domain names such as .sydney or .music, and give people the opportunity to self-select a domain name extension that is most appropriate or marketable for them. Trade marks will not automatically be reserved for trade mark owners but trade mark owners will have means to make objections to a given domain name. You should consider these developments if you already have a domain name or are thinking about getting one in the future. It seems, however, that the cost of registering a personalised global top level domain (gTLD) name will be high.
Social networking and media sharing sites
The use of social networking and media sharing sites as promotional tools is increasingly popular. Such sites facilitate publicly accessible information about your artistic events and activities.
The most popular networking and sharing sites are Facebook, MySpace, Twitter and YouTube. There are, however, many others including blogging services such as Blogger and WordPress. An artist may use a combination of these at the same time, and many sites enable interoperability so that, for example, a video uploaded to your YouTube channel can be immediately shared on Twitter, Facebook, MySpace and other sites.
Accounts on these social networking sites are free to register and allow personalised addresses (eg. myspace.com/darrenhayes/ or youtube.com/user/darrenhayes), registered on a first come, first served basis.
Disputes
Trade marks and business names
If you discover that someone else is using your name, the first thing to do is to undertake the searches mentioned above, determine the goods or services (or both) in relation to which they are using the name and, if possible, whether they have stronger rights to the name than you do. That is, have they registered the name as a trade mark, did they establish a sufficient reputation in the name before you? If you believe your rights are stronger than theirs, the next step is to write a letter asking them to stop using the name, explaining that you have a reputation in the name or a registered trade mark, or both. If the addressee of your letter does not co-operate, see a lawyer or contact Arts Law.
Domain names
If a third party has already registered your desired domain name, showing that you have used that name as a business name or trade mark may give you grounds to claim that you have a legitimate interest in that domain name and that it should be transferred to you. These claims are resolved through administrative proceedings conducted through a dispute resolution provider.
There are several dispute resolution providers depending on the level of domain name at issue. Disputes over the Australian level domain .au are heard by the Australian Domain Name Administrator (www.auda.org.au), while disputes over top level domains such as .com and .net are heard by either the World Intellectual Property Organisation (WIPO) or the National Arbitration Forum. The administrative dispute resolution proceedings these dispute resolution providers offer are relatively fast and cheaper than court action, but they are not legal proceedings and can be overturned by a court decision.
If you are involved in or need to initiate a domain name dispute, you should see a lawyer who has experience in domain names, or contact Arts Law.
Social networking and media sharing sites
Because social networking and media sharing sites are websites run by private companies, any complaint over registered account names has to be made to the website and resolved according to the website's own policies and procedures. These vary from website to website. For example, Twitter officially prohibits name squatting and has rules covering impersonation and trade marks but does allow 'parody impersonations', while Facebook prohibits any impersonations and allows content owners to reserve or protect certain names.
If you have a dispute over an account name registered on a social networking or media sharing site, you should check the site's policies and complaint procedures.
More information
Business names
Search for registered business and company names using ASIC's National Names Index at http://www.asic.gov.au or contact your nearest ASIC Business Centre for assistance.
For information on registering a business name contact your State or Territory’s Department of Fair Trading or equivalent:
ACT Office of Regulatory Services, tel. ( (02) 6207 0562, www.ors.act.gov.au
NSW Fair Trading, tel. 13 32 20 or (02) 9895 0111, www.fairtrading.nsw.gov.au
NT Consumer Affairs, tel. (08) 8935 7777, www.nt.gov.au
QLD Office of Fair Trading, tel.13 13 04, www.fairtrading.qld.gov.au
SA Office of Consumer and Business Affairs, tel. 1300 138 918, www.ocba.sa.gov.au
TAS Consumer Affairs and Fair Trading, tel. 1300 65 44 99, www.consumer.tas.gov.au
VIC Consumer Affairs Victoria, tel. 1300 55 81 81, www.consumer.vic.gov.au
WA Department of Commerce (Consumer Protection), tel. 1300 30 40 54, www.commerce.wa.gov.au
Domain names
For global top level domains: www.icann.org
For the .au domain: www.auda.org.au
For searching the .au domain: www.ausregistry.com.au; www.aunic.net/aunicstatus.html
For pricing: www.whatsinaname.com.au
Trade marks
IP Australia is the Federal government agency responsible for the registration of Australian trade marks, patents and designs. Their website http://ipaustralia.gov.au and State offices provide information on the registration process and searches of their databases. Telephone 1300 651 010 for contact details.
Australian Business Number
The Business Entry Point is a Federal Government website designed to assist businesses including registration for Australian Business Numbers (ABNs). Their website www.business.gov.au provides information and searches of their databases.