Online adult entertainment is booming in these otherwise difficult times. Traffic and profits are up as so many of us try to fill the days at home and away from each other. The new gold rush has attracted a lot of new faces – and new names. But some of these new performers are using old stage names that established models have spent substantial time and resources promoting. So how can a model protect his or her own stage name and prevent newbies from profiting off this hard work? Separately, how can newcomers make sure their stage names do not infringe on someone else’s rights?
Starting with the basics, a performer can choose an assumed stage name for their online persona. If the performer is running a business through this pseudonym, most states require that the name be registered as “fictitious name” or d/b/a (“doing business as”). This is done at the state or county level, and some states require publication of the intent to use a fictitious name in a newspaper before it can be registered. Registering a fictitious name does not give the performer any rights in the name or prevent anyone else from using the same or similar name. That is the realm of trademarks. If the name is distinctive enough, the performer can apply for a trademark registration at the state or federal level. Online performers are almost always engaged in interstate commerce, so they can seek federal registrations at the United States Patent and Trademark Office (USPTO).
Trademark applications can be tricky. First, the performer (or an attorney) should search carefully to determine whether anyone else is using the same or similar stage name for related services. If so, there is a potential for infringement, and a different name should be considered. Changing a few letters or the spelling of the name will generally not be sufficient if the chosen name is confusingly similar to a registered trademark. If the name is clear of potential conflicts, the next consideration is whether the name is a generic term, or if it describes the service being provided. If so, registration on the Principal Trademark Register will be difficult if not impossible. Assuming the name does not infringe someone else’s rights, and is not generic or descriptive, the performer can consider filing a trademark application with the USPTO. The filing will require that the performer describe the services connected to the name and provide a “specimen” showing how the mark is being used in interstate commerce. Importantly, when applying for a trademark that refers to real person (such as a stage name), that person will need to be identified in the filing and consent to the application. If this is all done correctly, the performer can expect to receive a trademark registration certificate in about 8-12 months.
For those models who have planned ahead and obtained a trademark registration for their stage names, stopping other models from using the same or similar name will be much easier. A trademark registration is considered presumptive proof of ownership of the brand. Online platforms like Twitter and Instagram will typically respond quickly to infringement or impostor claims based on violation of a registered trademark. Those who register domain names incorporating the registered trademark can be taken down efficiently using domain name arbitration claims filed with the World Intellectual Property Organization or the National Arbitration Forum. In the event litigation is necessary to stop infringement, a trademark registration will save significant legal costs that would otherwise be required to prove up trademark rights. Owning a trademark registration gives models powerful ammunition against newcomers who use confusingly similar stage names in the same industry.
What if the model does not have a trademark registration? This is where things get more complicated. It is not absolutely necessary to have a registered mark to stop others from infringing. Use of a name in commerce can generate “common law” trademark rights which are enforceable under certain circumstances. Therefore, if a model named “Blue Angle” discovers that another model is using the name “Blu Angle”, it all comes down to who started using the name first. The first to use the name has priority rights in the United States. One exception is where a party has filed an “Intent to Use” trademark application with the USPTO, reserving the right to use the name in the future. In most cases, however, the first to use the stage name as a trademark can stop the later user from utilizing a confusingly similar name.
In the current expansion of live cam, fan site, and tube site business models, many performers are using similar stage names. Some may be generic or descriptive which can pose substantial hurdles to pursuing any infringement claims. But others are unique brand names which are inherently valuable. Mass consumer confusion can result from competing models using the same or similar stage names in the adult industry. A model’s brand name is the sum total of his or her reputation, quality, personality, and business goodwill. Tolerating infringement of these rights by other models weakens the value of the brand and can ultimately result in loss of trademark rights through abandonment. Therefore, models using established stage names should consider enforcing their rights against trademark infringers.
New adult performers are also encouraged to properly vet their proposed stage name by making sure they have not chosen a name that infringes on the rights of established models. One way to do this is to search the USPTO for registrations and pending applications. Note, however, that searching the USPTO records does not automatically reveal confusingly similar names or names that may sound the same but are spelled differently. This type of search also does not reveal state-level trademark registrations or common law uses by other models. That kind of exhaustive search takes time and careful analysis. Attorneys typically provide this service in conjunction with various trade name clearinghouse databases. Whether name clearance is done with assistance of counsel or on your own, some effort should be undertaken to ensure your desired stage name is not a ticking time bomb for an infringement claim by a superior rights holder.
New models are typically welcomed into the adult industry with open arms. Groups like the Free Speech Coalition and Pineapple Support provide numerous resources for newbies in this industry. While there will always be room for new adult talent, all performers must respect each other’s trade name rights.
Lawrence Walters heads up Walters Law Group which has represented clients in the adult industry for over 30 years. Nothing in this article is intended as legal advice. Mr. Walters can be reached at www.FirstAmendment.com or on social media @walterslawgroup.