Yacht Rock and the Intellectual Property Rights of Work Trademarked by a Second Party

Question

So I'm curious about the legal standing of an IP trademark owned by a party that did not originate the concept, but which is using it, potentially to the detriment of the original work, to suppress others from doing the same thing, essentially.

Also, most of this is going to sound very silly.

1. In 2005, a group of entertainers created an Internet comedy series called "Yacht Rock," which told the imaginary histories of the careers of a number of AM Gold/West Coast musicians (Kenny Loggins, Michael McDonald, The Doobie Bros., Steely Dan, Toto, etc.). They coined the phrase "yacht rock" to describe the (artificial, arbitrary) smooth-music genre in which these acts circulated. The series was produced as a parody, drawing inspiration from real-life figures and events, and inventing a fictional narrative around them.
2. The success of the Yacht Rock web series has materially benefited the real-life musicians whose stories it purports to tell. Its success renewed popular interest in their catalogues sufficient for them to tour again. Some of these artists have acknowledged this publicly, even seeking to promote their tours as "yacht rock." Satellite radio entity SIRIUS/XM created a "yacht rock" genre channel, while Rock Band video game developers Harmonix recently released a "yacht rock" song pack, capitalizing on this renewed interest.
3. In 2008, a cover act from Atlanta formed, calling itself "Yacht Rock Revue," and playing a number of songs both consistent and inconsistent with the genre, as defined by the comedy group that coined the term "yacht rock." However, what Yacht Rock Revue did that the comedy series writers did not is trademark the term "yacht rock." (A USPTO search reveals that Yacht Rock Revue claims ownership of U.S. Registration Number 3834195, and in June 2018 filed an additional TEAS Plus application for its merchandise.) The band has since used its trademark to cease-and-desist "yacht rock" marketing used by other musicians, including the recording artists whose work they perform.
4. In 2016, the creators of the Yacht Rock comedy series began a podcast called "Beyond Yacht Rock," which creates and defines artificial/arbitrary genres of music. In the process, they honed their definition of "yacht rock" as a musical style, created a "Yachtski Scale" to score the "yachtiness" of a given song along a series of (principally arbitrary) metrics, and wrote vigorous critical defenses of these definitions in a "Captain's Blog." They even interviewed Yacht Rock Revue on the show, and discussed the merits of the band's "yacht rock" material vis-a-vis their definitions.
5. Yacht Rock Revue has openly acknowledged that it nicked the term "yacht rock" from the web comedy series. Yacht Rock's creators have been acknowledged as founders of the genre in interviews with with Rolling Stone magazine and the NPR music show World Cafe. Yet various parties (recently, sports writer Bill Simmons among them) continue to claim ownership of the "yacht rock" concept under some personal definition, Yacht Rock Revue included.

Are there any legal remedies for the writers of the web comedy series to:

1. keep the "yacht rock" term from being leveraged by parties like Yacht Rock Revue
2. profit from their original coinage
3. trademark their evolving definition/terminology
4. protect their future endeavors from similar behavior, which to me seems at least partly analogous to patent trolling

Answer 1

Are there any legal remedies for the writers of the web comedy series to:

1. keep the "yacht rock" term from being leveraged by parties like Yacht Rock Revue
2. profit from their original coinage
3. trademark their evolving definition/terminology
4. protect their future endeavors from similar behavior, which to me seems at least partly analogous to patent trolling

Multiple facts and issues matter:

1. Did the original series writers have a trademark in the phrase either at common law, or by registering it?

2. If they did have a trademark, what was the scope of goods or services covered by the trademark? Generally, a trademark can only be acquired for goods or services actually used by the person claiming it. There is no such thing as a trademark that applies universally.

3. If they did have a trademark was it diluted to the point of becoming a generic term a la the term "Xerox" that lost its secondary meaning association with the goods or services of the original user of the trademark.

4. Does the use by the radio program deceive the ordinary listener in a manner that causes the ordinarily listen to believe that the radio program is affiliated with the comedy show creators and benefits from the "secondary meaning" association with their show that they imparted to the term. A trademark isn't a prohibition on using the phrase, it is a prohibition on using the mark to deceptively market goods as associated with something that they are not associated with.

5. Who owns any rights to the trademark, if there is one, and was it licensed? Often intellectual property in entertainment media is managed by multi-copyright owner association on behalf of IP owners who are often media companies. Typically radio stations including Sirius XM has a licensing agreement with all major management companies controlling the rights to the content that they play. It could be that a trademark is controlled by such an organization and within the scope of the station's license.

6. Also, in addition to trademark claims, there could be claims that the station is creative derivative works of its work that is protected by copyright, subject to fair use, scènes à faire doctrine (i.e. has yacht rock become a genre rather than a particular comedy group's baby), and licensing considerations.

The answers to these questions must be resolved to know that answer.

Answer 2

Unfortunately Yacht Rock’s original creators should have either trademarked the term, challenged revue’s application while it was under review or sued as soon as possible. Trademarking much less legal aid to sue isn’t cheap which is why so many indie artists avoid it or ignore it. At this current juncture they would need strongly experienced attorneys on their side to reclaim their rightful intellectual and creative property. And you not only need your name trademarked but a separate trademark if you are going to offer clothing, hats etc. Done properly by a trademark attorney that’s 2000 to 2500.00 low end just fir basic trademark work. It’s now CRITICAL that even the most niche artists do this because less creative entities like YR Revue are scouring the net for ideas to steal as we speak. As for retro active copyright infringement or suing for infringement long after the fact that is a subject I’m unfamiliar with. I’m assuming we may see more precedent setting cases. I love the original series by the way and consider it one of the greatest things ever created.