Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

And the Band Plays On . . .

Trademarks are a valuable asset to any business, and bands are no exception.

Recently, in a lawsuit that pitted former members of the 1980’s punk band, Black Flag, against one another, U.S. District Court judge Dean Pregerson denied one of the band’s three founders, Greg Ginn, a preliminary injunction against two other co-founders and several other of his former bandmates.

Those former bandmates, including Keith Morris, Chuck Dukowski, Dez Cadena, Bill Stevenson, and Descendents’ guitarist Stephen Egerton have been touring as Flag since the beginning of the year. Ginn took umbrage with this, along with efforts by former band member (and co-defendant), Henry Rollins, to obtain federally registered trademarks in the “Black Flag” name and the band’s four-bar logo. Ginn, who began his own revival tour as “Black Flag” shortly after Flag begin hitting the stage in March, sued for trademark infringement. As a step towards blocking Flag’s use of what he saw as trademarks belonging to himself and to his wholly owned record label, SST Records, Ginn filed a motion for preliminary injunction against his former bandmates.

The battle of the bands took place before Judge Pregerson on October 7, 2013. At that time, the Court disagreed with Ginn’s claim that he and SST Records owned the sole rights to use the Black Flag trademarks (the band name and the four-bar logo).

Significantly, the Court ruled that those once proud marks may well have fallen into “generic use” based on a failure to take the precautions to help them live a long and prosperous life. Judge Pregerson reasoned that the marks had been abandoned based on a failure to take any steps to stop the numerous third parties who have used the Black Flag trademarks without a license. The Court adopted the defendants’ argument that the plaintiff’s multi-decade failure to sue third parties over such unlicensed use rendered those marks incapable for serving as an indicia of the marks’ source, thus vastly weakening and limiting the range of protection to which the moving parties were entitled even under the plaintiffs’ theory of ownership. See e.g. Restatement (Third) of Unfair Competition § 18, cmt d (1995); see also 15 U.S.C. § 1127 (mark shall be deemed to be abandoned where any conduct of the owner, including the failure to sue infringers who are making confusingly similar uses of the mark); Signeo USA, LLC v. SOL Republic, Inc., 2012 U.S. Dist. LEXIS 79356 at *22 (N. D. Cal. 2013) (citing GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 1999).

With respect to the issue of abandonment, the defendants also cited 15 U.S.C. § 1127, defining prima facie “abandonment” of a trademark as nonuse for 3 consecutive years, stating that “[i]ntent not to resume may be inferred from [the] circumstances.”). See also Levi Strauss & Co. v. GTFM, Inc., 196 F. Supp. 2d 971, 976-77 (N.D. Cal. 2002)(courts have applied a partial abandonment theory where the registration describes a class of goods or services on which the trademark owners has ceased using its mark). Specifically, the Flag team argued that neither Ginn nor SST conducted any live musical performances under the name Black Flag for about 27 years absent a 3-concert tour in 2003. However, even taking into account Ginn’s 2003 performance, defendants argued that this still constituted an initial nonuse of 17 years, followed by a second nonuse of 10 years. The defendants argued that even assuming, arguendo, that Plaintiffs ever had any rights in the Black Flag marks for live performances, their 27 years of nonuse constituted prima facie evidence of abandonment.

Also significant, the plaintiffs argued that SST’s continued distribution of Black Flag’s records and merchandise was enough to preserve the relevant trademark rights, the court disagreed. Defendants argued, and Judge Pregerson apparently agreed, that the record label’s distribution of previously recorded works did not, in itself, constitute trademark use with respect to the band’s name or logo. Many labels – like SST — sell phonorecords of many different bands and individual musicians. As such, defendants argued that no label could reasonably argue that it owned the trademark rights in each of its bands’ names by virtue of their phonorecord sales. Likewise, the defendants argued that the sales of merchandise such as buttons, key chains, posters, patches, stickers and apparel did not constitute a trademark use because such uses are considered ornamental. See TMEP § 1202.03 (when a mark is used as a decorative feature on an item, the mark does not serve to identify and distinguish the user’s goods and services and thus does not function as a trademark and does not confer trademark rights). Ornamental matter can confer trademark rights when it serves as a source identifier for a second good or service, such as the performance of live music. However, in this case, the defendants argued the ornamental use could suffice not because SST provided no such services, and Ginn himself had provided virtually none, from 1986 to 2013. According to the defendants, the absence of such performance for nearly three decades – notwithstanding retail distribution – was not sufficient to create trademark rights. At least so far as the motion for preliminary injunction was concerned, Judge Pregerson appeared to agree.

In part based on the foregoing, the Court in this matter ruled that the confluence of a Black Flag and a Flag tour was unlikely to cause any consumer confusion. “The critical determination for confusion is that of prospective purchasers in the marketplace . . . .” Signeo USA, LLC v. SOL Republic, Inc., 2012 U.S. Dist. LEXIS 79356 at *28 (citing Rearden LLC v. Rearden Commerce, Inc., 597 F. Supp. 2d 1006, 1023 (N.D. Cal. 2009)). Specifically, the Court found that there had been tremendous media coverage of the concurrent tours, including articles appearing in the Los Angeles Times, The New York Times, and Rolling Stone. These articles identified and highlighted the differences between the bands, as did the Flag tour posters, which stated the members of the band. Conversely, the Court stated that Ginn had not set forth sufficient and specific evidence of fans being misled. See New Kids on the Block v. News America Publ’g, Inc. 971 F.2d 303 (9th Cir. 1992) (“the trademark laws do not give the New Kids the right to channel their fans’ enthusiasm (and dollars)”).

The takeaway from this ruling is that bands must take affirmative steps to avoid any abandonment of their trademarks. This should take the form of playing live shows every couple of years and diligently pursuing suspected infringers. Finally, it is always prudent for bands to have a “band agreement” that, among other things, lays out the steps for maintaining trademark rights post-performance years. Creativity and good business sense need not be mutually exclusive, especially where bands have access to good legal representation.

Absent such forethought and prudent trademark-preservation conduct, the names of even once-popular bands can go the way of other once popular brands: Yo-Yo, Trampoline, Dry Ice, Shredded Wheat and Escalator. So let the band play on – after all, it’s one of the best ways to preserve its trademark rights.

Jonathan Pink leads the Entertainment and Media practice at Bryan Cave, LLP. He can be reached at 310-576-2258 or at jonathan.pink@bryancave.com. He and his team represented the defendants in this lawsuit.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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