Band Name Disputes

Updates on Prince Estate - Heirs Determined; UMG Deal Voided; Possible Dispute Over Prince Stage Show

#createprotect Attorney Tamera Bennett Prince Estate stop Purple Rain Tribute Band

What Happens Now that Prince's Heirs Are Determined?

More than a year after Prince's death, the court certified Prince's heirs as his sister and five, half siblings. Under Minnesota law, half siblings are treated equally with full siblings for inheritance purposes.

The first action of the heirs seems to be challenging deals made by the trustee managing the estate for the past year. News reports state all six heirs agreed in 2016 that the estate administrator was rushing to sign deals for Prince's "vault" of songs and masters when their didn't seem to be a reason to push a deal through. A deal was made with UMG in January 2017 that was worth $31 million. Now there's a discrepancy between what rights UMG actually acquired under the deal signed as opposed to rights currently claimed by Warner Bros in the catalog.

In July 2017, the court voided the deal with UMG and now $31 million should be returned to UMG. Hopefully that money is still held in trust. But what about any commissions the trustees may have earned? 

Can Prince's Heirs Block A Stage Production About Prince?

Is it a musical or a cover band? That's the first legal question I think the heirs need to ask regarding the "A Celebration of Prince Purple Rain" tour that launches in August in the UK. An article from the BBC says the heirs are exploring legal options in regards to the tour.

Do tribute bands trigger "grand rights"?

Under U.S. law and U.K. law, theatrical grand rights require a public performance license to use music in stage/theatrical production. Those rights are fully negotiable and can be withheld by the copyright owner. These are different rights from the small rights that would be secured in order to present a concert. Small rights are much harder to deny so long as the necessary public performance licenses are secured. In the U.S., the small rights are licensed from ASCAP, BMI, and SESAC. In the U.K., PRS for Music is the public performance licensing agent.

If the tour is actually a "musical," then the tour could be shut down if the proper grand rights licenses are not secured from the music publisher. A concert starts to look more like a musical or theatrical stage production when the songs are used as part of the arc of a story line. If the songs are used for dramatic purposes to carry the story forward, grand rights are triggered.

Do tribute bands infringe trademark rights or right of publicity?

What are the options if this is a "tribute band"? I went to see a Journey tribute band earlier this summer and rocked out to the great hits. I had no illusion or confusion that I was going to see the real members of Journey. The name of the cover band didn't even mention Journey. There was a small tag line in the advertising materials saying the group was a tribute band. 

A small tag line is very different from how the Prince "tribute band" is advertising their shows. The purple website, the dove, and the words "purple rain" on the website could all be used to confuse a consumer that somehow this is an authorized tour. This case might come down to less of an issue of copyright infringement, but more of an issue of trademark infringement and unfair competition.  There's also a question of infringing on Prince's right of publicity. In accordance with Minnesota state law, the right of publicity will survive after death.  In the U.S., all of the factors mentioned could potentially weigh in favor of Prince's estate.

I'm not an expert on U.K. law regarding trademarks and unfair competition so I asked my colleague Claire Freeman with Dummett Copp to share her thoughts on the law in the U.K.

“We don’t have personality rights or unfair competition laws in the U.K. Prince’s estate will need to rely on the U.K. laws of passing off and/or trade mark infringement.  For an action under passing off to succeed, the estate must show that fans are mistakenly under the impression that the production has been endorsed by Prince’s estate.  Their chances of success will depend on the court’s assessment of the facts of the case and in particular on the way in which Prince’s name is being used."

Claire went on to say, "In June of this year, Prince’s record company, NPG Records Inc, filed both a U.K. and European trade mark application for the mark PURPLE RAIN presumably in order to try and help them win this legal battle.”

Here's a link to some other interesting tribute band litigation.

Entertainment Law Update Podcast 42 - For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues. Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.

Sister Sledge Band Dispute - Trademark

The Sister Sledge hit "We Are Family" is beginning to sound more like "We Are Dysfunctional Family." Ex-member Kathy Sledge has been touring Australia under the name "Sister Sledge featuring Kathy Sledge."  Three of the original Sister Sledge members are also performing together and toured in Europe.

Are consumers confused? The lawsuit, filed by Sister Sledge, LLC against Kathy Sledge and numerous other defendants, includes fan generated online comments  with fans wondering why the whole group isn't touring together and why Kathy Sledge is touring with back up singers and not her "sisters."

Kathy Sledge left the group twenty-five years ago.  The lawsuit alleges she has repeatedly booked tour dates claiming she is the only remaining member of the group.

The US trademark registration for Sister Sledge is owned by Sister Sledge, LLC.

The Go-Go's Band Partnership Dispute

After 30 years as the bass player for the all girls band The Go-Go's, Kathy Valentine is suing her former band mates for cutting her out of her twenty percent share of earnings. The Go-Go's jumped to fame in the early 80's and continue to make money from merchandise, touring and record sales.  The five band members - Belinda Carlisle, Jane Wiedlin, Charlotte Caffey, Gina Schock and Kathy Valentine - are equal owners in Ladyhead, LLC (receives all revenues for the The Go-Go's excluding touring and owns The Go-Go's trademark) and Smith-Pocket Industries, LLC (the touring arm of The Go-Go's).

The four remaining band members notified Valentine earlier this year that she was out of the group.  The lawsuit alleges the four remaining members formed a new entity, GoGoCo Corp.,  to license all of the rights associated with the name and good will of The Go-Go's as well as touring.  If that is the case, Valentine's twenty percent share of revenues would be substantially diluted as GoGoCo Corp. would be calling the shots on when and how much money would flow to LadyHead, LLC and Smith-Pocket Industries, LLC.

It sounds like the group did things the right way years ago be forming the two initial entities where each band member was an equal owner.  I suspect the operating agreements for those entities address what happens when a band member quits on their own or is forced out.  But, maybe they don't or the language is not beneficial to Valentine, as the lawsuit never specifically discusses those sections of the LLC operating agreement. Instead, the plaintiff's complaint focuses on breach of fiduciary duty and breach of contract in not continuing to pay Valentine her one-fifth.

Sounds like the perfect case for mediation. The parties have all aired their laundry over the years and need a neutral party to help them work through a potential mine-field of separation issues.

Stone Temple Pilots Trademark and Band Dispute

The three remaining original band members of the Stone Temple Pilots sued expelled member Scott Weiland in May 2013 claiming breach of their written partnership agreement, breach of fiduciary duty and trademark infringement. Weiland was voted out of the group in February 2013.  The four group members operated under a written band partnership that allows a partner to be ousted  for numerous reasons, including not making the band a top priority.  The complaint provides a look at the various ways in which Weiland was not putting the band first and how he was subsequently "sabotaging" the band's tour and new album release.

Weiland subsequently contersued the band accusing the members of  conspiracy to oust him and demanding the band/partnership be dissolved.

There are four federal trademark registrations for STONE TEMPLE PILOTS owned in the name of the Stone Temple Pilots partnership and listing the four original partners, including Weiland, as the partners.  Might we see some issues at the USPTO regarding those registrations and who is the proper party to maintain ownership?

Here's the Complaint filed by the Stone Temple Pilots vs Weiland.

More to come as this case progresses.  We always love a good band name dispute.

Mediating the Band Partnership Dispute

Image CC2.0  Martin Fisch 

Image CC2.0 Martin Fisch 

Scenario:  Band members are "in love" and all is rocking along.  Money is starting to be made and then it happens --- the honeymoon is over and a band member leaves voluntarily or is forced out.   A lawsuit is filed and it starts to get ugly. Even a written Band Partnership Agreement or LLC Membership Agreement may not be sufficient to resolve the dispute between the parties.  A third-party neutral, i.e., mediator, might be necessary to hear all sides of the dispute and help guide the band members to a workable solution.

Common battle grounds include:

Who gets to use the band name? Who owns the master recording copyrights? Who owns the song copyrights? Who owns the physical product or merchandise? Can the band keep using the leaving band member's name and likeness?

Here are some on-going band disputes where mediation, also known as alternative dispute resolution, could be used as a vehicle to resolve the dispute by the parties rather than by a judge or jury:

Boston v. Tom Sholz (former Boston guitar player) LIVE - mediation occurred on November 1, 2012 Ariel Pink's Haunted Graffiti J Geils Band En Vogue - lawsuit settled via arbitration Chris Daughtry sued by Absent Element

To learn more about Music Attorney Tamera Bennett's mediation practice click here.

J. Geils sues J. Geils Band for Trademark Infringement

No "freeze frame" for John Geils, Jr "J. Geils" or members of the J. Geils band that announced a tour this year without their name sake.  J. Geils and the band are battling it out at the trademark office and the court-house for who owns the name. John Geils, Jr. through a company I am assuming he has partial ownership in, filed and received a trademark registration of J. GEILS BAND in 2009 for clothing and live performances.  The application shows use dating back to 1967.  The trademark examiner seemed to fully vet the application and required the consent of J. Geils as he is a living individual.

Fast forward to April 2012 when a company named T & A Research & Development Corp. filed a trademark application for "The J. Geils Band" claiming a date of first use in 1969.  Again, the trademark examiner fully vetted the application and issued an initial refusal requiring the applicant to submit a consent from J. Geils and further requiring the applicant to explain its association to the band.  The response is not yet due.

In May 2012, Geils Unlimited, LLC  filed a trademark  cancellation proceeding seeking to cancel the "J GEILS BAND" registration.  The petition for cancellation alleges Geils and other band members entered into a written shareholders' agreement that restricted Geils use of the name J. GEILS BAND.

One more litigious twist - J. Geil's company filed a trademark infringement suit on August 1 in district court.

Be watching for updates on the blog and a discussion on Entertainment Law Update Podcast.