Who Can Use the Band Name if the Band Breaks Up? by Kurt Dahl

Bands break up all the time. Sometimes one or more members want to continue using the band name, as was the case with Pink Floyd in the 1980s when both Roger Waters and David Gilmour were touring with two different bands under the name Pink Floyd. Who has the right to do so?

The answer depends first on whether or not a Band Agreement exists that governs this situation. Read my post on Band Agreements for more. If a Band Agreement states that the exiting member has the right to use the name, then the remaining members likely have no claim against the leaving member. If the agreement states that the leaving member has no right to use the name, then the remaining members may be able to sue for breach of contract and possibly trademark infringement. It is a good idea for the remaining members to consult an entertainment lawyer in such a situation, to determine the extent of their rights and possible claims against the leaving member.

If there is no Band Agreement in place, the waters go from muddy to muddier. It will likely involve the leaving member and remaining members hiring attorneys to litigate over the use of the band name.

What does the case law say on the matter?

The cases in this area demonstrate the default rule that trademark law will not prevent a former band member from making truthful representations of former affiliation with his or her former band, so long as the former member:

i) does so in a manner that is not confusing; and ii) has not agreed to refrain from such representations.

In Kassbaum vs. Steppenwolf Productions, Inc., the court held that the former bassist from Steppenwolf was not barred by contract law or trademark law from using the phrases "Formerly of Steppenwolf," "Original Member of Steppenwolf," and "Original Founding Member of Steppenwolf" in promotional materials for a new band, provided that these phrases were less prominent than references to the new band.

In HEC Enterprises, Ltd. vs. Deep Purple, Inc., the management company for the rock group Deep Purple brought suit against a former member of the band from using the names DEEP PURPLE and NEW DEEP PURPLE in connection with his live musical performances. Notwithstanding the fact that the “original” Deep Purple had ceased performing several years prior to the former member’s resurrection of the name, the court found that the DEEP PURPLE mark was still in use given that the group’s recordings remained in distribution. Having established that the original group’s management owned valid rights in the name, the court enjoined the defendants from making further use of the names DEEP PURPLE and NEW DEEP PURPLE, and awarded damages to the plaintiffs.

In Brother Records, Inc. vs. Jardine, a corporation formed by members of the Beach Boys which owned the rights to the THE BEACH BOYS trademark sued former Beach Boy Al Jardine to stop him from using the following names: Al Jardine of the Beach Boys and Family & Friends; The Beach Boys “Family and Friends”; Beach Boys Family & Friends; The Beach Boys, Family & Friends; Beach Boys and Family; as well as, simply, The Beach Boys. This case provides an example a band creating a corporation that owns and licenses the right to the band name, and being able to stop an unlicensed band member from using said band name.

Brother Records brings up the issue of ‘nominative fair use’, which allows a defendant to use a plaintiff’s trademark to refer back to the plaintiff’s goods and services. Such use is allowed where: i) the product or service at issue is not readily recognizable without use of the trademark; ii) only so much of the trademark is used as is reasonably necessary to identify the product or service; and iii) the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The court held that Jardine’s use of his former band’s name infringed the Beach Boys’ trademark because Jardine’s use indicated that the Beach Boys sponsored or endorsed his concerts. For example, some of Jardine’s promotional materials displayed “The Beach Boys” more prominently than “Family and Friends,” and Jardine’s management testified that they recommended using the THE BEACH BOYS name to create or enhance the value of the concert tour. Finally, the fact that some promoters and concertgoers were actually confused – they could not differentiate between a Jardine concert and Beach Boy Mike Love’s nearby concert – worked strongly against Jardine’s case.

How can the Band Agreement help?

For any band that has attained commercial success, or that is on the brink of such success, a Band Agreement is highly recommended, as it can effectively outline who owns the band name and trademark, and who will continue to in the event of members leaving. Often these agreements allow former band members to promote themselves as “formerly of [band’s name],” although typically there are limitations placed on how this can be done. For example, there may be a time restriction to how long this representation can be made, and there also may be limits placed upon the type size and font in which the band name appears.