Seattle Trademark Lawyer

Ex-Sugarland founder Kristen Hall has sued her former band mates Jennifer Nettles and Kristian Bush.

Her complaint, filed July 29 in the Northern District of Georgia, alleges claims for breach of an unwritten partnership agreement in which each member agreed to share equally in the country group’s profits and losses.

As evidence of Ms. Hall’s ownership, her complaint alleges that she contributed the band’s “trade name, trademark and service mark” by allowing Ms. Nettles and Mr. Bush to obtain “co-ownership in the trademark and service mark, ‘Sugarland,’” as reflected in the parties’ federal registration for that mark.

Now out of the band, Ms. Hall wants the profits the band has made following her departure.

Word to the wise: musicians out there, if you don’t want to be treated as equal members — meaning equally responsible for the band’s profits and losses — you need a written contract saying so.

And see how registering a trademark in everyone’s names works in litigation? A good thing if you’re the ex-member looking for a cut of your former band’s success. But a lousy thing if you’re the one in the band having to write the check.

As usual, the moral of the story is think about these things on the front end — before you make it big — so you won’t have an unwelcome surprise after you do.

Thanks to Tamera Bennett for bringing this to my attention. Her post in Current Trends in Copyright, Trademark & Entertainment Law here; additional coverage via Law.com here.

This month, Los Angeles-based indie rock band Hazelden received a cease-and-desist letter from the Minnesota-based drug and alcohol treatment center of the same name. The Hazelden Foundation claims the band has infringed and diluted its HAZELDEN family of registered trademarks.

The Hazelden Foundation particularly objects to the “derogatory drug-related, stage named singer, Mary Jane Snow.”

Its cease-and-desist letter states:

“We demand that you immediately cease and desist all use and reference to the registered mark HAZELDEN together with any other derivative names (i.e., Hazeldon, etc.) and acknowledge your willingness to do so within seven days of receipt of this letter.

“Alternatively, should you not cease your infringement of Hazelden Foundation’s mark and acknowledge your willingness to do so, we will bring a Federal District Court action against you under the Federal Lanham Act for trademark and service mark infringement, dilution of Hazelden’s famous mark, the creation of a false affiliation of sponsorship with Hazelden Foundation and disparagement.”

The band, for its part, says it selected its name after World War II test pilot Hedley Hazelden, who crashed several times and lived to tell the tale. However, citing lack of financial resources to defend itself, on March 25 the band offered to change its name once the remaining inventory of its t-shirts and debut album is sold, though no later than the end of the year.

This dispute has been tough on the band. As Ms. Snow put it in the band’s response:

“[C]hanging the name of a band might seem like a simple concept, but really you are asking me to go out of but really you are asking me to go out of business, virtually overnight. [I] come from an extremely poor family, graduated from [N]orthwestern with massive amounts of debt and now for the last two years risked everything for this band by putting over $15,000 on credit cards in an attempt to bring it to market. [A]ll that money went to pay for graphic designers (logo and CD artwork), CDs, website, and overall the initial states of marketing a band — it’s really no different than starting a small business. [I] am truly devastated over this whole situation.”

Think anyone would really confuse a rock band with a treatment center? Doesn’t seem likely. Dilution by blurring or dilution by tarnishment is a closer call, though I can hardly see a nonprofit treatment center believing that suing an upstart band is a good way to spend its money.

Let’s hope the Hazelden Foundation accepts the band’s offer, the band changes its name within the next nine months, and then becomes a huge success.

In November, Crystal Entertainment & Filmworks, Inc., brought suit in the Southern District of Florida against members of the 1980s band Exposé on the ground that it — not performers Jeanette Jurado, Ann Curless Weiss, Gioia Bruno, and Kelly Moneymaker — owns the EXPOSÉ name and common law trademark. The complaint alleged that the band members entered into agreements stating that Crystal’s predecessor owned the mark, which the predecessor assigned to Crystal, as well as a 2006 trademark license agreement with Crystal. The complaint stated claims for false designation of origin, cybersquatting, state unfair competition, breach of contract, and constructive trust.

Unfortunately for Crystal, the complaint failed to plead a basis for federal jurisdiction. On Jan. 23, Judge William Zloch dismissed the complaint without prejudice of his own accord:

“The Court notes that the Federal courts are of limited jurisdiction. The presumption, in fact, is that a Federal court lacks jurisdiction in a particular case until it has been demonstrated that jurisdiction over the subject matter exists. Rule 8(a)(1) requires that complaints contain ‘a short and plain statement of the grounds upon which the court’s jurisdiction depends.’ The basis of the district court’s jurisdiction must be alleged ‘affirmatively and distinctly and cannot ‘be established argumentatively or by mere inference.’ Plaintiffs’ Complaint fails to allege this Court’s subject matter jurisdiction over the above-styled cause. Therefore, the Court lacks federal subject matter jurisdiction over the Complaint. Although the instant Complaint cites various provisions of the Lanham Act, such citations alone are insufficient to establish subject matter jurisdiction over the case.”

The court also noted the complaint failed to establish that diversity of citizenship existed — the alternative basis for subject matter jurisdiction.

The case cite is Crystal Entertainment & Filmworks, Inc. v. Jurado, No. 07-61748 (S.D. Fla. Jan. 23, 2008).

STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark. Yesterday, Western District Judge Ronald Leighton found that plaintiffs filed their suit after the analogous statute of limitations had expired and, therefore, granted summary judgment in favor of defendants based on laches.

The court found: “Defendants stress that Plaintiffs were aware Defendants were calling themselves the ‘Wailers’ since the mid to late 1970s, when they were asked about their relationship to Bob Marley. Plaintiffs argue, without legal or logical support, that there is some meaningful difference between the names ‘Wailers’ (standing alone) and ‘Wailers’ in the context of ‘Bob Marley and the Wailers.’ They claim their 1970s-vintage knowledge of Defendants’ use of the term was only in conjunction with Mr. Marley, and that that use was not offending.

“In making this argument, however, Plaintiffs also concede that they ‘first encountered the Defendants’ band name as simply the ‘Wailers’ at some point in the late 1990s,’ and that they were unaware the Defendants were calling their group the ‘Wailers’ until the late 1990s.

“As the Defendants point out, however, the Plaintiffs’ registration efforts do not eliminate the rights of the Defendants: Neither application for nor registration of a mark at the federal level wipes out the prior, non-registered, common law rights of others. Accordingly, the act of registration does not toll the limitations period, and the Plaintiffs’ 2007 lawsuit to enforce the rights they claim to have obtained by registration is outside the three year limitations period. The presumption of laches applies.”

The court found the defendants could not overcome that presumption.

The court also found that defendant band leader Aston Barrett’s registration of wailers.com was protected by the Anticybersquatting Consumer Protection Act’s “safe harbor” provision for persons who believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful:

“Defendants argue that Barrett’s longstanding use of the name Wailers establishes his ‘abundant good faith’ in registering the domain name. Plaintiffs argue that the issue is one of fact, and that they have not conducted discovery into the matter.

“No amount of discovery is going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs’ application for trademark registration. There is no evidence of bad faith on the Defendant’s part, and the Plaintiffs’ Cybersquatting claim must fail as a matter of law.”

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash. Jan. 2, 2008).

Note: my partner, Kathleen Petrich, and I represented the defendants. As a rule, I do not comment about cases in which I am involved until a judgment is rendered. My previous posts about this case pre-dated my involvement in the matter.

Photo credit: musikizme.com

As STL readers know, I love a good band name dispute. The latest involves Little Willie Lyons, a/k/a “Souljah Boy,” who filed suit yesterday in the District of Nevada against fellow rapper Deandre Way, a/k/a “Soulja Boy,” Mr. Way’s manager, and Mr. Way’s publishers. Mr. Lyons claims that SOULJA BOY infringes and dilutes his common law rights in SOULJAH BOY (with an “H”).

Mr. Lyons states he has sold millions of records as “Souljah Boy,” and has been featured in “volumes of advertising, magazine articles and other media since 1995 in the continental United States and abroad.”

Mr. Way is one of the most popular musicians today. In September, his single “Crank That (Soulja Boy)” reached number one on Billboard’s Hot 100 chart based on national sales and radio play.

In an application to register SOULJA BOY with the Patent and Trademark Office, Mr. Way claimed he first used his mark in commerce in 1997 (though he also claimed a first use date of 2007 and his debut album, “Souljaboytellem.com,” was released this year).

If Mr. Lyons indeed can show priority, and continuous use, he’s probably got a winner.

The case cite is Lyons v. Way, No. 07-1635 (D. Nev.).