Band Name Disputes: Who Can Use the Band Name When a Band Breaks Up?

band name disputes

Pink Floyd in happier times

Bands break up all the time. And band name disputes often follow. 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 use the band name once a band breaks up?

The answer depends first on whether or not a Band Agree­ment exists. 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 area of band name disputes becomes quite complex. These situations often involve the leav­ing mem­ber and remain­ing mem­bers hir­ing attor­neys to lit­i­gate over the use of the band name.

What Does the Law Say About Band Name Disputes? 

The cases around band name disputes 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.

The Steppenwolf Band Name Dispute

One of the major US cases involving band name disputes is 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.

The Deep Purple Band Name Dispute

Another high profile case involving band name disputes is 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.

band name disputes

Deep Purple circa 1971

The Beach Boys Band Name Dispute

A third case involving band name disputes is Brother Records, Inc. vs. Jar­dine. In this trial, 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.

The Brother Records band name dispute 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 a Band Agreement help with Band Name Disputes?

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. A Band Agreement makes the issues of band name disputes less of an issue.

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.

To avoid the headache of band name disputes in the event that your band breaks up, have a Band Agreement drafted. As always, email me with questions.

6 thoughts on “Band Name Disputes: Who Can Use the Band Name When a Band Breaks Up?

  1. in the case where the band agreement is no longer exist, can we draft a new band agreement and then cease the existing members?

    • Hi Putri,

      If I’m understanding you correctly, you’re asking if the Band Agreement has expired, can you draft a new one with new members? I would have to see the original Band Agreement but otherwise, if it’s expired, you should be in the clear.

      Thanks

      Kurt Dahl
      Entertainment Lawyer

  2. What can you do if there is no band agreement and the leaving member created the name, but the face and image of the band are with the remaining members. Both parties want to keep the name.

    • Hi Lucie,

      Tough situation. Technically, both sides have a claim to the name, and you won’t find an answer until a judge decides. That costs a lot of money to get there. The fact that the leaving member created the name is not in your favour; the fact that the majority still wants to use the name is in your favour. Email me to discuss further.

      Thanks

      Kurt Dahl
      Entertainment Lawyer

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