BY KURT DAHL | FROM THE SUMMER 2019 ISSUE OF DRUM!
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. Similarly, Axl Rose famously duped his bandmates into signing away their rights in the band name. As you can imagine, things get messy quickly. So, who has the right to use the band name once a band breaks up?
The answer depends on whether or not a Band Agreement exists. Often a leaving member will forfeit their rights in the name when they leave the band. In such a situation, the remaining members can continue using the name. Sometimes the leaving member will have to be bought out in order for the remaining members to continue using the name. If the leaving member is the sole owner of the name, the remaining members would have to choose a new name.
The case law involving band name disputes demonstrates the 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 does so in a manner that is not confusing and has not agreed to refrain from such representations.
One example of this default rule involves the rock band Steppenwolf. 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.
Another case involves The Beach Boys. In this trial, the members of The Beach Boys 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.
The court held that Jardine’s use of his former band’s name infringed The Beach Boys’ trademark because his 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 Beach Boys name to create or enhance the value of the concert tour. The fact that some promoters and concertgoers could not differentiate between a Jardine concert and Beach Boy Mike Love’s nearby concert also worked against his case.
For any band that has attained commercial success, or that is on the brink of such success, a Band Agreement is highly recommended. It can effectively outline who owns the band name and trademark, and who will continue to in the event of members leaving.