“Do you remember the 21st night of September?” Earth, Wind & Fire famously asks. On that night, the song “September” continues, “love was changin’ the minds of pretenders.”
Unfortunately for the band, one group of (alleged) pretenders isn’t anywhere near changing its mind. In March, EW&F filed a lawsuit in federal court in Florida against promoters of a band named “Earth Wind & Fire Legacy Reunion,” some of whose members previously played with EW&F.
“Legacy Reunion” has counterclaimed that EW&F abandoned its rights by allowing widespread use of the EARTH, WIND & FIRE mark by other tribute bands. EW&F’s motion to dismiss the abandonment claim is pending.
In the meantime, two musical sibling rivalries are also brewing.
Over the years, the actual sisters of Sister Sledge have bumped heads over the band name. The sisters settled a lawsuit about a decade ago, but that wasn’t the end. In 2019, Sister Sledge, LLC – whose sole managing member was band member Debbie Sledge – filed a petition to cancel a registration owned by Kathy Sledge, but the petition was withdrawn. Now, the “We Are Family” sisters are embroiled in litigation brought by Kathy against Debbie in Arizona federal court. An order on summary judgment issued earlier this year held that all of the remaining sisters have rights in the mark and Debbie is entitled to cancellation of Kathy’s trademark registration as void because Kathy does not have sole and exclusive rights. The case is ongoing relating to other claims.
Rudolph Isley of R&B sibling band the Isley Brothers sued his brother Ronald in March 2023 after Ronald registered THE ISLEY BROTHERS with the USPTO in 2022. Rudolph did not agree with Ronald that “It’s Your Thing.” The complaint requested a declaration that the band’strademark is jointly owned by the brothers and accounting and apportionment of any profits Ronald received from the mark. In August, the U.S. District Court for the Northern District of Illinois denied Ronald’s motion to dismiss, setting the stage for the case to go forward. But in early October, Ronald died. At the time of this article, there were no filings in the case related to Ronald’s passing.
As these cases “Twist and Shout” along through litigation, we reflect upon the often-wrought world of band trademark ownership. As with the Sledge and Isley matters, these cases often involve erstwhile band members – even family members – whose relationships turned sour. Many times, multiple agreements and business structures, both formal and informal, complicate the issue, as do questions of who controls use of a mark with joint owners.
Tribute band cases also can include issues around copyright, right of publicity, trademark fair use, and more. Tribute bands can bring up sticky public relations questions of how aggressively to pursue infringers, as Metallica learned in 2016 when the band backpedaled on a cease and desist letter to Canadian tribute band Sandman.
If you don’t want to “Fight the Power,” we recommend to any trademark owner – whether rock ‘n’ roll or brick-and-mortar – to carefully think about ownership, control, and enforcement of brand rights. Don’t wait until “After the Love Has Gone.”