What’s in a name? Band names and trademark claims

There have been numerous legal cases arising recently from disputes regarding band names. Usually those cases are about the ownership of the name, and frequently the issue comes to a head when two factions of a once successful band both try to tour or even record using the band’s name.

Many of these cases actually result in litigation, although there are probably many more that go under the radar, with settlements being reached prior to the plaintiff actually issuing proceedings.

One recent case involved the band Live, whose lead singer Ed Kowalczyk recently announced an Australian tour. After leaving the band, Kowalczyk advertised and promoted his solo performances under the name “Ed Kowalczyk of Live.” The company under which the band conducted its affairs filed suit, alleging trademark infringement and trademark dilution. Kowalczyk countersued the company and the individual band members for alleged breaches of fiduciary duty, misuse of trademarks amongst other claims.

Earlier this year Stone Temple Pilots sacked singer Scott Weiland and not long after, three of the group’s members filed a lawsuit to prevent Weiland from calling himself a former member of Stone Temple Pilots. They went further, also trying to prevent the singer from performing any of the band’s material, even though he co-wrote most of those songs. Weiland responded with counterclaims of his own, accusing his former band mates of wrongfully attempting to sack him – an act that he claimed was in breach of the group’s contractual agreement – and for misleading the public by referring to their performances (with another lead singer) as Stone Temple Pilots. The matter is yet to be resolved.

Other bands that have reached court with disputes over usage of a name include The Doors, Deep Purple, The Beach Boys, Lynyrd Skynyrd, The Platters and The Drifters. Closer to home, a dispute over the name the Little River Band was a long-running legal event.

However, a recent court filing took these disputes a step further. This time the dispute isn’t between warring factions of the same band, but rather the band and the ex-wife of one of the members. The band is Van Halen and the dispute centres around the use of the Van Halen name by the former wife of drummer Alex Van Halen, Kelly Van Halen.

Kelly isn’t planning on touring in a band, attracting fans of the band to her shows. Rather, she operates a construction services and interior design business. Van Halen, through its company EVLH Inc, is suing Kelly Van Halen. The Complaint, as lodged in the US District Court in California, states, “This is an action for trademark infringement, trademark dilution, false designation of origin and unfair competition arising out of Defendant’s unauthorised and confusingly similar use of Plaintiff’s federally registered VAN HALEN trademarks and service marks.”

Van Halen own four trademarks – essentially for goods and services ranging from books and other printed materials, clothing, sound recordings, live performances, and musical equipment – and the Complaint claims predictably that, through use of these trademarks, they have acquired extensive goodwill and widespread recognition.  As is the way with American lawsuits, the Complaint reads like a press release detailing the band’s history, from Platinum albums to the band’s Rock & Roll Hall of Fame induction. Australian ’Statements of Claim’ tend to be more stilted and formal and are rarely as entertaining as their US counterparts.

Kelly Van Halen recently applied for two trademarks of her own, relating primarily to furniture, blankets, some specific clothing items, and in the areas of building construction and interior design. Strangely, the band opposed her applications but not in the classes relating to clothing and blankets.  As a result those marks were successfully registered.

This is quite simply a dispute in trademark law, as most disputes relating to band names inevitably become. For all the emotion and ill-will that band disputes regularly involve, the legal battleground is usually in the field of trademarks, rather than any creative aspects.

Registration of a trademark gives the registrant a monopoly right over the use of that mark in relation to the goods and services for which it is registered. The term ‘monopoly right’ means what it sounds like. It’s a right to do something to the exclusion of all others.  Two parties thus cannot trade in the same goods and services using the same trademark without one infringing the rights of the other.

When considering trademark matters, courts look at whether the Defendant’s use of a trademark is likely to cause confusion, mistake or deception as the source of origin of the Defendant’s goods, in that the public, the trade and others are likely to believe that the Defendant’s goods or services are the same as those sold by the Plaintiff or that they are approved by, related to, affiliated, or connected in some way with those of the Plaintiff. The lawsuits in this area usually allege an infringement of trademark and also a dilution of value of a trademark, in that the Plaintiff believes the Defendant’s use of the mark is causing a loss of value to their brand.

Thus the question in the Van Halen matter is not about the morality of a band member’s ex-wife ‘trading off’ the famous name of her ex-husband’s band, but whether the public is likely to be misled about the origin of her goods and services. Is the public likely to believe that the interior design and building construction services that they are contemplating have their origin in the band’s business? What about blankets?

What makes this case more problematic for the band is that they clearly have no history of use of their mark in conjunction with construction services and interior design services. The court may need to consider whether they have any legitimate intention to engage in trade in that area. Equally though, the court may need to consider whether Kelly Van Halen has the intention of deceiving her customers into believing that her design or construction services have some relationship with the band. In celebrity-obsessed Los Angeles, stranger things have happened.

Many will question whether the band has any right to prevent Kelly Van Halen from trading under her own name. Putting aside the question of why she chooses to keep that name despite the marriage ending in divorce in 1996, there is no law that allows you to use your own name in business even if that use infringes another’s trademark. Courts have held there is no absolute right to use one’s own personal name where that use would be confusingly similar to an established use of a famous mark that the public has come to associate with another source.

It will be interesting to see how the case plays out. The message for all artists though is that the ownership of a registered trademark, while being of limited excitement early in their career, could come to have great significance later. And the potential problems are not limited to those from within the ranks of the band, or even the music industry.

Andrew Watt is a lawyer at intellectual property, media and entertainment law firm Gibsons Solicitors.