Earth, Wind & Infringement: TM owner succeeds against overclaiming "reunion" band

Earth, Wind & Fire IP, LLC v. Substantial Music Group LLC, --- F.Supp.3d ----, 2024 WL 1025265, No. 23-20884-CIV-MORENO (S.D. Fla. Mar. 1, 2024)

With the ordinary multifactor confusion test, courts position themselves as looking for empirics (even though the thrust of several of the factors is normative). But with nominative fair use, courts engage in more unfair competition/normative reasoning. When a court finds that a use went beyond identifying to suggesting a connection, it often doesn’t use any of the factors that empirically we might use to figure out if that was true. Instead, it generally determines that the defendants did “too much” based on its own sense of what’s accurate. Here, though, a bit of empirics creeps in.

The facts: Earth, Wind & Fire is owned by the sons of Maurice White, founder of the well-known musical group “Earth, Wind & Fire,” and owns trademark rights in the name.

“Defendants decided to form and promote a band, in which Richard Smith would be the guitarist that would perform the music of Earth Wind & Fire. It is undisputed that Smith played with the Earth, Wind & Fire for a few years, but the size of his role during those years is in dispute.” They called the new band, “Earth Wind & Fire Legacy Reunion” and “The Legacy Reunion of Earth, Wind & Fire.” They also used plaintiff’s word mark and its “Phoenix” logo mark. After plaintiffs objected, defendants changed their name to “Legacy Reunion of Earth Wind & Fire Alumni,” made logo and color changes, and ceased using the “Phoenix” logo.

The court granted summary judgment on liability to plaintiff.

Nominative fair use: Earth, Wind & Fire wasn’t readily identifiable without use of its name. What’s “reasonably necessary” to identify it can differ from case to case. Although the initial uses seemed clearly more than reasonably necessary, defendants stopped using Earth, Wind & Fire’s distinctive font, took out the distinctive “Phoenix” logo, switched the title of its musical shows from “Earth Wind & Fire Legacy Reunion” to “Legacy Reunion of Earth Wind & Fire Alumni,” and changed the color scheme. Thus, they satisfied the second element of NFU.

However, the court put the burden on defendants to show that they did “nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” This was a closer call, but the court rejected the defense.

In the Princess Diana case, Cairns, the court “found persuasive that the advertisements for the Princess Diana related products did not claim that they were sponsored or endorsed by the trademark holder, where other of the defendant’s celebrity-related products do state that they are ‘authorized’ by a trademark holder.” By contrast, the silence here was not as meaningful because there weren’t other “authorized” products. And “Legacy Reunion of Earth Wind & Fire” lacked “a clear disclaimer or limiting language about who is performing.” Plus, defendants “combined the advertising with text that discusses the Earth Wind & Fire’s legacy”: their website said that the band “dominated the 70’s with their monster grooves and high energy, danceable hits, garnering 20 Grammy Award nominations and a Hall of Fame Induction along the way.” It further states that “[t]he style and sounds of the greatest hit recordings by Earth, Wind & Fire were built by founder Maurice White and the contributions of a stellar collective of some of the best musicians in the world throughout the decades.” These ads “draw a close, unmistakable association with Earth, Wind & Fire to a degree unwarranted by the historical record.” “Regardless of if Defendants’ musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main (or most prominently known) members of the band would be performing. The use of the word ‘alumni’ is not enough to dispel the notion that Defendants’ band is not sponsored.” This was close, because “some original musicians and members … are performing, [but] the advertisements are overstating the originality of the group. Plaintiff shows this through multiple consumer online posts, commenting with frustration on their expectations based on advertisements verses what they received.” This isn’t evidence of association in general, like the survey in New Kids, but rather of a material quality gap—maybe that kind of evidence is especially relevant.

The court also rejected acquiescence, estoppel, and laches defenses.

A couple of points from the confusion analysis: Third-party use didn’t weaken the mark because each third-party use identified by defendants included “tribute” somewhere in the name and most of the websites made clear exactly who was performing. E.g., “The Ultimate Earth, Wind & Fire Tribute Band” website includes information of the performers, which explicitly states that the Saxophonist Curtis Johnson “[t]oured with the original EARTH, WIND & FIRE BAND.” The “Kalimba – Earth Wind & Fire tribute” site explicitly stated that the band seeks to “accurately reproduce the infectious grooves.” Defendants’ name, by contrast, was “Legacy Reunion of Earth Wind & Fire Alumni,” “which implies not that they are ‘covering’ or ‘reproducing’ the music but were the original performers.” Even “The Earth Wind, & Fire Experience featuring The Ray Howard Band” identified itself as an “experience” and a performance by an entirely different band.

Similarity of advertising media: The fact that the parties used separate websites and social media favored defendants, by showing a distinction between the groups. It just wasn’t enough.

Bad faith: Not shown, because just knowing of the prior mark isn’t enough without an intent to misappropriate.

Actual confusion: emails said things like “I attended the [Earth, Wind & Fire] legacy reunion in Pensacola, Florida in hopes of seeing Philip Bailey, Verdine White and others from the original band. Their pictures are on the advertisement, posters, or whatever. The impression of Reunion would be original band members from various years. Why is it misleading? The pictures should be removed from advertisement. The details read friends and family or something like that.”