The perils of trying to revive a band's brand

The reissue of music and even groups that were hits in the past is becoming more and more common. One practice is for an artist to build a new career leveraging the former group’s name but, as M arianna Furtado de M endonça discusses, this can raise problems.

Using the brand of a previous bandwithout authorisation violates thetrade mark rights of the holder andrepresents parasitic exploitation andunfair competition, giving rise toeventual settlement of damages.However, such use is normalpractice among musicians whoexperienced a certain fame in thepast as members of famous bandsand now want to gain stardom againin a solo career or with their newgroup.

For instance, Earth, Wind & Fire was founded in 1969 in Chicago. Although the mark "Earth, Wind & Fire" has been applied for in Brazil and registered in the United States and in other countries on behalf of its founder, Maurice White, musician Al McKay - guitarist with the band between 1973 and 1981 - formed his own group and called it Earth, Wind & Fire Experience, infringing White's trade mark rights and causing great confusion among fans of the band who believed that it was the authentic Earth, Wind & Fire when they came across McKay's advertisement.

In another case, the remaining members of The Doors (the guitarist Robby Krieger and the keyboard player Ray Manzarek) formed The Doors of 21st Century. Similar examples include Tunde, the voice of the Lighthouse Family and Roger Hodgson, the voice and soul of Supertramp.

Benefits of using a famous brand

Such a strategy, although legally risky, is explained by the benefits that an already famous brand may bring to the new artistic endeavour of the ex-member, particularly where a certain sign has gained positive significance over the years with its audience.

This is because it is the identity of the brand that the public knows, recognises and eventually appreciates. The universe of meaning of distinct signs comprises all abstract and immaterial components of the brand: values, themes, promises, benefits, memberships that have been formed and raised over the years. The meaning of a brand is the result of all opinions and impressions that consumers have about it.

So, taking into account that the strength of the brand is in the sensory experiences the public had with a certain distinctive sign over time, the use of the ex-band's brand apparently brings only advantages to the new phase of the ex-member's artistic career.

Therefore it is normal that the public bears in mind with affection and nostalgia songs and concerts that marked their past, and associates and transfers such feeling to the brand of the group, given that this association makes it easier for the public to identify and accept the new artistic endeavour.

It is notable that the memory of the brand is associated with two psychological components: remembrance and brand image. Remembrance is the capacity to identify and recognise a certain brand in any place and occasion. Image is the opinion that the consumers have on the brand and the values they associate with it.

For this reason advertising and marketing professionals when designing their strategies to build the concept of the brand consider that the amounts spent on its dissemination, whose scope is to put the brand into consumers' minds, should be accounted as investment and not expenditure.

By returning to use a group's brand - in most cases is registered by a third party - that remained at the top of the charts for some time, ex-members succeed and penetrate the market more easily and cheaply. This is easier than developing and investing in dissemination of a new brand that is the general public does not know.

But even with all the benefits identified in these cases, is this practice really advantageous?

Recent case studies

Section 189, I, of the Brazilian Intellectual Property Law (Law 9.279/ 96), lists the reproduction and imitation of a trade mark as a crime. Thus, reproduction or imitation of a brand corresponding to the name of a group registered by a third party is a trade mark infringement that must be fought.

The Brazilian Industrial Property Law does not provide any limitation to the holder's trade mark rights that allows ex-members to legally use the brand of the group they belonged to in the past. It is also noteworthy that in such cases there is no room for discussion about whether or not confusion exists, since this is presumed and is the immediate consequence of the reproduction.

Moreover such conduct is characterised as a repudiated practice of unfair competition, as by using the brand of their former band, the ex-member makes the public believe the former musical group is performing. This amounts to employing fraudulent means to attract, to their advantage, the customers of others; this crime is specified in article 195 of the Industrial Property Law.

In Brazil, when the Earth, Wind & Fire Experience's concert was announced, there was a lot of confusion among the consuming public and, apparently, the producers of the concert decided to cancel the presentation after receiving extrajudicial notifications from White's Brazilian lawyers.

The situation was even more unusual in this case, since the authentic band Earth, Wind & Fire is still performing concerts around the world. Indeed, it would perform in Rio de Janeiro and in São Paulo only two months after McKay's band's performance, with presentations in the same places as Earth, Wind & Fire Experience.

In the case of The Doors of 21st Century, Krieger and Manzarek were judicially stopped by from using The Doors in the name of their new band by drummer John Desmore and by Jim Morrison's family. The US courts decided that the ex-members should pay an indemnity of $ 5 million to the drummer and to the families of Morrison and Pamela Courson (Morrison's ex-wife). Today, Manzarek and Krieger identify their new band as Riders on the Storms.

Newspapers in Brazil have recently reported on litigation filed by Dado Villa-Lobos and Marcelo Bonfá - respectively guitarist and drummer of the famous Brazilian band named Legião Urbana against the company Legião Urbana Produções Artísticas Ltda, which is managed by the descendants of Renato Russo, the leader of the band, who died on October 11 1996.

In this case, the plaintiffs' allegations are that Russo, when still alive, made it clear that the band belonged to its three members: Villa-Lobos, Marcelo Bonfá, and Russo. They argue that they are holders of all IP rights in relation to the sign Legião Urbana.

The plaintiffs also allege that, if the mark has the objective of distinguishing the band's work and the work itself belongs to all three of the members, they cannot be prevented from using the trademark Legião Urbana, even if they aren't configured as the actual trade mark holder according to the registers at the Brazilian Patent and Trademark Office. Therefore, it is unacceptable that the existing registrations are being used in such an abusive way, excluding the plaintiffs from using their own work or even their artistic identity. A trade mark that reproduces an artistic work cannot be used to exclude the author of such work from their own creation. Therefore, the protection of the authors of the creations from the music band Legião Urbana must prevail instead of the company's (defendant) trade mark rights in question.

The defendant, which included Russo as the senior partner as well as the ex-members of the band (including both plaintiffs), applied to the Brazilian Patent and Trade Mark Office on September 16 1987 for the first trade mark applications (now, registrations) for Legião Urbana.

The defendant has presented its defence arguments alleging that after the first fillings for trade mark applications for Legião Urbana, all three minor partners at the time, including the plaintiffs, decided to leave the society, transferring all of their quotas to the remaining partner, Renato Russo. The plaintiffs were properly remunerated for their quotas, giving full and irrevocable release for any other claim in court or elsewhere. Therefore, given that the plaintiffs left the society of their own will and giving full release for any other claim in court or elsewhere, with no other reservations for themselves in relation to any commercial use from the referred trade mark, they have no cause.

There is no final decision yet on the merits of Legião Urbana's case. However, a preliminary injunction order was granted ordering the defendant to refrain from taking any measures that prevent the plaintiffs from using the trade mark Legião Urbana, on penalty of a fine of R$50,000 ($21,550) per act.

This is because the judge understood that while the plaintiffs claim their right to use the trade mark which was always identified with the musical work of Legião Urbana, the defendant owns the registration for the trade mark in Brazil.

Copyright questions

The protection of copyright differs from industrial property rights, as it does not require any type of formal registration. Preventing the plaintiffs from using the trademark Legião Urbana makes it difficult for them to undertake their professional activities, violating section 5, XXVII of the Brazilian Federal Constitution. The trade mark monopoly cannot exclude from its usage those who effectively helped in its success and fame, as is the plaintiff's case.

The defendant has filed an interlocutory appeal to challenge the preliminary injunction decision. It alleges that any mention of the plaintiff in relation to Legião Urbana is legal and was never dealt with by the defendant. Moreover, it argues that using the band's name is a distinct matter from the right to commercially exploit and prevent the irregular use of the trade mark Legião Urbana for products and services protected by the registration and nothing else.

On the other hand, there is no copyright in relation to the isolated expression Legião Urbana given that such protection (the name of the band) has no legal provision in the Brazilian Copyright Law. Copyright is in the work itself (the intellectual creations of the ex-members) and protection is inherent in the work.

Until now, there has been no decision on the merits of the interlocutory appeal and it seems that such litigation will last a long time. Thus, although performers might find it easier to return to the name of the famous band of which they were once a member, the risk of protracted litigation may reduce those benefits. Ultimately, even if it's more demanding and burdensome, the best way to return to the music scene, while avoiding legal problems is to create and invest in a new brand and in the strategic marketing and management.

Source: Managing Intellectual Proprety.