The perils of trying to revive a band’s brand | Managing Intellectual Property
30/09/14 14.45
THE PERILS OF TRYING TO REVIVE A BAND’S BRAND
26 September 2014
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 Marianna Furtado de Mendonça discusses, this can raise problems
Using the brand of a previous band
without authorisation violates the
trade mark rights of the holder and
represents parasitic exploitation and
unfair competition, giving rise to
eventual settlement of damages.
However, such use is normal
practice among musicians who
experienced a certain fame in the
past as members of famous bands
and now want to gain stardom again
in a solo career or with their new
group.
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Many musicians wish to continue their careers, after the
band of which they were a member breaks up or changes
identity. In such situations, using a name that is the same
as or similar to the band's brand is attractive, as it already
has a reputation and image among the public and fans.
However, recent disputes concerning the bands Earth,
Wind & Fire, The Doors and Legião Urbana show that this
is not always straightforward. Using the former band's
name can give rise to trade mark issues, as well as raising
questions about copyright and free speech.
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
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The perils of trying to revive a band’s brand | Managing Intellectual Property
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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.
"Newspapers have recently
reported on litigation filed
by Dado Villa-Lobos and
Marcelo Bonfá - guitarist
and drummer of Brazilian
band Legião Urbana"
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
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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 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"
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
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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.
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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.
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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.
Marianna Furtado de Mendonça
© 2014 Marianna Furtado de Mendonça. The author is a partner of Montaury
Pimenta, Machado & Viera de Mello
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