In 1970, singer Maurice White founded a musical group called Earth, Wind & Fire. The band's timeless and unmistakable songs, including the hits "September" and "Let's Groove," range in genre from R&B to disco to pop. Thanks to its sustained popularity, Earth, Wind & Fire has outlived even its founding member. Over forty albums and fifty years later, Earth, Wind & Fire continues to perform today, in part thanks to the over thirty musicians who at some point have joined the band to maintain its legacy. The Earth, Wind & Fire limited liability company ("Earth, Wind & Fire LLC"), controlled by the sons of Maurice White, owns all trademarks associated with the band, including the EARTH, WIND & FIRE word mark and the iconic "Phoenix" logo mark, shown below.
Numerous former members of Earth, Wind & Fire have continued to perform on their own while advertising themselves as former members of the band. Richard Smith, founder of Substantial Music Group and former guitarist for Earth, Wind & Fire, went a step further and created a new band called "Earth, Wind & Fire Legacy Reunion" that marketed itself with the original Earth, Wind & Fire word mark and Phoenix logo. In response to complaints from the original band's counsel, in October 2019, White's band stopped using the Phoenix mark and the original band's distinctive font. The band rebranded to "Legacy Reunion Earth Wind & Fire Alumni" and adopted a different logo, shown below, before ceasing to perform in November 2019.
After the band started to perform again in September 2022, Earth, Wind & Fire LLC sent a letter to the "Legacy Reunion" band asking it to cease its promotional activities. When the Legacy Reunion failed to comply, the LLC filed a complaint on March 6, 2023, alleging trademark infringement, unfair competition, and false advertising under the federal Lanham Act.
The parties brought separate motions for summary judgement. Defendants Substantial Music Group LLC ("Substantial") and Stellar Communications, Inc. ("Stellar"), who both manage "Legacy Reunion of Earth Wind & Fire Alumni," claimed that all allegations should fail as a matter of law through the application of the nominative fair use doctrine. In the alternative, they said, Earth, Wind & Fire LLC's claims should be barred by acquiescence, laches, or estoppel because the original band waited too long to file a complaint. The court rejected these arguments.
Although the Eleventh Circuit has not addressed nominative fair use as a defense, the Southern District of Florida applied the three-part test articulated in New Kids on the Block v. News America Publishing, Inc., 971 F. 2d 302, 308 (9th Cir. 1992). Nominative fair use, unlike classic fair use, only allows a defendant to use a plaintiff's mark for the purpose of describing or identifying the plaintiff's product. According to the New Kids test, a defendant's conduct is protected as nominative fair use if 1) the plaintiff's product or service is not readily identifiable without use of the plaintiff's trademark, 2) the defendant only uses so much of the plaintiff's mark as is necessary to identify the plaintiff, and 3) the defendant's use of the plaintiff's mark does not suggest sponsorship or endorsement by the plaintiff. Although the court found that the first two factors favored the defendants, it concluded that their use of "Earth, Wind & Fire" implied sponsorship or endorsement, and the failure of the third factor made the defense unavailable.
As to the first factor, the court agreed that it made more sense to refer to the original band as "Earth, Wind & Fire" than as "that 1970's R&B group"; indeed, the court even recognized that "a logo that reads 'Earth, Wind & Fire' is necessary for identif[ying]" what Defendant's band does.." On the second factor, the court looked favorably upon Defendant's efforts to stop using the same logos, fonts, and color schemes as the original band in response to the Plaintiff's original complaints in 2019.
Despite success on the first two elements, the band failed on the third because it did not sufficiently disclaim its independence from the original band. As the court explained, "Defendant's advertisings draw a close, unmistakable association with Earth, Wind & Fire to a degree unwarranted by the historical record." Although the parties agreed that Smith had performed with the original band in the 1980s, they disagreed as to his contribution and whether he ever constituted a formal band member. The website and associated advertising for the "Legacy Reunion of Earth Wind & Fire Alumni," however, discussed the original band's legacy without any limiting language describing who from the band was actually performing. Faced with examples of consumer confusion described in online reviews, the court concluded that "[r]egardless of if Defendants' musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main 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."
The court also rejected the argument that the Plaintiff's claims should be barred by acquiescence, estoppel, or laches. The court's discussion of these defenses centered on a single email sent on October 18, 2018, from Plaintiff's counsel to Defendants' counsel, regarding proposed changes to the branding of Defendant's band. The email read: "I explained that while I was not in position to agree that the matter was resolved, the attached proposed logo was preferred over the current logo that is being used to promote upcoming concerts." Defendants' counsel never responded to the email, and a month later, Defendants' band stopped performing. The Defendants argued in their summary judgement motion that the "preferred over" language was a signal that Plaintiff would not assert a claim regarding the new logo. The court felt strongly that "saying that something is 'headed in the right direction' is not an assurance to not assert trademark rights." Similarly, the defense of estoppel was unavailable because the email demonstrated that Defendants knew Plaintiff objected to the use of their mark. Finally, laches was unavailable because, despite Plaintiff's delay, they still filed before the four-year statute of limitations period expired.
Having passed on Defendant's defenses, the court turned to Plaintiff's motion for summary judgement on all its claims. To determine whether the Defendant was liable for infringement as a matter of law, the court walked through the familiar factors used by the Eleventh Circuit to evaluate likelihood of confusion and determined that all but twofavored the Plaintiff.
Specifically, the court found that "Earth, Wind & Fire" is a very strong mark that is not weakened by third-party uses in other tribute shows because those shows used the trademark to identify the source of the songs they were covering, not to imply that they are original band members. Indeed, the court found that such uses suggested strength, rather than weakness. The court also found that the services offered (live performances of "Earth Wind & Fire" music) were identical and offered through the same ticketing websites to the same customers (with some having attended concerts by both bands), and the marks were highly similar because they both used "earth", "wind", and "fire" (despite differences in stylization). The court also gave "substantial weight" to emails and online posts from consumers who attended concerts by "Legacy Reunion of Earth Wind & Fire Alumni," which the court viewed as evidence of actual confusion.
Finally, the court found that there was no evidence of bad faith by the Defendants. However, despite Defendants' good faith, the court was satisfied that the factors strongly supported a finding of likelihood of confusion and granted Plaintiff's motion for summary judgement on all Lanham Act Claims. As a result, the court enjoined the Defendants from infringing the "Earth, Wind & Fire" mark, and a bench trial has been scheduled for May 28, 2024, to determine damages.
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