On April 15, 2010 I wrote on the topic of choosing band names.
Yesterday, a client of mine, who saw an early 1960’s Motown musical act, The Marvelettes, perform in Vegas on July 9th asked were there any original singers from that group in the performance and did there need to be any original singers in the group for that group to call themselves by that name.
This led me to consider another early 1960’s musical act that is performing this summer, namely the Beach Boys. Formed in 1961, the group originally was made up of the brothers, Brian, Carl and Dennis Wilson, their cousin Mike Love and friend Al Jardine. Carl Wilson was to subsequently die of lung cancer, Dennis Wilson drowned, and of the original band only Brian, Mike Love and Al Jardine are still performing as the Beach Boys. Are they the Beach Boys?
The federal Ninth Circuit Court of Appeals, whose jurisdiction covers the states of California and Nevada among others and is headquartered in San Francisco, ruled in a 2006 decision, Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., that “even a failing business retains rights in its trademark until it shuts its doors or ceases use of its marks. Abandonment of a trademark requires both a cessation of use and the absence of the presence of intent to resume use. According to the Ninth Circuit any “legitimate commercial transport or sales of trademarked goods, even for a failing business, are sufficient to defeat a claim of abandonment.”
In the case of the The Marvelettes, none of the performers on stage are the original members of the group. The reason this is possible is that Motown owns the rights to The Marvelettes name, although it did not formally register that name as a service mark with the United States Patent and Trademark Office and as its successor entity continues to use it for commercial purposes, that entity may claim rights to that name. [Note the founding members of the group, Katherine Shaffner and Gladys Horton, continue to receive royalties for sales of Marvelettes recordings.] Note also that they filed an application to federally register The Marvelettes service mark for audio and video recordings by a performing group and for entertainment services in the nature of live musical concerts and stage performances in 2008 and that that application is being opposed by one Larry Marshak, a 1970’s promoter who used that mark for groups staging live performances under his management under that name, none of the members of which were members of the original Marvelettes. A New York U.S. District Court ruled against Marshak’s claim of ownership of The Marvelettes name this past May 11th. Note also that this wasn’t Marshak’s first attempt to claim ownership rights in an early 60’s band name. In a 1999 U.S. District Court for the District of New Jersey decision in which Larry Marshak claimed the rights to “The Drifters” service mark, that court held that Larry Marshak had no legal rights in the mark.
So the answer to the question posed at the top of this article, is, a band doesn’t need to include its original members to be that band. Caveat Emptor!
