Band Exposé wins ownership of trademark from do-nothing promoters

The band Exposé, founded in the 1980s, was conceived of by promoters. The performers--Jeanette Jurado, Anne Curless, Kelly Moneymaker and Gioia Bruno--despite having frequently signed contracts that explicitly agreed they did not own the trademark, nevertheless managed to win rights to it in a recent lawsuit. How?

First, the production company and its successors were never able to register the trademark. You don't have to do this, but it helps in court. Secondly, however, the court chose to apply a test rather than simply rubber-stamp the contracts: who established what qualities and characteristics the trademark represents, and who actually controls them here? From this test, it found that the actual band, rather than a promoter with no creative involvement for 25 years, was represented by the trademark: "the [band members] were the product denoted by the Exposé mark and owned the goodwill associated with the mark."

IP lawyer Pamela Chestak, writer of the excellent Property, Intangible blog, is uneasy about the outcome:

Wow. So apparently in the 11th Circuit a private agreement doesn't matter; rather, the actual ownership has to be manifested publicly. I'm not saying the outcome is wrong - band names are a different world when it comes to trademark ownership, because the members are often so strongly identified with the public image of the band. But I would have liked a little more compelling reason for why the court felt that the contracts, as well as the defendants' belief that they needed a license, could just be ignored.

I vaguely know about the "use it or lose it" element to trademark ownership that seems to be the underlying principle at play here. Perhaps someone can explain it in more depth why this case is unusual. The idea that adhesive contracts backed by the threat of litigation aren't enough--that owning a trademark may be subjected to legal tests of continued use, public manifestation, etc--seems a good one!

Crystal Entertainement & Filmworks, Inc. v. Jurado [11th Circuit Court of Appeals]

How to Steal a Trademark [Property, Intangible]

• [Anonymous]

  I makes sense if the trademark ownership came as part of the reward for the promoter in the contract. If that is the case, they didn’t lose because they didn’t USE it. They lost it because they didn’t EARN it. Non-performance on a contract requires putting the parties as close to their original condition as possible, and that would have required giving the bad back their identity and ability to go do business with someone who would actually perform on the contract.

• [lasttide]

  From what I understand, trademarks essentially expire after 3 years of no use. This is kind of an awkward application. The band has continued the entire time, so the trademark has been in continuous use. But if the management company hasn’t been involved for 25 years, are they not using the trademark anymore? I suppose?

  Whatever. I smile every time a band wins one over the exploitative industry.

• [Property, Intangible]

  Thanks for the shout out! And I’m happy to take a stab at your questions.

  First on the non-use, it does indeed look like there was a significant period of non-use in performance, i.e., between 1995 and 2003. Nevertheless, abandonment (the legal theory that kills a trademark if it’s not used) wasn’t mentioned in the case at all, but I don’t know why. The women went to ask for a license, so perhaps they were estopped from later claiming that there weren’t trademark rights to ask for.

  The abandonment doctrine is also a slippery thing. You don’t have to use your trademark yourself, instead your use can be through a licensee. So in this case the management company could have argued (any maybe did) that its use was through its licensees, the band members. At any rate, at the end of the day abandonment just didn’t appear to be argued by either side.

  I also think you’re stretching the contract of adhesion theory too far. There’s no suggestion here that the women couldn’t or didn’t negotiate the terms of the contract.

  I don’t necessarily disagree with the outcome. In similar situations (manufacturer-distributor is one), contracts have weight but aren’t necessarily the final word (except perhaps in the 7th Circuit). But as a lawyer who frequently uses the vehicle of contract as additional protection of intellectual property rights, I’m a bit anxious that the contracts here were so cursorily dismissed.

• [Ian]

  I can’t comment on the legal side of this (not because I’m not a lawyer, but because I simply don’t know anything about the legal history of trademarks) but this feels like it draws a strong parallel with adverse possession. You use something, you increase the value of it, the owner tacitly lets you, and ultimately you can claim ownership of it. (Adverse possession applies to real property – land, etc. – rather than IP.)

  That may not make a legal case but it makes a moral one, at least if you consider adverse possession to be a moral way of taking the ownership of something.

• [Jewels Vern]

  People, and judges, often assume that the courts own everything and give it to whomever they choose.

  • [EvilSpirit]

    People, and judges, often assume that the courts own everything and give it to whomever they choose.

    For something that people “often assume,” it’s surprising that I have never in my life encountered this rather extraordinary idea.

    Or to put it bluntly, it sounds like you’re just making that up.

• [hamletsr]

  “The idea that adhesive contracts backed by the threat of litigation aren’t enough . . .” – this might be the cause of concern for an IP lawyer. FSM forbid that a 25 year old contract shouldn’t trump 25 years of failure by the promoter or 25 years of hard work by the band.

• [misadventures213]

  Expose is still around?

• [wnoise]

  Seems refreshingly right to me. Trademarks were created (and the speech restriction that they embody are justified) solely to prevent consumer confusion between similar products. People should be able to get what they think they are paying for. Here, there is no risk if the band keeps using the trademark, because people think they are getting the band’s music. In contrast, there is risk of confusion if the promoters keep using the trademark, because consumers would expect the band’s music, but end up with that of someone else.

  (You can argue that contracts could prevent the band from using the trademark, but that doesn’t necessarily mean the promoters should be able to use it.)

• [bbonyx]

  Hey, seasons change… people change.