Wednesday, August 19, 2015

Bad Vibrations

I had the good fortune to see Brian Wilson perform live this summer with both Al Jardine and Blondie Chaplin.  The show reinforced the brilliance in all eras of the Beach Boys' career.  However, you can't ignore the fact that there are essentially two factions of this band touring at the moment, the Brian Wilson Gang and the Mike Love-Bruce Johnston Gang.  Between this odd occurrence and seeing the intense Brian Wilson biopic, Love and Mercy, I began to think that one could write an entire scholarly book on the various legal and business disputes that the Beach Boys have been involved in over the past half century. 

            I don't think I will ever have the time to go down that rabbit hole but I did come across an interesting case while doing some research for a client involving the aforementioned Al Jardine. 

            A decade ago the internet was abuzz with the news that Mike Love had supposedly sued Al Jardine to keep him from using the name "The Beach Boys" to promote a solo tour.  The case, Brother Records, Inc. v. Al Jardine, turns out to be a bit more complicated than that.  Each founding member of The Beach Boys (or, in the case of Dennis and Carl, their estates) is a shareholder in Brother Records, Inc.  Recognizing that The Beach Boys' trademark was a valuable asset but also that some of the surviving members did not want to tour (or tour together), the corporation decided in 1998 that each member could have a non-exclusive license to tour using the "Beach Boys" name if certain terms and conditions were met – Mike Love took a band on the road under those terms. 

            Apparently, Al Jardine decided that if he used a variation of the name, "Beach Boys Family and Friends" he could tour either without a license or upon a different royalty arrangement with the corporation. 

            Jardine's group played several cities where Love's group also performed and there was actual confusion in the marketplace. After some negotiation, Brother Records, Inc. sued Jardine for trademark infringement to stop using the “Beach Boys” trademark.   It is important to note that during this time Jardine was (and presumably still is) a shareholder in Brother Records, Inc. 

            Jardine's defense as one would expect it to be, was fair use (both traditional fair use and the variation – nomative fair use).  As any law student can tell you "fair use" was not a truly viable defense in this case because the trademark was not being used in its descriptive sense; what the court so eloquently described as "boys who frequent a stretch of sand beside the sea" but rather "in its secondary trademark sense which denotes the music band – and its members that popularized California surfing culture."

            Thus, Jardine tried to use the more complex "nominative fair use" defense. As the court states," the nominative fair use defense acknowledges that it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the (underlying) mark".  As the case law suggests, Jardine would not necessarily have a problem referring to the historical fact of his membership in The Beach Boys but the court found that his use of the mark in this particular manner "capitalizes on consumer confusion" and suggests some kind of "sponsorship or endorsement" by the trademark holder. 

            I think the Court was right.

            As easy as it can be to often cast Mike Love in the role of the bad guy in Beach Boys' mythology, it seems that in this case the corporation (whether controlled by Love or not) took a very important step in protecting its trademark rights to avoid dilution of the mark.  As such, this case adds to the growing body of law that practitioners often have to turn to in order to deal with band members and their trademark issues.  Despite all this, one must also remember that Al Jardine performed with Mike Love, Brian Wilson, Bruce Johnston etc.on The Beach Boys' 50th Anniversary Tour a couple of years ago.   The California saga continues.