On March 1, 2024, the U.S. District Court for the Southern District of Florida issued an opinion in Earth, Wind & Fire IP, LLC v. Substantial Music Group LLC, 23-20884-CIV-MORENO granting Plaintiff Earth, Wind & Fire IP’s motion for summary judgment. The ruling found the tribute group’s name “Earth, Wind & Fire Legacy Reunion” to be deceptive and misleading.
Earth, Wind & Fire’s hit song “Shining Star” reached number 1 on Billboard’s Hot 100 in 1975. The band had six other hits in the top 10. Earth, Wind & Fire has continued to tour under a license with Plaintiff Earth, Wind & Fire IP, a holding company controlled by band founder Maurice White’s sons. Plaintiff owns the trademark rights to the trademark EARTH WIND & FIRE.
The dispute began when promoters Substantial Music Group LLC and Stellar Communications, Inc. formed a tribute band using the names “Earth Wind & Fire Legacy Reunion” and “The Legacy Reunion of Earth, Wind & Fire.” The promoters used the original band’s “Phoenix” logo mark as part of their promotions. The tribute band included one-time Earth, Wind & Fire guitarist, Richard Smith.
In 2019, Plaintiff demanded that the promoters stop use of the band name and logo. In response the tribute band’s name was changed to “Legacy Reunion of Earth Wind & Fire Alumni.” Over Plaintiff’s protest, Defendants continued to use the name, which led to the lawsuit.
Both sides moved for summary judgment. Plaintiff argued the promoters were liable for trademark infringement, false designation of origin, and false advertising under the Lanham Act. The promoters argued use of the EARTH WIND & FIRE mark was fair use under the nominative fair use doctrine and Plaintiff’s claims were barred by equitable defenses.
The Court granted Plaintiff’s motion, holding that the trademark was strong, that the tribute band’s name was “quite similar” to the trademark, that the services were similar. The Court rejected the promoters’ fair use defense. In assessing three prongs of nominative fair use, the Court found the original band’s name was not “readily identifiable” without use of the trademark, a factor in the promoters’ favor. The Court also found in the promoters’ favor that the trademark was reasonably necessary to use to identify the original band’s services. The promoters failed, however, to establish that their use would not suggest sponsorship by the trademark owner. The Court also rejected promoters’ other equitable defenses.
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