Black Flag and the Punk Rock Trademark Showdown
Black Flag is one of the most well-known bands in the history of punk rock. Formed in 1976 in Hermosa Beach, California, they toured and recorded relentlessly through 1986. Recently, two versions of the band (one called Black Flag, one called Flag) have been touring and have engaged in a legal battle over the rights to the band’s name and their famous logo (featured at left). A look at this dispute reveals an extensive list of trademark and music law questions.
Black Flag has had, by my count, 19 members over the years (based on this list). The current dispute centers around three: Greg Ginn, who was the band’s co-founder, guitar player, and the only continuous member through its (initial) demise in 1986; Keith Morris, who was the band’s first singer (and went on to form the Circle Jerks); and Henry Rollins, who was the band’s third singer through 1986. Rollins, clearly the band’s most well-known member, went on to a successful career as a musician, actor, poet, author, spoken-word performer, DJ, weightlifting enthusiast and who knows what else.
In July 2012, Morris, along with other former band members, announced their intention to tour as Flag, “Featuring Original Members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton, Performing the Music of Black Flag.”
In September 2012, Morris and Rollins (under his birth name Henry Garfield) applied to register the marks BLACK FLAG and the logo with the United States Patent and Trademark Office (USPTO). The logo mark was registered on April 30, 2013. The application to register the name BLACK FLAG was held up due to a conflict with a Japanese company who owns a registration for BLACK FLAG for clothing, toys, sunglasses, furniture, and accessories.
Meanwhile, in February 2013, Ginn (remember, he was the guitar player) announced his intention to tour as Black Flag along with several other musicians – including, as if this wasn’t all confusing enough, the band’s second singer (between Morris and Rollins), Ron Reyes.
Finally, in the punk-rockest move of them all, on August 2, 2013, Ginn and his company SST Records filed suit in the U.S. District Court for the Central District of California (a Federal court) against Rollins and Morris, along with the other members of “Flag,” for trademark infringement, unfair competition, and breach of contract. They also asked for a preliminary injunction against Rollins, Morris, et al. from using the Black Flag name or logo pending resolution of the lawsuit. Other than in connection with the trademark registration and application (and on his bicep), I’m not sure how Rollins is using the marks at the moment, particularly given his announced retirement from music.
On October 8, 2013, the court denied Ginn’s request for a preliminary injunction (the court’s order can be found here).
A look at the initial complaint and the court’s recent order denying the injunction are revealing. In the complaint, Ginn claims that “Ginn has continuously performed under the service marks BLACK FLAG and the BLACK FLAG logo” since 1978. This begs an interesting definition of “continuously,” as there is no evidence that any version of the band performed under the name Black Flag between 1986 and 2003, when three reunion shows took place. Following those shows, Ginn did not publicly appear as a member of Black Flag until 2013.
The complaint further alleges that SST is the exclusive owner of the rights to the marks (the name and logo) on merchandise and phonorecords. While it’s clear that SST has continuously used the marks in those contexts since 1978, the court, in its October 8 order, suggested that the marks may have become generic, and that SST may have therefore lost its exclusive rights in the mark due to its failure to police their use:
Defendants have submitted evidence suggesting that even if Plaintiffs own the marks, they have allowed them to fall into generic use. Several manufacturers, for example, appear to have been distributing unlicensed merchandise featuring the Logo since at least 2009, without any action from Plaintiffs. Indeed, a Japanese company’s registration of the Black Flag mark in 2008 elicited no response from Plaintiffs. Nor, in the years following the band’s dispersal in 1986, did Plaintiffs take any action to maintain the distinctiveness of the marks. It is,therefore, doubtful whether Plaintiffs can establish that the marks are protectable.
The court went on to state that “[e]ven if it is ultimately determined that SST owns the marks, Defendants have presented at least a colorable argument, and certainly some evidence of a good faith belief, that they, through some iteration of a partnership, own or owned the marks.” This appears to be, in part, because “[f]or at least some period of time, the band considered itself to be a statutory partnership, making decisions by majority, distributing earnings evenly, and submitting tax filings as the “Black Flag Partnership.” That may cut against Ginn’s assertion that SST has been the sole rightful owner of the marks since day one.
None of this means that Ginn has lost the case. His request for a preliminary injunction was denied, but the standard required to obtain such an injunction is hard to meet:
Typically, a private party seeking a preliminary injunction must show (1) that he is likely to succeed on the merits, (2) that he is likely to suffer irreparable harm in the absence of preliminary relief, (3) that the balance of equities tips in his favor, and (4) that an injunction is in the public interest. Winter v. Natural Res. Defense Counsel, 555 U.S. 7, 20 (2008).
With regard to the first element, likelihood of success, the core issue in the trademark infringement claims is “likelihood of confusion” – would a consumer encountering the goods or services be likely to be confused as to the source of those goods or services. For example, if a music fan came across a t-shirt featuring the Black Flag logo, would she assume that Ginn and SST were the source of that t-shirt? If a “Flag” show was advertised, “Featuring former members of Black Flag…,” would one assume that Ginn and/or SST were involved in or had sponsored the show? Given the possibly generic nature of the marks (which, of course, may ultimately defeat Rollins’ and Morris’ claims to the same marks), and the detailed and accurate way that Flag describes their band, it’s not surprising that Ginn lost on his motion for a preliminary injunction.
One more interesting point found at the end of the October 8 order:
Lastly, though evidence of actual confusion is not necessary to a finding of likelihood of confusion, evidence of “actual confusion among significant numbers of consumers provides strong support for the likelihood of confusion.” Playboy Enters., Inc. v. Netscape Comms. Corp., 354 F.3d 1020, 1026 (9th Cir. 2004)…Defendants point to extensive media coverage of this dispute, highlighting the differences between the two bands and, thus, decreasing the likelihood of consumer confusion. (Underlines are mine.)
This suggests an argument that could be applied to many claims of trademark infringement: can “extensive media coverage” of the dispute, as pointed to by the defendants, be used to “cure” an otherwise-reasonable claim of trademark infringement? Could a plaintiff’s publicizing of a trademark infringement claim lead to that claim being weakened? I’ll be interested to see if other trademark attorneys pick up on this.
Before we jump back into the mosh pit, a few points to take away from this matter. First, as noted above, the case has not been resolved in favor of Rollins, Morris, et al. They simply prevailed in one important pre-trial proceeding. We’ll see if it ever actually gets to trial and a final resolution of Ginn’s claims (given the cost and time involved, I doubt that will happen.)
Second, and this goes for anyone in a band or other group creative enterprise – GET IT IN WRITING. Who owns the name? Who owns the logo? What happens if members of the band get back together? A written agreement can help to prevent these issues from rising to the level of litigation in the first place.
