Court gives voice to musical group under ‘joint endeavours’ test

United States of America
In Crystal Entertainment & Filmworks Inc v Jurado (DC Docket 0:08-cv-60125-MGC, June 21 2011), the US Court of Appeals for the Eleventh Circuit has affirmed the district court’s determination that performing members of the band Exposé owned the common law trademark rights to the group’s name. 

In an opinion authored by Judge Pryor, the panel (consisting of Judges Pryor, Cox and Pannell) agreed that the 'joint endeavours' test demonstrated that the members controlled the nature and quality of the services performed under the mark and, in the absence of credible evidence that the management company had priority in the mark, the members of the band rightfully claimed ownership of the mark.
In 1984 the band Exposé was created by a predecessor in interest to plaintiff Crystal Entertainment & Filmworks Inc. The band had limited success. In 1986 the original three female singers of Exposé were replaced by defendants Jeanette Jurado, Ann Curless and Gioia Bruno, who went on to release a number of tremendously successful albums and sell millions of records. Although the group disbanded in 1995, sales of the music continued and several compilation albums were released. In 2006 Jurado, Curless and Bruno decided to have a new tour and executed an agreement with Crystal, acknowledging that it owned and controlled the EXPOSÉ mark. The agreement also gave Jurado, Curless and Bruno the discretion to decide whether and when to permit a replacement singer to perform. Jurado, Curless and Bruno then proceeded to engage a booking agent and commenced promotion of the upcoming tour.
In 2007 Jurado, Curless and Bruno filed US Application Serial No 77/252,342 for the mark EXPOSÉ for live musical performances through their company, Walking Distance Entertainment LLC. One week later they sent Crystal a letter informing it that they believed that they were the true owners of the EXPOSÉ mark and requested Crystal to produce evidence why it should be considered the owner. Crystal filed a complaint against Jurado, Curless, Bruno, the booking agent, a replacement singer and Walking Distance for breach of contract, cyberpiracy, unfair competition and false designation of origin and sought injunctive relief, damages and a constructive trust for past license fees.
To establish a prima facie case under Section 43(a) of the Lanham Act, Crystal bore the burden of establishing that:
  • Crystal had enforceable rights in the EXPOSÉ mark; and
  • the defendants made unauthorised use of the mark such that consumers were likely to confuse the two. 
The key issue came down to the ownership of the EXPOSÉ mark. Although the court recognised that a corporate entity can, in some cases, own the right to the name of a musical group, it held that Crystal had failed to put on credible evidence that it had used the EXPOSÉ mark in a way sufficiently public to identify or distinguish the services in an appropriate segment of the public.

Consequently, the court determined that ownership of the mark was unclear, and that it was a “case of joint endeavours”. Such cases are resolved by awarding trademark rights to the claimant who controls the nature and quality of the services performed under the mark. The court then applied a two-step test to determine the ownership of the mark:
  • What is the quality or characteristic for which the group is known by the public?
  • Who controls this quality or characteristic?
In holding that the actual performers owned the trademark, the court determined that:
  • the mark signified the personalities of the performers; and
  • Crystal had failed to prove that it had exercised control over the performers or had taken any other active role in scheduling the group’s performances. 
The court further found that whatever agreements the performers had signed with Crystal said about the disposition of the trademark rights was less important, as the private agreements disclosed nothing to the public to change the perception that Crystal did anything other than simply collect royalties. Affirming the judgment of the district court, the circuit court held that the performers had not infringed any rights owned by Crystal and that they actually owned the EXPOSÉ mark.

Jeffrey H Larson and Jeffrey L Van Hoosear, Knobbe Martens Olson & Bear LLP, Irvine

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