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Band names are big merchandising business, including t-shirts, hats, posters and other paraphernalia. When checking the United States Patent and Trademark Office (“USPTO”) website for other band trademarks, I was not surprised that the lead singer and savvy businessperson Jon Bon Jovi (a.k.a. John Bongiovi) owns the Bon Jovi® trademark himself. Eighties band REO Speedwagon set up a company to own the trademark for the band’s name.
The Black Sabbath trademark was at the heart of a legal dispute that just recently settled. Specifically, former front man Ozzy Osbourne had sued Black Sabbath member Anthony (“Tommy”) Iommi for falsely taking ownership of the Black Sabbath trademark when he filed an application with the USPTO. Ozzy contended that he was “synonymous with Black Sabbath.” In addition, he and his wife, Sharon, had managed the licensing of the Black Sabbath name since 1997—without assistance from Mr. Iommi. Ozzy did not seek sole ownership of the trademark. Rather, Ozzy sought to have a New York court declare that he, Iommi, and two other band mates Geezer Butler and Bill Ward were co-owners of the rocking trademark. In the lawsuit, he also sought to recover a split of the royalties and lucrative proceeds from the sale of merchandise while he was not rocking with the band.
Mr. Iommi defended the lawsuit by arguing that Ozzy had assigned away his rights to the name when he left the group in 1980 in exchange for a payment. Ozzy disagreed and alleged that the agreement was invalid because "it does not expressly transfer the goodwill symbolized by the Black Sabbath mark" and that agreements the parties signed from 1997 onward to share royalties from licensing the name "clearly evidence[d] . . . an intention to extinguish the 1980 agreement."
Rock bands, as well as other collaborative groups, must carefully address trademark ownership—especially where there is a departure from the band and/or one band member is doing most of the licensing and branding work. On the bright side, Ozzy and Mr. Iommi were able to “amicably resolve” their issues. Rolling Stone reports that the two may even work or co-operate together in the future. If there are any additional trademarks involved in this co-operation, Ozzy and Mr. Iommi need to be sure to clearly address these issues in a new written agreement.
(h/t to Mark Malek of Tactical IP for the heads up)
This posting excerpted from Winthrop & Weinstine's Duet's Blog: www.duetsblog.com
© 1994 – 2012 Winthrop & Weinstine, P. A.
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