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.
