The Captain Beefheart Trademark Question

            I am a practitioner of trademark law and I can attest  that it is often a sea of angst and confusion.  I'm also a fan of both the late Captain Beefheart and the late Frank Zappa … there's a little bit of angst and confusion there as well.

            Thus, I am fascinated by the fact that Zappa's widow Gail just secured a notice of allowance on her intent to use application for the trademark "Captain Beefheart" (Serial No. 85695177).  (I have written about Gail Zappa before: http://tripaldredgelaw.blogspot.com/2012/12/selling-zappa.html).

            Ms. Zappa is seeking registration in several U.S. classes that include everything from "audio and video recordings" to "electronic games software"  to “sunglasses”. (Captain Beefheart sunglasses  ?  Cool!).

            I don't claim to know the whole complicated history between Don Van Vliet  (p/k/a Captain Beefheart) and the Zappas.  I know that Don and Frank were high school friends, I know that Zappa released  Trout Mask Replica and I know that there was some legal wrangling over the original master  recordings to the album  Bat Chain Puller which was recorded in the 1970’s but which went unreleased until 2012.

            I can't tell how Zappa would have acquired the rights to the trademark in sound recordings  and other classes for the Captain.  California has a very good right of publicity statute which would seem to give Vliet’s  heirs a right to exploit his name, image and likeness after his death. What about all of the other Beefheart  recordings that were released on labels other than those controlled by Frank Zappa?

            There may be a simple explanation to all of this and the explanation may be that it is none of our business.  Or it may be one of those interesting areas where the laws of intellectual property and state  property and probate laws intersect.  Stay tuned.

One Direction v. One Direction

Why do I know about the band "One Direction"?  Because I have a teenage daughter.  It's the same reason I am acquainted with the work of Justin Bieber.  I was surprised to learn that that the members of One Direction were English, but not surprised that they were put together by Simon Cowell in the classic boy-band tradition.

                However, I was actually shocked to discover that Mr. Cowell's incredibly successful organization apparently overlooked the fact that there was already an American band with the same name, with a federal trademark registration.  There is nothing to prohibit the  band from using the "One Direction" mark  in England but they appear to be infringing on the US band's federal trademark.  The US group has of course filed suit.  This trans-Atlantic state of confusion has gone on for decades.  For example, the English Beat had to adopt the "English” qualifier in response to a claim by the LA group, “The Beat.”  Likewise the British band Squeeze was briefly known in this country as "UK Squeeze".  Conversely the British band "The Birds" allegedly took legal action against the American "Byrds" when they made their famous first trip to the UK back in the '60s.

                What amazes me is that anyone could be unaware of a trademark registration in this day and age when  the US Patent and Trademark Office has an up-to-date online database of pending and registered marks and any band can be readily Googled.  It used to be much more complex.  In order to search up the availability of a record company name or band name, you had to undertake a costly and not always accurate media search.  You also had to contend (as you do now) with the fact that a party can generate common law rights in a mark even without a registration.  However to overlook a pending registration or an actual registration is just strange.

                As for One  Direction US v. One Direction UK – I predict a settlement before too long.