Earth, Wind & Fire has won its trademark lawsuit against a tribute act that used the legendary R&B group’s name without permission, with a federal judge ruling that the evidence pointed “overwhelmingly” in the band’s favor.
In a decision released on Monday, a Miami federal judge ruled that the tribute group infringed Earth, Wind & Fire’s intellectual property rights by calling themselves “Earth, Wind & Fire Legacy Reunion.” He called the band’s marketing “deceptive and misleading.”
In particular, the judge cited angry social media posts and emails from fans who attended the “Reunion” shows because they thought it was the original band – proof of the kind of “actual confusion” that’s crucial evidence in a trademark lawsuit.
“It is not a far cry to think that an average consumer looking for an Earth, Wind & Fire concert would believe that they could acquire that experience from either plaintiff or defendants,” Judge Federico A. Moreno wrote.
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from an entity called Earth Wind & Fire IP, a holding company controlled by Maurice White’s sons that formally owns the rights to the name.
Last year, that company filed the current lawsuit, accusing Legacy Reunion of trying to trick consumers into thinking it was the real Earth, Wind & Fire. Though it called itself a “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who had briefly played with Earth, Wind & Fire many years ago.
“Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices,” the group’s lawyers wrote at the time.
Tribute acts — groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they must make clear that they are only a tribute band, and they can get into legal hot water if they make it appear that they are affiliated with or endorsed by the original.
In Monday’s decision, Judge Moreno ruled that Legacy Reunion had done exactly that – particularly with its references to a “Reunion” and claims that the performers were former members of Earth, Wind & Fire. The judge said the later addition of “Alumni” and other reformulations of the name were not enough.
“While the court understands there is dispute on how prominent of a role the musicians performing in [Legacy Reunion] played in the Earth, Wind & Fire group, defendants advertisements draw a close, unmistakable association with Earth, Wind & Fire to a degree unwarranted by the historical record,” the judge wrote.
“Regardless of if defendants’ musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main (or most prominently known) members of the band would be performing,” Judge Moreno wrote.
The judge cited numerous complaints from Earth, Wind & Fire fans who had allegedly been confused by Legacy Reunion’s name. In one email, a fan said the name was “misleading” because they had attended the show “in the hopes of seeing Philip Bailey, Verdine White and others from the original band.” Another email complained that the tribute band was a ‘bait and switch.’ In a Facebook post, another fan said: “If the three remaining original members are not in this tour, this is basically a rip-off!”
In technical terms, Monday’s ruling decided that Legacy Reunion had violated Earth, Wind & Fire’s trademarks, but did not decide how much they must now pay in damages. That issue will be left for a future trial, which is currently scheduled for May. In the meantime, Judge Moreno said that Legacy Reunion would be barred from doing anything that would infringe Earth, Wind & Fire’s trademarks.
Neither side’s attorneys immediately returned request for comment on Monday.