Take note: Jelly Roll, Pink among music industry’s latest trademark cases 

[BROCK KOLLER]

THERE’S THIS JELLY ROLL.

THEN THERE’S THIS JELLYROLL.

AND THERE’S THIS JELLY ROLL.

FOR TODAY – WE’RE GONNA FOCUS ON THE FIRST TWO.

JELLY ROLL – TWO WORDS — THE GRAMMY-NOMINATED COUNTRY MUSIC SUPERSTAR WHOSE REAL NAME IS JASON DEFORD – IS BEING SUED BY JELLYROLL – ONE WORD — A PENNSYLVANIA-BASED WEDDING BAND FOR ALLEGED TRADEMARK INFRINGEMENT.

FIRST OF ALL – BEFORE WE GO ANY DEEPER – LET’S CLARIFY SOMETHING IN CASE YOU ARE NOT AN INTELLECTUAL PROPERTY EXPERT – LIKE SAY A LAW PROFESSOR – THIS IS A TRADEMARK CASE – NOT A COPYRIGHT ONE.

BUT LET’S SAY YOU ARE A LAW PROFESSOR – LIKE PROFESSOR DONALD HARRIS OF TEMPLE UNIVERSITY – MAYBE YOU CAN EXPLAIN THE DIFFERENCE BETWEEN THE TWO AS ONLY AN EXPERT CAN.

[DONALD HARRIS]

“Trademark is a source identifier. That’s what it protects. If you have a mark it identifies the source from which the products or services, the goods or services come from. If it doesn’t have this source identification feature, then we don’t protect it. Copyrights, we’re protecting literary and artistic works, and we’re protecting the author’s right to exploit those works. So two different things. One is talking about creativity. One is talking about brand or source identification.”

[BROCK KOLLER]

QUICK PLUG: IF YOU ARE INTERESTED IN COPYRIGHT – OUR OWN SIMONE DEL ROSARIO HAS AN IN-DEPTH REPORT AT SAN DOT COM ON WHAT’S BEEN GOING ON WITH COPYRIGHT LAW – BUT NOW BACK TO TRADEMARKS.

IN JELLY ROLL V JELLYROLL – THE BAND – WHICH HAS PERFORMED FOR WEDDINGS AND BIG EVENTS ALONG THE EAST COAST INCLUDING FOR PRESIDENT GEORGE W. BUSH AT THE WHITE HOUSE — SAYS IT HAS BEEN USING THE NAME JELLYROLL SINCE 1980 –OBTAINED A TRADEMARK IN 2010 – AND RENEWED IT IN 2019.

[DONALD HARRIS]

“In this case, Jelly Roll the Band, has got a mark, for that name for their services for their entertainment services, singing, live music in a band and their claim is that serves as a source identifier, and that someone else coming in and using it now is going to confuse consumers. And so the test for infringement is likelihood of confusion. Are consumers likely to be confused when someone else is using the market and be confused as to the source that’s actually coming from the actual mark owner?”

[BROCK KOLLER]

THE SUIT POINTS TO THE SINGER BEING BORN IN 1984 – FOUR YEARS AFTER THE BAND STARTED USING THE NAME — AND SAYS THE SINGER DIDN’T START USING THE NAME JELLYROLL A NICKNAME GIVEN TO HIM AS A CHILD BY HIS MOTHER PROFESSIONALLY UNTIL 2010 – THE SAME YEAR THE BAND GOT ITS TRADEMARK.

THE BAND CLAIMS THE SINGER’S INFRINGEMENT OF THE MARK IS CREATING CONFUSION IN THE MARKETPLACE. BUT REMEMBER — IT’S ABOUT LIKELIHOOD OF CONFUSION – NOT ACTUAL CONFUSION. CONFUSED? UMM…PROFESSOR HARRIS?

[DONALD HARRIS]

“The one thing that I will note though, is that what we’re what you need to show is not actual confusion, just the likelihood that consumers are going to be confused. Most courts use a multi-factor test to determine whether there’s likelihood of confusion. You look at things such as the similarity of the names, the similarity of the goods, the sophistication of the consumers, whether they are in the same market, when there’s any bad faith, a number of different factors to determine this likelihood of confusion.”

[BROCK KOLLER]

ONE PLACE THE BAND SAYS THE SINGER IS INFRINGING ON ITS BUSINESS – GOOGLE SEARCHES. THE BAND SAYING SEARCH RESULTS HAVE CHANGED – WHERE YEARS AGO THE BAND WOULD TOP THE LIST –NOW YOU HAVE TO SCROLL THROUGH ROUGHLY 20 LINKS TO GET TO ONE ABOUT THE BAND – WITH THE SINGER TAKING TOP BILLING. HARRIS SAYS THIS EVIDENCE FALLS ON THE SUIT’S CLAIM OF DILUTION.

[DONALD HARRIS]

“The concept with dilution is that someone else is now using the mark and it’s not likely to confuse consumers, but now we’re no longer going to be able to bring to mind just one Jelly Roll. So we’re diluting the significance of the original mark. And I think that that’s where they’re going with that. I think that’s also going to be a really tough cause of action to prove because in order to have a dilution cause of action, you’d have to prove that your mark is famous and that it’s not fame just in a geographic niche, you have to be famous across the country. And I’m not sure that JellyRoll the band can prove that kind of fame.”

[BROCK KOLLER]

THIS IS JUST ONE OF THE LATEST TRADEMARK CASES TO HIT THE MUSIC INDUSTRY IN RECENT YEARS – IN 2020 A SINGER BY THE NAME ANITA “LADY A” WHITE GOT INTO A DISPUTE WITH THE BAND LADY A WHO HAD JUST CHANGED ITS NAME THAT YEAR.

BOTH PARTIES SUING ONE ANOTHER AND THEN EVENTUALLY REACHING A SETTLEMENT.

BUT ONE PARTICULAR PART OF THE BAND’S SUIT IS WORTH NOTING HERE – AS THE BAND CLAIMED THE SINGER NEVER CHALLENGED THE TRADEMARK BEFORE 2020 EVEN THOUGH THE BAND HAD BEEN USING LADY A AS A NICKNAME.

IT’S THIS ARGUMENT OF TIMING THAT COULD BE ON THE SIDE OF JELLY ROLL THE SINGER TOO.

[DONALD HARRIS]

“It’s this idea of laches. It’s an idea that you could have enforced your rights a lot earlier and instead you waited so there’s an unreasonable delay before enforcing your rights. And that unreasonable delay resulted in an unfair prejudice to, in this case, the singer.”

[BROCK KOLLER]

AND JUST WEEKS AFTER THE JELLY ROLL DISPUTE MADE HEADLINES –– THE SINGER PINK FILED LEGAL ACTION AGAINST PHARRELL WILLIAMS – CLAIMING HIS PLANS TO REGISTER A TRADEMARK FOR THE TERM “P. INC.” “WOULD CAUSE CONFUSION AND DAMAGE HER BUSINESS” –

SHE REGISTERED HER TRADEMARK IN 2001.

IN THE SUIT – PINK’S ATTORNEYS SAY SHE AND PHARRELL PROVIDE “GOODS AND SERVICES THAT ARE IDENTICAL AND/OR CLOSELY RELATED” — AND THAT PHARRELL IS LIKELY TO “MARKET AND PROMOTE HIS GOODS THROUGH THE SAME CHANNELS OF TRADE AND TO THE SAME CONSUMERS AS [PINK].”

PHARRELL’S TEAM HAD SAID “P. INC.” WOULD BE USED FOR HIS BUSINESS OF “PROMOTING MARKETING SERVICES IN THE FIELD OF MUSIC.”

BUT IT’S NOT ALWAYS SINGER VS. SINGER OR BAND VS. BAND WHEN IT COMES TO TRADEMARK FIGHTS IN THE MUSIC REALM – IN FACT – PHARRELL ALREADY FACED LEGAL ACTION ABOUT HIS “P. INC” TRADEMARK A MONTH BEFORE PINK CAME INTO THE PICTURE  – AND IT WASN’T FROM ANOTHER SINGER – NO IT WAS FROM VICTORIA’S SECRET. YES – THAT VICTORIA’S SECRET – WHO ALSO CLAIMED CONSUMERS COULD BE CONFUSED – SINCE THE RETAILER HAS BEEN USING THE TERM “PINK” IN ITS CLOTHING LINE FOR DECADES. IN ITS SUIT – VICTORIA’S SECRET SAYS PHARRELL’S TRADEMARK IS “HIGHLY SIMILAR TO, AND IS THE PHONETIC EQUIVALENT OF” I TS “PINK MARKS.”

SO A CLOTHING COMPANY FILING A LAWSUIT AGAINST A SINGER IS NOT OUT OF THE SCOPE OF POSSIBILITY WHEN IT COMES TO TRADEMARK QUARRELS INVOLVING THE MUSIC BIZ – AND NEITHER IS A CEREAL BRAND SUING A BAND – YES THAT HAPPENED TOO.

YOU SEE IN 2022 – THE MARKETERS AT POST CREATED A LINE OF CEREAL PRODUCTS — PORTABLE CUPS OF SOME OF ITS MOST SOUGHT-AFTER SELECTIONS LIKE HONEY BUNCHES OF OATS AND FRUITY PEBBLES – NAMED THEM “OK GO” AND THOUGHT THE COMPANY HAD A HIT ON ITS HANDS.

WHAT THEY DIDN’T REALIZE WAS MEMBERS OF THE BAND OK GO WHO HAD SEVERAL HITS ON THEIR HANDS – – WERE NOT PLEASED. THEIR ATTORNEY SENT POST A CEASE-IN-DESIST LETTER – SAYING THE CEREAL’S NEW LINE WOULD QUOTE “SUGGEST TO CONSUMERS THAT OK GO IS ENDORSING POST’S PRODUCTS.” A LIKELIHOOD OF CONFUSION.

AN ATTORNEY FOR POST – DISAGREED. SAYING – ROCK MUSIC AND BREAKFAST CEREAL WERE “CLEARLY UNRELATED” AND “OK GO” WAS A COMMON TERM USED BY MANY OTHER COMPANIES.

THE DISPUTE LED TO POST FILING SUIT AGAINST THE BAND – AFTER THE CEREAL MAKER SAID IT HAD OFFERED TO PAY OK GO TO RESOLVE THE ISSUE WITHOUT LITIGATION – DESPITE THE CEREAL COMPANY NOT FINDING ANY MERIT IN THE BAND’S ARGUMENT. POST SAID OK GO THE BAND REJECTED ITS OFFER – MADE NO COUNTER-OFFER AND THAT LED THE COMPANY TO HAVE NO OTHER CHOICE BUT TO FILE THE LAWSUIT.

OK GO VOWED TO FIGHT THE “BIG CORPORATION” – BUT A FEW MONTHS LATER – BOTH PARTIES REACHED A CONFIDENTIAL SETTLEMENT – THE BAND RELEASING A STATEMENT – SAYING POST AGREED TO WITHDRAW ITS APPLICATION TO REGISTER “OK GO” AS A TRADEMARK.

WHEN IT COMES TO TRADEMARK LAWSUITS – PROFESSOR HARRIS SAYS IT IS MUCH MORE DIFFICULT FOR THE SUING PARTY TO CLAIM THAT LIKELIHOOD OF CONFUSION WHEN THE ALLEGED VIOLATOR IS IN A TOTALLY DIFFERENT INDUSTRY.

[DONALD HARRIS]

“The two factors that play the biggest role are how similar the marks are and then how similar the products. So if you have someone using OK Go for a band and OK GO for cereal are consumers really likely to believe that they’re coming from the same source? Highly unlikely. But if you have Jelly Roll the band and Jelly Roll the singer you know now they’re both in entertainment now, they’re both singing now. It’s both about music. They’re using the exact same name and it seems to me to get much more likely that consumers are likely to be confused here, as opposed to using the exact same name on wildly different products or services.”

[BROCK KOLLER]

SO WILL THE JELLY ROLL AND PINK LAWSUITS FOLLOW THE SAME TUNE AS THE LADY A AND OK GO BATTLES – WITH SETTLEMENTS? PROFESSOR HARRIS SAYS MOST CASES USUALLY DO SETTLE  – WHICH COULD BE MUSIC TO THE EARS OF ALL PARTIES INVOLVED.