Court Limits Use of Name "beach boys"

<body topmargin=0 leftmargin=0 marginheight=0 marginwidth=0> <table cellpadding=0 cellspacing=0 border=0><tr> <td valign="top" colspan=3 height=80 BGCOLOR="#000000" TEXT="#F7F7FF" bgproperties="fixed" background="07700500dvldtc.gif"> <div> court limits use of name "beach boys"</div> </td> </tr><tr> <td valign="top" rowspan="2" width=210 BGCOLOR="#000000" TEXT="#F7F7FF" background="078d2c00dvldtc.gif"> <div> <A HREF="index.htm" TARGET="_top" TITLE="Law Offices of Jeffrey S. 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Brother Records sued Jardine to stop him from using the name in 1999, claiming that he was infringing its trademark.</div> <bR> <div> <B>Nominative Fair Use</B></div> <bR> <div> In response, Jardine argued primarily that he was allowed to use the name under the doctrine of nominative fair use, which says that people can use a trademarked name to describe a separate product.</div> <bR> <div> But the 9th Circuit disagreed in a published decision Tuesday, ruling that "Beach Boys Family and Friends" couldn't qualify as nominative fair use of the Beach Boys name, because Jardine's promotional materials implied his tour was sponsored by the Beach Boys.</div> <bR> <div> "Jardine's use of the trademark caused actual consumer confusion, as both event organizers that booked Jardine's band and people who attended Jardine's shows submitted declarations expressing confusion about who was performing," Judge A. Wallace Tashima wrote. He was joined by Judges Harry Pregerson and John T. Noonan.</div> <bR> <div> <B>Sponsorship Issue</B></div> <bR> <div> Jeff Benice, counsel for Jardine, called the decision "disappointing."</div> <bR> <div> But Benice of Irvine's Benice & Associates said that, after the suit was filed in 1999, Jardine toned down the Beach Boys references in his promotional posters.</div> <bR> <div> "It appears as though the 9th Circuit is saying that, if he refers to himself in a neutral fashion in his promotional materials, so that it does not suggest sponsorship by Brother Records or the Beach Boys," Jardine can keep touring as Beach Boys Family and Friends, Benice said. Philip H. Stillman of Flynn & Stillman in Del Mar, who represented Brother Records, did not return a call for comment.</div> <bR> <div> The Beach Boys, founded in 1961, had five members, including Jardine. The surf rock group scored hits with songs like "Help Me Rhonda" and "I Get Around." In 1967, the band formed Brother Records to manage the group's intellectual property rights. Jardine, Mike Love, Brian Wilson and the estate of Carl Wilson are all 25 percent owners of Brother Records.</div> <bR> <div> The death of drummer Carl Wilson and personality conflicts among the remaining Beach Boys splintered the group in later years. In 1991, Brother Records formed Brother Tours, to manage distribution of touring income between Beach Boys who went out on tour with the group and those who no longer hit the road.</div> <bR> <div> Over the next few years, two touring members, Love and Jardine, decided they no longer wanted to tour together. Love signed a nonexclusive license agreement with Brother Records in 1998, giving him the right to use the Beach Boys name. That same year, Jardine tried to come to a similar agreement to use the name, and he began touring, as well.</div> <bR> <div> In October 1998, Jardine told Brother Records that he didn't need to license the Beach Boys name, because he planned to tour not as The Beach Boys but as "Beach Boys Family and Friends." Brother Records disagreed. After another failed attempt to set up a licensing agreement, Jardine continued to tour with the name.</div> <bR> <div> Jardine performed as "Al Jardine of the Beach Boys and Family & Friends" and "Beach Boys and Family." Sometimes, he performed near the times and places of Mike Love's Beach Boys shows.</div> <bR> <div> Brother Records sued Jardine in 1999, asking him to stop using the Beach Boys name. Harry L. Hupp, U.S. District Court judge for the Central District of California, gave the firm a permanent injunction against Jardine, which led to his 9th Circuit appeal. The Beach Boys are not the only music group to suffer from a split personality in recent years. Members of such historic groups as the Little River Band, the Supremes, the Platters and the Coasters have filed lawsuits over the use of the bands' names.</div> <bR> <div> Music and entertainment attorney Jay Cooper of Greenberg Traurig, former president of the National Academy of Recording Arts and Sciences, said name disputes have been around for decades. Cooper said bands are wise to forge an agreement early on that governs who can use the name after the group splits up.</div> <bR> <div> "The most important asset of any group is their name. It's what sells records. It's what brings people into auditoriums. It's what sells merchandise," Cooper said.</div> <bR> <div> In 2001, the 9th Circuit issued a similar opinion, ruling that members of the band "War" could not bill themselves as former War members when they toured, because it violated the copyright, which was owned by a separate company.</div> <bR> <div> "The real issue comes not necessarily in who can perform as the group, but who can go out there and capitalize on the name," said Century City sole practitioner Jay M. Coggan, who represented the War copyright holder.</div> <bR> <bR> <bR> <bR> <DIV ALIGN="LEFT"></DIV> <div> <A HREF="id42.htm" TARGET="_top" TITLE="Jardine Loses Trademark Fight "><U><IMG SRC="092bd3e0.jpg" border=0 width="189" height="62" ALIGN="BOTTOM" HSPACE="0" VSPACE="0"></U></A></div> <div> <A HREF="id42.htm" TARGET="_top" TITLE="Jardine Loses Trademark Fight "><U>Click on Gavel to Continue</U></A></div> </td> </tr><tr> <td valign="top" colspan=2 height=24 BGCOLOR="#111111" TEXT="#F7F7FF"> <div> To Preview Your Selection - Click on any Blue Link (Above)</div> </td> </tr></table></body>