SST Records, Inc. v. Garfield, 13-cv-5579 DDP MANX, 2013 WL 5563759 (C.D. Cal. Oct. 8, 2013).

The Central District of California denied a motion for a preliminary injunction filed by the founder of punk band Black Flag, Gregory Ginn, and SST Records, Inc., the band’s former record label. The court refused to enjoin the band’s other members from using certain marks, finding that plaintiffs did not carry their burden in showing a likelihood of success on their trademark infringement, unfair competition, and breach of contract claims because it was unlikely that they had rights in the marks or that the allegedly infringing marks were sufficiently similar.

The dispute arose in 2013 when the members of Black Flag announced a reunion tour that would include the original members minus Ginn. The band began touring in April 2013, using the name Black Flag and adding the language “Featuring Original Members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Stephen Egerton, Performing the Music of Black Flag.” Rather than using Black Flag’s known logo of four uneven black bars simulating a waving flag, the band used a modified logo that consisted of four evenly spaced black bars in a straight line. Ginn and SST sought a preliminary injunction to enjoin the defendants from using the mark in their tour.

The court first found that it was unlikely that plaintiffs owned the marks based on defendants’ evidence that plaintiffs had allowed the marks to fall into generic use. Specifically, the court found significant that manufacturers had been creating unlicensed merchandise since 2009 and that a Japanese company had registered the Black Flag mark in 2008—both with no response from plaintiffs.

The court alternatively found that even if plaintiffs could establish a protectable interest in the marks, it was unlikely that they could show a likelihood of confusion. According to the court, the inclusion of the explanatory phrase regarding which members were performing clearly distinguished the mark being used in the 2013 tour from the Black Flag mark.

The court also found that defendants’ selection of the marks likely was not in bad faith because they had a colorable argument that the band partnership, of which they were a part, was the actual owner of the marks plaintiffs were claiming. Finally, the court dismissed plaintiffs’ contentions that there was actual evidence of confusion; it explained that plaintiffs’ “limited evidence” of fans asking Ginn whether he was performing in the 2013 shows “hardly establishe[d] actual confusion among a significant number of consumers.”

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