Wednesday, January 29, 2003
Ex-Beach Boy Jardine’s Taking of Group’s Name for Touring Band Not ‘Fair Use,” Ninth Circuit Rules
By a MetNews Staff Writer
An injunction barring Al Jardine, a singer and guitarist who was among the founding members of The Beach Boys, from including the term “Beach Boys” in the name of his touring band was affirmed yesterday by the Ninth U.S. Circuit Court of Appeals.
The panel upheld a ruling two years ago by Senior U.S District Judge Harry Hupp, who barred Jardine from using the “Beach Boys and Friends” moniker or similar names, though he was still allowed to describe himself as a former Beach Boy.
Judge A. Wallace Tashima, writing for the Ninth Circuit, rejected Jardine’s claim that he had merely made a “classic fair use” or “nominative fair use” of the trademarked name. He cited evidence that concert-goers and show organizers had complained of confusion between Jardine’s group and that of fellow original band member Mike Love, which has licensed the name from Brother Records, Inc.
Brother was incorporated in 1967 and holds The Beach Boys’ intellectual property rights. It is currently owned in equal shares by Jardine, Love, Brian Wilson, and the estate of Carl Wilson, an original band member who died of cancer not long after the group’s 1998 tour.
Brother sued Jardine in 1999, after he began touring on his own with his two sons and Wendy and Carnie Wilson, daughters of Brian Wilson and former members of the group Wilson Phillips.
Love, in the meantime, had entered into a license agreement with Brother that allowed him to use the name in exchange for a substantial royalty. The agreement also required that Love take certain measures to preserve the group’s image and style and to select his booking agent and manager from an approved list.
The agreement did not preclude Brother from licensing the name to the other shareholders for their own projects, but Jardine and the corporation’s board could not agree on terms, the district judge found.
Tashima said that Jardine was not using the name merely as a description.
The judge explained:
“Jardine does not use the trademark in any primary, descriptive sense. That is, Jardine does not use ‘The Beach Boys’ trademark to denote its primary, descriptive meaning of ‘boys who frequent a stretch of sand beside the sea.’ Instead, Jardine uses ‘The Beach Boys’ trademark in its secondary, trademark sense, which denotes the music band—and its members—that popularized California surfing culture. This is true regardless of whether Jardine’s use of the mark refers to Jardine himself or to the band.”
Nor does the nominative fair use concept—the notion that one may refer to the trademarked product “for purposes of comparison, criticism, point of reference” or the like—apply, Tashima said, because such use is not permitted where there is actual consumer confusion.
“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,” the judge explained.
The case is Brother Records v. Jardine, 01-57095.
Copyright 2003, Metropolitan News Company