Legal Beat: Earth Wind & Fire Win Trademark Case

On March 4, 2024, a Miami federal judge ruled in favor of legendary R&B group Earth, Wind & Fire (“EWF”) in a trademark infringement case against a tribute band. The case was filed last year against Substantial Music Group and Stellar Communications. 

In the lawsuit EWF claimed an act called Earth, Wind & Fire Legacy Reunion (“Legacy Reunion”) misled people into believing that they were seeing the real group. EWF contended that Legacy Reunion ads had improperly used copyrights and iconography such as their “Phoenix” logo, and actual photos of EWF band members. EWF’S attorney stated: 

“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.” 

Legacy Reunion used the Earth Wind & Fire name without the permission of the real EWF. The judge noted that the evidence in the case was “overwhelmingly” in favor of EWF. His ruling held that Legacy Reunion infringed upon EWF’s intellectual property by the band name they used.” 

By way of background, EWF are now led by veteran members Philip Bailey, Ralph Johnson and Verdine White. The leader and founder of the group, Maurice White, passed away in 2016. EWF are known for such hits as “Sing a Song”, “Reasons”, “Got to Get You into My Life” and “Shining Star.” 

Tribute bands are currently quite popular and usually exclusively cover the music of a particular famous band such as the Beatles, Doors, or Beach Boys. These groups can legally perform so long as they make clear they are only a tribute band and not the real thing. Although they called themselves a “Reunion”, the complaint alleged that Legacy Reunion only had a few “side musicians” who had played with EWF briefly many years ago. 

In his ruling, Judge Federico A. Moreno held “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 also ruled that “Regardless of if defendants’ musicians were technically side men 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. 

EWF included in their complaint the allegation that there were many complaints by fans on social media who indicated they thought they were going to an EWF concert. The judge decided that the defendants were liable for trademark infringement. Unless the case settles, there will be a jury trial in May 2024 to determine the amount of damages EWF is entitled to.