First, the production company and its successors were never able to register the trademark. You don’t have to do this, but it helps in court. Secondly, however, the court chose to apply a test rather than simply rubber-stamp the contracts: who established what qualities and characteristics the trademark represents, and who actually controls them here? From this test, it found that the actual band, rather than a promoter with no creative involvement for 25 years, was represented by the trademark: “the [band members] were the product denoted by the Exposé mark and owned the goodwill associated with the mark.”
IP lawyer Pamela Chestak, writer of the excellent Property, Intangible blog, is uneasy about the outcome:
Wow. So apparently in the 11th Circuit a private agreement doesn’t matter; rather, the actual ownership has to be manifested publicly. I’m not saying the outcome is wrong – band names are a different world when it comes to trademark ownership, because the members are often so strongly identified with the public image of the band. But I would have liked a little more compelling reason for why the court felt that the contracts, as well as the defendants’ belief that they needed a license, could just be ignored.
I vaguely know about the “use it or lose it” element to trademark ownership that seems to be the underlying principle at play here. Perhaps someone can explain it in more depth why this case is unusual. The idea that adhesive contracts backed by the threat of litigation aren’t enough–that owning a trademark may be subjected to legal tests of continued use, public manifestation, etc–seems a good one!
Crystal Entertainement & Filmworks, Inc. v. Jurado [11th Circuit Court of Appeals]
How to Steal a Trademark [Property, Intangible]