Wednesday, December 17, 2008

Black Sabbath Co-Founder Files Trademark Infringement Lawsuit Against Live Nation Over Sales of Unlicensed “Black Sabbath” Merchandise

Bloomberg reports on the trademark infringement lawsuit filed by Anthony Iommi, co-founder and lead guitarist of the famed heavy metal band Black Sabbath, and Bluefame Ltd., the U.K. corporation that represents Iommi in his Black Sabbath trademark licensing, against Signatures Networks, Inc. (“Signatures”) and Live Nation, Inc., which purchased Signature in 2007. See Anthony Iommi et al v. Signatures Network Inc. et al, Case No. 1:08-cv-10904 (S.D.N.Y. December 16, 2008). A copy of the complaint can be downloaded here (courtesy of The Trademark Blog).

Iommi is the only remaining original member of the band formed in 1968 in Birmingham, United Kingdom, by Iommi, vocalist John “Ozzy” Osbourne, bassist Terence “Geezer” Butler and drummer Bill Ward. The original members left the band in the 1980s and each member relinquished all of his respective right, title, and interest in and to the Black Sabbath name, which left Iommi as the sole exclusive owner of the Black Sabbath name by 1985.

Bluefame first received a registration for the BLACK SABBATH mark in the United Kingdom in 1999, and subsequently assigned and transferred the registration to Iommi. On October 31, 2000, Iommi received a federal trademark registration from the United States Patent and Trademark Office for the word mark BLACK SABBATH for three classes of goods (phonograph records, compact discs and prerecorded audio tapes featuring music; clothing; and entertainment services, namely, live performances by a rock band).

In 1997, in connection with a Black Sabbath reunion tour, Iommi, through Bluefame, entered into a licensing agreement with Signatures to manufacture, distribute, and sell merchandise bearing the Black Sabbath trademark and Iommi’s image. The original term was through the end of 2000, but the term was extended to June 30, 2006 through three subsequent amendments.

According to the complaint, the parties attempted to negotiate a fourth amendment, but were unable to reach any agreement on extending the license. The negotiations apparently collapsed around the time when Live Nation purchased Signatures for $79 million in cash, stock and repayment of debt.

In April 2008, Iommi sent a letter to Signatures demanding that Signatures cease and desist from manufacturing, selling, and distributing all merchandise bearing the Black Sabbath mark and/or Iommi’s name or likeness. According to the complaint, Signatures has continued to manufacture, distribute, and sell a wide range of merchandise bearing the Black Sabbath trademark and Iommi’s image and likeness.

Iommi’s causes of action are for registered trademark infringement under 15 U.S.C. §1114, false designation of origin under 15 U.S.C. §1125(a), trademark dilution under 15 U.S.C. §1125(c), trademark infringement under New York law (N.Y. GEN. BUS. L. § 360-k), trademark dilution under New York law (N.Y. GEN. BUS. L. § 360-1), common law trademark infringement, and breach of Iommi’s right to privacy under New York law (N.Y. CIV. R. L. §§ 50-51) for the unauthorized use of Iommi’s name, image, and likeness.

Iommi seeks injunctive relief, damages, treble damages, costs, attorneys’ fees, and destruction of all infringing merchandise.

(perfect gift for the holidays)

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