Monday, June 1, 2009

Ozzy Osbourne Files Lawsuit Against Anthony Iommi Over BLACK SABBATH Trademark

Multiple news sources (Reuters, E! Online, Entertainment Weekly) reported over the weekend on the lawsuit filed last week in the U.S. District Court for the Southern District of New York by Ozzy Osbourne against his Black Sabbath band partner Anthony Iommi over ownership of the BLACK SABBATH mark. See John Osbourne (p/k/a Ozzy Osbourne) v. Anthony Iommi , Case No. 09-cv-04947 (S.D.N.Y. Filed May 26, 2009). has a posting of the complaint here.

In December 2008, Iommi filed his own trademark infringement lawsuit against Signature Network (previously blogged here) over the sale of unlicensed “Black Sabbath” Merchandise. As part of that complaint, Iommi described how he came to be the sole owner of the “Black Sabbath” trademark. Particularly, with respect to Ozzy Osbourne, on June 30, 1980, Osbourne and his company, Monowise, Ltd. assigned and transferred

any and all rights of any kind or nature that they have or have had in the name 'BLACK SABBATH' .... OSBOURNE further agree[d] that he will not hereafter, directly or indirectly, use, permit, or authorize the use of the name 'BLACK SABBATH' or any part of it or any similar name in connection with any activities in and throughout the entertainment industry.

Interestingly, it was that dispute with Signature Network that may have started the dispute leading up to Ozzy’s present lawsuit. According to correspondence dated April 2008 from Ozzy’s attorney to Iommi’s attorney (attached as exhibits to Ozzy’s complaint), Ozzy became aware of Iommi’s cease and desist letter to Signature Network and Iommi’s claim to be the sole owner of the BLACK SABBATH mark. Apparently at that time the letter was sent out, Iommi and Ozzy had been negotiating some kind of agreement memorializing their joint ownership of the BLACK SABBATH mark as well as negotiating a renewal of the license agreement by Signature Network.
In a letter from Ozzy’s attorney sent on January 29, 2009 (after Iommi’s lawsuit against Signature Network had been filed), Ozzy’s response to the aforementioned assignment is that Ozzy and his wife, Sharon Osbourne, had been in charge of controlling the nature and quality of the services rendered under the BLACK SABBATH mark since 1997 (when the BLACK SABBATH reunion tour began).

This same sentiment is echoed in Ozzy’s official press release statement regarding the lawsuit which explains in the following manner why his prior assignment of the BLACK SABBATH name in the early 1980s may not be relevant to the goodwill inherent in the BLACK SABBATH name today:

Throughout the last 12 years, it was my management representatives who oversaw the marketing and quality control of the “Black Sabbath” brand through OZZFEST, touring, merchandising and album reissues. The name "Black Sabbath" now has a worldwide prestige and merchandising value that it would not have had by continuing on the road it was on prior to the 1997 reunion tour.

Ozzy also apparently was not even aware of the federal trademark registration that Iommi had obtained from the U.S. Patent and Trademark Office until recently.

Ozzy’s seeks a declaration that he is at least a joint owner of the BLACK SABBATH mark and that Iommi is not the sole owner of the mark. Ozzy also seeks cancellation of the BLACK SABBATH federal registration on the basis that Iommi, when he filed the application in March 1999, made a knowingly false statement to the PTO when he declared that no other person had any right to use the BLACK SABBATH mark in commerce. Two additional causes of action for monies owed and misappropriation of Ozzy’s right of publicity are also claimed.

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