28
Jan/03

The Ninth Circuit's Giving Me Excitations


Al Jardine was one of the other members of the Beach Boys.  The BEACH BOYS trademark is owned  by a corporation owned by Brian Wilson, the estate of Carl Wilson, Mike Love and Jardine.  Any shareholder was to be able to use the name pursuant to a license, however Jardine didn’t come to terms with the corporation. Jardine and Love began touring with separate bands.

Jardine promoted his tour as AL JARDINE of the BEACH BOYS and Family and Friends; THE BEACH BOYS “FAMILY AND FRIENDS”; and BEACH BOYS AND FAMILY among other names.  There were incidents of actual confusion – some show organizers canceled bookings after learning that “Jardine’s band wasn’t what they thought it was.”  What that probably means was that they learned Mike Love wouldn’t be singing.

The BEACH BOYS corporation sued Jardine for trademark infringement.  District court ruled against Jardine at smmary judgment. Setting aside whether there was a valid license, the Ninth Circuit analyzed Jardine’s fair use defense on appeal.

There are two types of fair use in Ninth Circuit land: descriptive fair use and nominative fair use.  Descriptive fair use is the use of a term in its primary, non-trademark meaning.  In this situation it would have been using the term Beach Boy to refer to a boy on a beach.  That was not the situation here.

Nominative fair use has a three part test: (1) the product can’t be readily identifiable without use of the term; (2) defendant uses only what is reasonably necessary to identify its products; and (3) the user must do nothing to suggest sponsorship or endorsement by the trademark holder.

As for number one, Al Jardine is allowed to indicate that he is a former Beach Boy.  He doesn’t have to say that he was a member of that band headed by Biran Wilson which released Pet Sounds, you know the one . . . So he passes test number one.

Second, he used only what was reasonably necessary – he didn’t use Beach Boy logos, Beach Boy album covers, didn’t use more than was needed to identify his role as a Beach Boy (but see comment below). Two for two.

Jardine screwed up on element three.  By displaying the term BEACH BOY more prominently than FAMILY AND FRIENDS, he suggested sponsorship.  Also, by using BEACH BOYS in the name of his band, he caused confusion (I think that this fact represents “taking more than you need” and could have been mentioned in element two).  The fact that there had been actual confusion weighed heavily against him.

Injunction affirmed.   Full text here.

P.S.  Here is an ad for AL JARDINE’S FAMILY AND FRIENDS.

 

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