Law360: Earth Wind & Fire Cover Band Must Face Original’s Suit In Fla.

News Law360: Earth Wind & Fire Cover Band Must Face Original’s Suit In Fla. Mark S. Lee · Law360: Earth Wind & Fire Cover Band Must Face Original’s Suit In Fla. David I. Greenbaum · August 22, 2023

Law360 (August 18, 2023, 5:30 PM EDT) — A concert producer and a promoter must face a trademark infringement suit over their “Legacy Reunion of Earth, Wind & Fire Alumni” concerts after a Florida federal judge found Thursday there were enough ties to the Sunshine State to haul the two defendants into court there.

U.S. District Judge Federico A. Moreno said a “substantial portion” of the events that give rise to the claims by Earth Wind & Fire IP LLC, which owns the trademarks for the musical group, occurred in the Southern District of Florida, and the court has personal jurisdiction over Substantial Music Group LLC and Stellar Communications Inc. under Florida’s long-arm statute.

Among these relevant activities within the district are the promotion and advertising of tickets for two concerts at a venue in Fort Lauderdale in April and May 2023, according to the order. The defendants also promoted tickets for a concert in Okeechobee and another in Pensacola, the order said.

Judge Moreno denied the defendants’ alternate motion to move the case to the Northern District of Georgia after he determined the Southern District of Florida is a proper venue.

Earth Wind & Fire IP filed suit in March, claiming Substantial and Stellar were trying to sell tickets that misled the public into thinking that the real Earth, Wind & Fire would be performing at the concerts.

Though the founder of the group, Maurice White, died in 2016, the three remaining original members, family members of the founding musicians, and other side musicians have continued to tour under a license from Earth Wind & Fire IP, the entity that holds the trademarks for the group, according to the suit.

But beginning in about 2019, the defendants hired some entertainers who had previously played with the group as side musicians to perform Earth, Wind & Fire’s hit songs at concerts, according to the complaint. To advertise these concerts, Substantial and Stellar used the Earth, Wind & Fire trademarks and distinctive logos, misleading consumers and selling more tickets at higher prices than they could have otherwise, according to the suit.

After receiving cease-and-desist letters, the defendants changed the name of the shows from “Earth Wind & Fire Legacy Reunion” to “Legacy Reunion of Earth Wind & Fire Alumni” and continued to use the mark, according to the complaint.

In addition, the images that appeared on the concerts’ purchase pages on various ticketing sites featured the three original members of the group, according to the suit.

“The above-described misconduct is not accidental,” the plaintiff said. “It is instead calculated to and likely to mislead, deceive and confuse the consuming public into believing that the concerts defendants promote are concerts by the real Earth Wind & Fire musical group when, in fact, they are not.”

Earth Wind & Fire IP said it has received complaints from consumers, including one person who attended a concert in Pensacola and said he expected to see the original band members at the concert.

Attorneys for the parties did not respond to requests for comment Friday.

Earth Wind & Fire IP LLC is represented by Mark S. Lee and David Ira Greenbaum of Rimon PC.

The defendants are represented by David Kenneth Friedland of Friedland Vining PA.

The case is Earth Wind & Fire IP LLC v. Substantial Music Group LLC et al., case number 1:23-cv-20884, in the U.S. District Court for the Southern District of Florida.

–Editing by Caitlin Wolper.