legal battle is brewing: punk/heavy metal icon Glenn Danzig has sued his former Misfits bandmate, renowned bassist and singer Gerald “Jerry Only” Caiafa, for violations of various Misfits trademarks and logos.
Following in the footsteps of Black Flag the filed complaint is another example of former bandmates’ battles over merchandise that remains profitable long after the initial group split up. At the heart of this case is the Misfits’ iconic punk rock logo, the “Fiend Skull”.
Danzig’s complaint recounts a brief history of the Misfits, touting Danzig not only as the founder, creative force, and principal songwriter and lyricist of the Misfits, but the sole reason for the tremendous success of the band. Part of that success, Danzig alleges, flowed from the Misfits’ emblematic use of skeletal themes in their performances and on their records, including iconic logo the “Fiend Skull” (also known as the “Crimson Ghost”, in honor of the 1946 movie monster of the same name, from which the skull design was derived).
According to the complaint, the “classic Misfits era” ended in 1983 with the departure of Danzig from the band, and the group’s consequent demise. The complaint alleges that, following Danzig’s musical success in the early 1990s (exhibit A being Danzig’s hard rock classic “Mother”), interest in the Misfits resurged, and in 1992 – allegedly as a result of this renewed popularity – Caiafa sued Danzig claiming exclusive rights in the Misfits’ name and logos. That lawsuit settled in 1994, and the resulting agreement provided that both Danzig and Caiafa would share ownership of the Misfits marks, with each of them being permitted to non-exclusively merchandise and exploit the band’s name and iconic skull design without the other’s consent.
In 1995, Caiafa went on to form a new incarnation of the Misfits without Danzig, this time employing crooner Michale Graves – a group which Danzig’s complaint dubs the “imitation misfits”. At various points in 2000, Caiafa registered (and was granted) various “MISFITS” trademarks; he also filed more applications with the USPTO in August 2004 which remain pending. All of these registrations were purportedly filed without Danzig’s knowledge or consent. Danzig now accuses Caiafa of breaching the 1994 settlement agreement and attempting to fraudulently misappropriate for himself, through these trademark applications, the exclusive ownership of the Misfits name, logo, and artwork. Danzig has also filed cancellation proceedings with the TTAB concerning the “MISFITS” marks from 2000, and opposition proceedings concerning the “MISFITS” marks from 2004 that remain pending, alleging that he co-owns each of the marks, and that Caiafa failed to identify Danzig in the applications.
Danzig’s federal complaint, filed in California, asserts several causes of action against Caiafa, including breach of the 1994 settlement agreement, false advertising under section 43(a) of the federal Lanham Act, in connection with his purported misrepresentations to retailers like Hot Topic that they were not permitted to do business with Danzig, and interference with prospective business advantage (for the same reasons). Caiafa and his company Cyclopian Music, Inc. waived service of the complaint, and are due to respond (by answer or motion) on June 20, 2014.
Successful punk rock bands, not unlike bands in other genres, start out as musicians, but end up as business entities in the music industry, which inherently involves earning merchandise revenue. Entering into agreements that outline ownership of trademarks, names, and logos from the outset may feel too corporate for musicians rebelling against the establishment, but it is much easier to think about a band’s future after a split-up in the beginning while everyone is getting along.
We will keep an eye on this case to see how it evolves and whether, like Queensrÿche, the parties will settle, or like Black Flag and Boston, the courts will decide. While litigation is often unpredictable, one thing is fairly certain in this case: there will not be a “classic Misfits era” reunion tour any time soon.
Filed in: Copyright, Legal Blog, Music, Trademarks and Brands
June 3, 2014