Recapturing the Flag: Former Members of Black Flag Spark New Battle over Use of the Band’s Legendary Name and Logo

SST Records, Inc. v. Garfield, No. CV 13-05579 DDP (MANx) (C.D. Cal. Oct. 8, 2013)

There’s nothing more punk rock than a trademark infringement lawsuit.  Actually, there are a lot of things that are more punk rock – like flouting authority, facial piercings, and two-minute-long tracks.  But starting a federal case over the tattoo-worthy insignia of one of the original hardcore punk bands has got to be up there.

At least Gregory Ginn — founding member and guitarist of punk legends Black Flag — must have thought so.  He brought suit on behalf of himself and his independent label SST Records, in the Central District of California against five of his former bandmates (and one new band member), seeking a preliminary injunction barring the defendants from using the Black Flag name and logo.

In the late 1970s, Ginn, along with defendants Keith Morris and Chuck Dukowski, formed Black Flag, which would later become the preeminent punk rock band of the late 1970s and 1980s, and widely recognizable by its logo: an uneven set of four vertical black bars simulating a waving flag.  The band, at least for a time, operated as a statutory partnership, and SST Records distributed the band’s recordings as well as merchandise bearing the four-bar logo.  The band broke up in 1986, and no member performed under the Black Flag name for the better part of 20 years until Ginn and defendant Dez Cadena played a reunion show in 2003. However, unaffiliated and often unauthorized third parties continued to sell merchandise bearing the Black Flag name and logo.

In late 2011, other former members of the band played a show as Black Flag, and in mid-2012, all defendants with the exception of Henry Rollins, formed a Black Flag “tribute band” simply called “Flag”.  In January 2013, Flag announced that it was going on tour, and unveiled a logo consisting of four evenly-spaced vertical black bars accompanied by the following text: “Featuring original members Keith Morris, Chuck Dukowski, Bill Stevenson, and Dez Cadena, with Steven Egerton, Performing the music of Black Flag.”

In September 2012, before Flag began performing, defendants Rollins and Keith Morris filed a trademark application with the USPTO for the Black Flag name and mark (Serial No. 85/723,921) that still remains pending.  As part of his claims, Ginn alleges that the Black Flag name and mark belonged to SST Records, and that the defendants lied on their trademark application concerning the continuous use of the mark.  However, the focus of the court’s decision was not the trademark application, but rather the existence of a protectable interest in the Black Flag mark, and the defendants’ use of the Flag mark.  (Notably, SST filed a trademark application for the same name (Serial No. 85/967,025) in June 2013, and further progress on the application has been blocked by Rollins’ and Morris’ application.)

The court explained that it was unpersuaded that the plaintiffs “can demonstrate a protectable interest in either the Black Flag name or the Logo,” neither of which was registered by the plaintiffs.  Despite the notoriety of the band’s name and logo, the court explained that “at some point marks may transcend their identifying purpose and fall outside the protection of trademark law” as a result of an owner’s failure to police the mark, resulting in widespread usage by competitors and the perception of “generic use” in the mind of the public.  The court justified its “genericide” holding by noting that manufacturers had been distributing unlicensed Black Flag merchandise at least since 2009, and that a Japanese company in 2008 registered the mark – all with no response from plaintiffs.  The court therefore held that it was doubtful the mark was protectable since plaintiffs took no action to maintain its distinctiveness in the market at any time after 1986.

Even so, the court went on to hold that plaintiffs had not adequately demonstrated that the Black Flag and Flag marks were similar.  While there was some visual similarity between the four-bar configuration of the respective marks, the court noted that the Black Flag logo’s bars were unevenly spaced, and the Flag logo’s bars were evenly spaced.  But more importantly, the explanatory text accompanying the Flag logo clearly distinguished the marks, so there was no likelihood of confusion.  The court accordingly denied plaintiffs’ requested relief.  As of late November, the case was referred to mediation, but there is no word yet whether any progress has been made.

This case is just one in a recent series of lawsuits involving former members of popular rock groups from the past arguing over the use of the band’s name and logo (see, for example, J. Geils Band, Boston, and Queensrÿche), perhaps as a result of the ever-increasing popularity of “reunion tours.”  The ruling is a reminder about the importance of determining who may be the proper owner of trademark rights in a band’s name, as well as a warning to those who may want to claim trademark rights to properly protect those rights.  But in too many instances, these considerations were not in bands’ minds, which means that it looks like the resurgence of classic rock outfits will continue to keep music and trademark lawyers hard at work.