Contributing Author: Daniel Rozansky
Imitation might be considered the best form of flattery until it crosses into intellectual property infringement. Recently, a tribute band learned this lesson the hard way because when you play with (Earth, Wind &) Fire, you will get burned–in the courtroom.
Earth, Wind & Fire, formed in 1969, is an American band best known for its hit “September,” which has over a billion Spotify streams. To no one’s surprise, the band has not slowed in popularity, joining Lionel Richie for an upcoming tour in 2024. Not only has the band won the hearts of its fans, but it has also inspired some to channel their artistic side. Hence, the emergence of the Earth, Wind & Fire Legacy Reunion tribute band.
Cover bands and tribute bands have been a unique part of the industry, providing fans with a more dynamic and intimate way to connect. Typically, cover bands are legally protected from intellectual property infringement claims and thus allowed to perform the songs. As an industry standard, venues from local bars to stadiums are normally responsible for securing blanket licenses to cover public performance rights. This means your dad’s band can legally perform “Blank Space” without a knock on the door from TSwift’s team.
However, laws relating to tribute bands are not black and white, as these acts tend to heavily draw upon the brand’s name, image, and likeness in addition to song covers. While their intentions may be good, tribute acts can easily mislead fans and devalue a band by stealing potential profits. To avoid legal claims, when a tribute band promotes itself, it must clearly distinguish itself from the original band and think whether someone reading the ad would believe that the tribute band is somehow associated with the original band.
In March of 2023, Earth, Wind & Fire LLC filed a lawsuit against Substantial Music Group and Stellar
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Communications over Earth, Wind & Fire Legacy Reunion, alleging copyright infringement after Legacy Reunion used the band’s logo, word mark, and other intellectual property in advertising and promotional material. According to the claim, “Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices.”
While referring to itself as a “Reunion,” the act only consisted of “side musicians” who were not significantly or currently in Earth, Wind & Fire (as evidenced by the band’s concurrent tour). This advertising led many to believe that they were paying to see the band, or arguably the “main” members of the band. The court filing alleges significant confusion amongst fans and subsequent displeasure upon the attention of a “Reunion” concert. In a direct statement obtained from a fan: “I attended the EWF legacy reunion in Pensacola, Florida in hopes of seeing Philip Bailey, Verdine White, and others from the original band. Their pictures are on advertisements, posters, or whatever. The impression of Reunion would be original band members from various years. Why is it misleading? The pictures should be removed from the advertisement.”
On March 4, 2024, a Miami federal judge ruled in favor of Earth, Wind & Fire LLC, deciding the tribute band’s “deceptive and misleading” marketing was IP infringement. Judge Federico A. Moreno ruled, “Regardless of if defendants’ musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main (or most prominently known) members of the band would be performing.” A trial is scheduled for May 2024, to determine the damages.
This is one of many times tributes have backfired. For example, late pop singer Michael Jackson’s estate has faced off with impersonation show MJ Live. His estate sent cease-and-desist warnings to halt the production, claiming that it was illegally using Michael Jackson’s likeliness. Interestingly, the Las Vegas jukebox show has attempted to turn the tables on the estate (and copyright owners of MJ’s music and NIL), alleging they are infringing on the intellectual property rights for impersonation, as they have developed their trademark rights in its 10 years of residency. In Nevada, specifically Vegas, there is no shortage of impressionists prompting the state to develop its own right of publicity laws granting the right to use “impersonators in live performances.”
In another matter, members of the Canadian rock band The Guess Who are currently fighting it out in court with former band members who used the band’s likeness under the alleged guise of a “cover band.” Plaintiffs and “stars” of the band Randy Bachman and Burton Cummings filed a $20 million lawsuit against former bassist Jim Kale and drummer Garry Peterson who have been using the band’s name to perform covers in venues across the United States.
So, before hitting the road on the 21st night of September as an Earth, Wind & Fire tribute band, ask yourself, “do you remember” the warnings from that Forbes article from the 11th night of April, and think about how you can avoid facing the music in court.
Legal Entertainment has reached out to representation for comment and will update this story as necessary.
Daniel Rozansky is a Partner at Stubbs Alderton & Markiles LLP in Los Angeles. He practices in the areas of entertainment, intellectual property and business litigation, and represents clients across multiple platforms including film, television, music, concerts and touring, and digital media. He regularly reviews television pilots, screenplays and other material in development to assist those clients in identifying and avoiding potential liabilities.
