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This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
The boy band One Direction made history last month when their debut U.S. album "Up All Night" topped the Billboard charts – making them the first U.K. group to launch in the U.S. at Number 1. Now the newly stateside pop group, which reached celebrity status just as quickly as their CD, is being sued for trademark infringement.
The complaint, filed in federal court in California on April 9, 2012, lays out the claims of a "California-based pop-rock band" – also named One Direction. According to the lawsuit, the California group has been using the name One Direction in the U.S. continuously since the fall of 2009. The suit claims that the California group has performed concerts, maintained websites, posted videos to YouTube, sold music on iTunes, and released an album in February of 2011 titled "The Light," all under the name One Direction. On February 14, 2011, the California group filed a trademark application for One Direction with the United States Patent and Trademark Office for "live performances by a musical band." The One Direction trademark application published in the Trademark Official Gazette in December of 2011. However, the U.K. group's manager interrupted the application process by requesting an extension of time to oppose registration. Currently, the U.S. registration is still being held up by the U.K. group.
The U.K. One Direction formed sometime in 2010 after its members competed together on the British television show "The X Factor." At first, they used the One Direction mark exclusively in the U.K. Since trademark rights are jurisdictional, parallel use of the same name by different music groups in different countries usually will not raise any legal issues. However, since the U.K. group entered the U.S. in early 2012, there already has been some potential confusion: a song by the California group played during a segment to promote the U.K. One Direction on NBC's Today show.
The California group's suit seeks one million dollars in damages, and a permanent injunction requiring the U.K. group to cease use of the One Direction name. The complaint names each of the U.K. band members personally, along with Syco Entertainment (a joint venture between Sony and Simon Cowell), Simco Limited (the group's manager), and Sony Music.
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