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Trademark a Band Name: BLACK SABBATH Ozzy Osbourne v. Anthony Iommi
© Cheryl Hodgson 2009 | Posted on June 15, 2009
Ozzy Osbourne isn’t content to just watch Top of the Pops from his mansion in Jordans, outside of London; he wants his name back!
Osbourne recently launched a lawsuit and media blitz over rights in the BLACK SABBATH name against former band mate Anthony Iommi. The media thus far is mostly a “We love Ozzy Best Fest.” Rolling Stone-Investigative Journalism-Are you kidding? As a trademark lawyer with a music industry background, I have litigated and registered dozens of band names. This charade once again serves as a reminder to successful trademark owners, even aging rock stars, “It’s all about the brand stupid.” Osbourne is claiming rights to 50% of the name and merchandising royalties garnered by former band mate Iommi, who registered BLACK SABBATH at the U.S. Trademark Office in 2000 as well as in Europe The case is likely to reach settlement, encouraged by the court, since judges typically don’t like to see these types of facts in their courtroom. Then there is the cost factor. Does Iommi have the staying power for a costly legal battle, almost always an issue in group name disputes? If he’s collecting the royalties, he may stick it out. In group name disputes, one party usually has the facts, and the other the money. Guess which one typically prevails?
Ozzy acknowledges he ceased to perform or use BLACK SABBATH from 1980 to 1996, returning in 1997 when the two did a reunion tour. Iommi continued use the name during those years, performing in small venues, struggling to keep the name alive. That’s a very strong indication of abandonment of rights by Ozzy, who claims immaculate resurrection based upon his talented wife’s management skills by reuniting the group in 1997. But on what terms?
Osbourne’s official statement reads:
Throughout the last 12 years, it was my management representatives who oversaw the marketing and quality control of the “Black Sabbath” brand through Ozzfest, touring, merchandising and album reissues. The name “Black Sabbath” now has a worldwide prestige and merchandising value that it would not have had by continuing on the road it was on prior to the 1997 reunion tour.
A reading of the Osbourne complaint through the eyes of a veteran of these types of disputes reveals yet another text book example of what not to do. It never ceases to amaze me how little importance successful artists ascribe to protecting and managing a valuable asset, the brand. Over the last 30 years, Ozzy either failed to heed proper advice, or neglected to engage expert trademark advice when he should have. That’s not to say Ozzy doesn’t raise some good points in the allegations of his lawsuit.
Let’s review the following facts, how a lawsuit could have been avoided, and some of the issues which the judge will need to consider:
Why did the group not register the name years ago? Yes, sex, drugs and rock and roll is fun but ignoring the ownership of a valuable trademark for 30 years is a bit much for anyone. The facts show the first to give a darn was Iommi, who stood up and paid to register the name.
Ozzy’s departure of the group in 1980. When Ozzy left in 1980, was there an agreement as to who owned the name? According to the complaint, Ozzy says he signed nothing giving up rights. However, that is not necessarily determinative. Under U.S. law for example, when a group operates as a partnership, and absent a written agreement, leaving band members normally cease to have rights in the name, with remaining members retaining rights. This is because the name is considered a partnership asset, and specific assets remain with the partnership. Absent an agreement, Iommi may well have become the sole owner during the years he continued to perform in out of the way clubs under the name without Ozzy. (There is some allegation by Iommi in another case that Ozzy signed away his rights… hmmm?)
Ozzy returned to perform with Iommi in 1997. Iommi registered the name in 2000 with U.S. Trademark Office, while Ozzy and Sharon have owned the domain www.blacksabbath.com since 1998.
We are not told on what terms the two reunited in 1997 but here are a few factual questions that must be resolved before arriving at the finish line.
- Why would parties fail to discuss ownership of the name before embarking upon the reunion tour? This much we know. They were splitting royalties 50-50 until Iommi sued the licensee recently claiming full ownership. According to one article, Iommi claims he is the sole consistent member for 41 years, and Osbourne did in fact relinquish rights to him. Access Hollywood
- While Ozzy claims great effort to control the brand quality since 1997, on what terms did he suddenly get 50% of the name back upon his return? Ozzy is upset he’s not getting his 50%. However, is the 50% split evidence that Iommi considered Ozzy half owner, or merely an accommodation to share the income 50%, with Iommi being the owner of the brand?
- Has Ozzfest been sharing 50% of its sales of merchandise at the site it owns with Iommi? (We checked the site and could find little if any activity despite allegations in Ozzy’s complaint of great sales there).
Failure to Police. Trademark owners are required to police their rights and normally monitor the trademark office for infringing filings. A valid registration on the books of the Trademark Office left unchallenged for nine years raises the question, exactly what was the management team doing to protect the brand? More important, for his allegations of taking care of the brand, Ozzy’s complaint alleges he did not know Iommi had registered the name until 2008! (Oops, that reality show thing really did get in the way of Black Sabbath affairs). Where has Ozzy’s legal team been for the last nine years?
The only active site we found selling merchandise, while well intentioned is actually an infringement of rights in the trademark, www.black-sabbath.com, owned by die hard fan Joe Sielger since 1996!
Registration of a domain is not a substitute for a federal trademark. While Ozzy’s registration of the domain in October 1998 may be some evidence of use, that use may or may not be an infringement of the rights of Iommi; and it is unclear when the site actually launched. As of today, there is a page to capture emails, but no active store for merchandise and a “new site coming soon” sign on the landing page.
Right of Publicity, Name Image & Likeness. Ozzy likely has a valid claim for use of his personal name, image and likeness (separate and apart from the issue of ownership of the BLACK SABBATH mark), if Iommi has been exploiting Ozzy’s name, image, and/or likeness without consent and for compensation. Record companies routinely have the right to the use of name, image and likeness for purposes of sales of recordings, but use of name, images and likeness for endorsements or other commercial uses typically remain with the individual.
I never bet on federal judges. It can be like betting on a thoroughbred gone mad on any given day. Let’s bet the lawyers cut a deal, and an expensive one at that.
For the readers and the band brand owners that follow, do me a favor, and get it right. It’s not difficult, unless you are Ozzy and Iommi.
Technorati Tags: Add new tag, band name, black sabbath, brand management, Branding, Entertainment Law, Intellectual Property, Music Law, right of publicity, trademark registration
8 Comments »
June 15th, 2009 at 9:48 pm
This is too much fun. The intellectual equivalent of staring at a roadside accident. Thanks for showing the dispute from so many angles. And thanks as well for “I never bet on federal judges. It can be like betting on a thoroughbred gone mad.” Wonderful!
June 16th, 2009 at 12:09 am
It is the best post that i have read on this topic in a long, long time, many thanks for telling us the truth! congratulations!!
June 16th, 2009 at 7:01 am
Thanks, Scott. This scenario was too much fun to let pass, and the lessons to be learned too great. It’s like required reading for anyone who wants to understand music group name disputes. It’s all there except for jail time in Mexico which was reserved for Montez de Durango.
June 17th, 2009 at 6:49 pm
Cheryl
thanks for this excellent article. Sharon and Ozzy are sophisticated players. I think they knew that Iommi registered the TM, but they played dumb because Ozzy had in fact walked away from B.S. Sounds like a case of willful ignorance.
June 17th, 2009 at 8:30 pm
I appreciate your comment. Yes, I agree about Sharon & Ozzy being sophisticated. A case of willful ignorance is also called laches, a defense in equity meaning you sat on your rightful a.. for too long and can not now complain.
June 18th, 2009 at 7:16 am
Hi Cheryl,
I am very happy to get in touch with you after our brief but fun meeting during INTA in Seattle. Moreover, it is great to read your comments that show, without loosing the fun, a unique expertise in this fascinating area, please keep them coming.
Greetings from Argentina!
June 23rd, 2009 at 7:07 am
Very interesting and well-done article. As to the comment at the end — “I never bet on federal judges. It can be like betting on a thoroughbred gone mad on any given day.” — AMEN! Even many supposedly smart federal judges seem just not to “get” trademark law, making it almost impossible to advise clients about outcome possibilities.
June 23rd, 2009 at 12:20 pm
Thanks for the comments and keep reading! Yes, I can tell you’ve too have placed a client’s trademark future on the line with the federal judiciary. Bless them!