A London based tribute act that has performed Pearl Jam songs since 2016 has announced that they will change their name to “Legal Jam”, after receiving a cease and desist letter from Pearl Jam’s lawyers.
The story acts as a useful reminder that use of a tribute act name that is too similar to the original band name or performer name may constitute trade mark infringement (and / or passing off).
It also acts as an example of P.R. considerations that should be borne in mind by well-known brand owners seeking to prevent use by smaller third parties, especially where that use is done in the context of paying tribute to the brand owner.
Alleged confusion and damage
Pearl Jamm’s Facebook post of 18 January 2021 states that they received legal letters from Pearl Jam’s lawyers, alleging confusion between Pearl Jam and Pearl Jamm, and damage to the Pearl Jam brand.
The post argues that none of the tribute act’s fans has ever confused the tribute act with the original band. Due to the nature of tribute acts, which operate on different commercial scales, playing at smaller venues for example, it is understandable that the tribute act has taken this point of view.
However, a likelihood of consumer confusion and damage to the brand owner’s trade mark are key elements of the tests for trade mark infringement. It is arguable that in this particular case, a member of the public on seeing PEARL JAMM in advertisements for a gig, as part of a domain name, or in use on merchandise could confuse PEARL JAMM with PEARL JAM. Furthermore, use of PEARL JAMM could be seen to take advantage of the significant reputation of the original PEARL JAM trade mark. The public might also believe that PEARL JAM has endorsed, or is associated with, PEARL JAMM.
Tips for tribute acts and other homage based brands
The take home message is that sailing too close to the wind with the name of your tribute act, means that there is a risk that your use will infringe trade mark rights owned by the original brand owner (and / or amount to passing off).
In this particular case, the original band name is contained within the tribute act name and the only addition is the extra M. That high degree of similarity would have been key to the claims made by PEARL JAM.
Many tribute acts seek to avoid the risk of infringing trade mark rights in original band or performer names by alluding to the original band name, whilst still making it clear that they are not connected with them. Examples include tribute bands like No Way Sis, The Faux Fighters and Nearly Dan. These names make it clear who the act is a tribute to, but arguably minimise the risk of confusion amongst the public.
In addition to the choice of name, tribute acts should also avoid using similar logos or identical stylisations as those used by original bands or performers, as various intellectual property rights (such as copyright and trade mark rights) can also subsist in these and could be relied upon to prevent use of that nature.
Large brand owners should always bear in mind any possible negative P.R. implications when considering the nature of an approach to smaller parties about use they are unhappy about. This is especially in instances where that use is in homage to the original brand owner, and in the music industry where “ethics” are a cornerstone of music fans’ decisions to follow particular acts.
Pearl Jamm announced that they would change their name to Legal Jam on 20 January, so clearly the letter sent by Pearl Jam’s lawyers achieved the desired result.
However, despite the change of name, has Pearl Jam’s approach had a negative impact on the reputation of the band and its brand? The tribute act’s response reflected its disappointment to the tone of the letters received, especially given the severe impact of the Covid-19 pandemic upon the band’s ability to generate income. This garnered a lot of support online, primarily from fans of both the tribute act and the original band and there was a large press response to the story too.
If you are adopting a name in tribute or homage to an original band or performer, then it is important to consider the possible infringement risk associated with the same given any trade mark rights owned by the original brand owner.
It is also important for well-known brand owners to bear in mind the commercial and P.R. implications associated with any approach to third parties about use they do not sanction, especially where such use is in tribute or homage to that brand owner.