A tribute band that was sued by Earth, Wind & Fire for trademark infringement is firing back with a bold counterargument: That the famed R&B act has actually abandoned any intellectual property rights to its name.
In a court filing on Wednesday (Aug. 30), the smaller band — which calls itself Earth Wind & Fire Legacy Reunion — argued that the original group had allowed so many tribute bands to use its name without repercussion that it can no longer claim exclusive rights to it.
“Due to the unchecked third-party use of the phrase, [EW&F] has abandoned ‘Earth, Wind & Fire,’ and [the name] has lost its trademark significance,” wrote attorneys for Substantial Music Group, which operates Legacy Reunion.
The new filing listed out a dozen other tribute acts that allegedly feature “Earth, Wind & Fire” as part of their name, including “September: A Tribute to Earth, Wind & Fire” and “Let’s Groove Tonight: The Ultimate Earth, Wind & Fire Tribute Band,” as well as even simpler names like simply “Earth Wind & Fire Tribute.”
“[The band] has taken no action to enforce its purported trademark rights against any of the third-party vocal and instrument groups that have been using the phrase,” Legacy Reunion wrote in Wednesday’s filing. “The present civil action represents the first occasion on which Counter-Defendant has sought to enforce its registered trademarks against another party.”
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from Earth Wind & Fire IP, a holding company owned by Maurice White’s sons that formally owns the name.
In a March lawsuit, that company accused Legacy Reunion of trying to trick consumers into thinking it was the real Earth Wind & Fire. Though it called itself a “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who briefly played with Earth, Wind & Fire many years ago.
“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,” the group’s lawyers wrote.
Tribute acts — groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they must be clear that they are a tribute band, and they can get into legal hot water if they make it appear that they are affiliated with or endorsed by the original. In 2021, ABBA filed a similar trademark lawsuit against a band that had been touring under the name ABBA Mania, calling it “parasitic”; that suit was quickly settled after ABBA Mania agreed to stop using the name.
According to Earth, Wind & Fire’s lawyers, the use of “Legacy Reunion” was not a clear enough distinction. The lawsuit cited alleged examples of angry consumers who mistakenly bought tickets for the wrong band, including one that read, “This was not Earth Wind and Fire. NO Philip Bailey or Verdine White. It was just a band playing Earth Wind and Fire music. I purchased 3 tickets and I was very disappointed. It was truly false advertisement. I want my money back!!!!!”
Wednesday’s filing came as a so-called “answer and counterclaims” — a standard response to any lawsuit, in which a defendant like Legacy Reunion can formally deny the accusations and level their own at their opponent.
In its counterclaims, Legacy Reunion argued that the band’s lack of enforcement against other tribute bands means that its trademark to “Earth, Wind & Fire” should be formally “cancelled.”