A lawsuit has been filed in the federal court of Los Angeles, alleging that UK boy band One Direction have infringed the trade mark rights of a US band of the same name.
The UK One Direction have enjoyed substantial commercial success in both the UK and the US since being formed as part of the TV show X Factor in 2010. They are managed by Simon Cowell and his associated companies. The Californian pop-rock band claim they were formed in 2009, and have recorded two albums. However, they have not enjoyed the same international success as their namesake.
The US band claim they are entitled to over $1 million (roughly £630,000) in damages, as well as three times the profits the UK band has made to date. They also want an injunction to stop the UK band using the name in the future.The US band applied for a US trade mark for the name in February 2011, but the registration process has yet to be completed. Simco Limited (one of Cowell’s companies) has successfully registered trade marks in the EU in respect of the name One Direction and the graphic “1D”, which is used to market the band. Simco’s application for the word mark was filed in December 2010 and granted in January 2012.
Whilst these two marks are enforceable in all member states of the European Union, they do not appear to be protected under US law. Simco Limited applied to register the same two trade marks in the US in August 2011. The US band have claimed that the management of the UK band were aware that the name had already been registered in the US when entering the US market, and had “wilfully ignored” this fact.
The US band have claimed they are suffering “substantial confusion and substantial damage” as a result of the UK band using the name. They allege that there is already some indication that there may be confusion between the two bands. The US TV programme “Today” introduced a feature on the UK band with part of a song which was written and recorded by the US group.
Disputes regarding band names are not uncommon. For example, Pink Floyd were originally known as “The Tea Set” but, as another band was already performing under the name, they changed to the much more famous name. Indeed, it is not the first time that a band formed on X Factor has had such an issue. In 2011, future X Factor winners Rhythmix changed their name to Little Mix following a complaint by a UK based music charity named Rhythmix.
A spokesman for Syco, the UK group’s record label, has stated that the management of the band tried to resolve the situation amicably when it first came to light, but now it has “no choice” but to defend the lawsuit and the UK band’s right to use the name.
The manager of the US band has vowed not to back down, so it will be interesting to see how the situation develops.