Di Reed v. Marshall et al. was a case that originated in the Southern District of Texas and made its way to the Fifth Circuit. The parties consisted of members of a vocal group known as Jade that was popular in the nineties, along with an additional singer being named as a defendant.
Jade in its original form consisted of Di Reed, Marshall, and Harris, and was able to gain some popularity before disbanding in 1995. In 2018, they talked about having a reunion tour. In preparation for the tour, they filed for a trademark registration because the original registration from the nineties had been canceled due to lack of use. That tour never happened, but Marshall and Harris went on to tour with a different singer completing the trio, Holloway.
Di Reed sued Harrison, Marshall, and Holloway for allegedly infringing the JADE trademark during the promotion of the tour that they eventually launched.
The first question for the appellate court was whether a co-owner of a trademark has a Lanham Act claim against fellow co-owners for infringement or dilution of a trademark. This was an issue of first impression in the Fifth Circuit, which concluded that the district court was correct: the Lanham Act did not allow for co-owners of a mark to sue each other over infringement or for trademark dilution.
The critical fact was that the three original singers entered into joint ownership of the JADE mark. In a joint ownership, each party owns a complete interest in the mark and can use the mark as they please, as long as they account to their co-owners. Because a trademark is supposed to identify a single commercial source, not two or more distinct owners, joint ownership is generally disfavored. Typically, there is a contract between such co-owners but there was no such contract here.
In any event, the Fifth Circuit concluded that the Lanham (Trademark) Act is intended to protect owners and consumers from imitators – that is, those who might engage in fraudulent and deceptive uses of similar trademarks. But the Act does not provide an avenue by which co-owners can sue each other for misuse of the trademark.
As for the claim of trademark dilution, even if JADE had been deemed to be a sufficiently “famous” trademark (a rather long shot, IMHO), that is something that generally surfaces when there are two distinct marks, specifically a senior, famous mark and a junior mark. Here, the claim was based on use of the exact same mark rather than competing marks. The structure of the claim – and the co-ownership of the mark at issue – eviscerated any claim for dilution.
Another blow to the plaintiff was her failure to show any damages because she could not show any lost opportunities to make money. There was nothing as a matter of law that had prevented her from licensing her rights to two new singers as part of a new trio, going on tour with them, and using the JADE trademark on that competing tour.
This is a cautionary tale to anyone considering co-ownership of a trademark. As the appellate court noted, it’s customary to have an agreement that establishes what will happen to rights in a trademark – here, the band’s name – if they ever decide not to work together again. Honoring such a quaint custom is not over-lawyering or an indication that the co-owners don’t trust each other. Rather, an agreement is there to anticipate what might go wrong. A trademark registration might sound magical, but it does not guarantee that everyone will continue to play together nicely!
