MIAMI — A federal judge ruled in favor of R&B legends Earth, Wind & Fire on Monday, deciding that a tribute band had infringed on the group’s name and trademark.
In Miami, U.S. District Judge Federico A. Moreno ruled that a group calling itself “Earth, Wind & Fire Legacy Reunion” used the group’s name in a “deceptive and misleading” fashion, the Sun-Sentinel reported.
The alumni group did not have any original members of the band in its lineup. The band claimed that fans were buying tickets to their shows in the mistaken belief that they were going to watch the original lineup, according to the newspaper.
“It is not a far cry to think that an average consumer looking for an Earth, Wind & Fire concert would believe that they could acquire that experience from either plaintiff or defendants,” Moreno wrote.
Earth Wind & Fire wins lawsuit to stop alumni band from using name and trademark https://t.co/dvcEecK7TA
— South Florida Sun Sentinel (@SunSentinel) March 5, 2024
The original group had a No. 1 hit on Billboard’s Hot 100 in 1975 with “Shining Star” and had six other hits in the top 10, according to Billboard. Other hits in the top 10 include “September,” “After the Love Has Gone,” “Sing a Song” and “Boogie Wonderland.”
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016. Longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White, continue to operate under a license called Earth Wind & Fire IP, Billboard reported. It is a holding company controlled by Maurice White’s sons that formally owns the rights to the name.
In March 2023, the White sons sued two promoters -- Georgia-based Substantial Music Group LLC and Indiana-based Stellar Communications Inc., according to the Sun-Sentinel. They argued that the promoters were hosting concerts by a group of one-time side musicians for Earth, Wind & Fire who were using the Legacy Reunion label, the newspaper reported.
“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 in their original lawsuit, according to Billboard.
Tribute acts are legally allowed to operate, but must make it clear that they are not the original group, the music news website reported.
According to listings on the Ticketmaster website, the act is scheduled to perform under the infringing name in Charlotte, North Carolina, on March 14, There are dates scheduled for Evansville, Indiana, and Bloomington, Illinois, in May.
“While the court understands there is dispute on how prominent of a role the musicians performing in (Legacy Reunion) played in the Earth, Wind & Fire group, defendants advertisements draw a close, unmistakable association with Earth, Wind & Fire to a degree unwarranted by the historical record,” the judge wrote. “Regardless of if defendants’ musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main (or most prominently known) members of the band would be performing.”
A spokesperson for Substantial Music Group LLC did not immediately respond to emailed questions about whether the group would change its name, the Sun-Sentinel reported. A penalty hearing is scheduled the week of May 28.
In a statement, David I. Greenbaum, the attorney for Earth Wind & Fire, said, “We appreciate that the court decided in our client’s favor on liability for trademark infringement. We await the trial on damages.”
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