An Earth, Wind & Fire tribute act will pay the legendary R&B group $750,000 in damages for using its trademarked name in ways that a federal judge called “deceptive and misleading.”
The payment, announced in a court filing Tuesday, will effectively end a year-long lawsuit in which the band alleged that the tribute act — “Earth, Wind & Fire Legacy Reunion” – infringed the trademark rights to the famous name by suggesting it was the real thing.
Earlier this year, the federal judge overseeing the case sided with Earth, Wind & Fire, ruling that the tribute act’s conduct had been “deceptive and misleading.” A trial had been scheduled to figure out how much Legacy Reunion would need to pay, but the two sides reached an undisclosed settlement on that question last week.
In Tuesday’s filing, the judge disclosed the total that Legacy Reunion had agreed to pay – $750,000, plus interest — a rare step following settlements, which are typically kept private. Neither side immediately returned requests for comment.
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 an entity called Earth Wind & Fire IP, a holding company controlled by Maurice White’s sons that formally owns the rights to the name.
Last year, that company filed the current lawsuit, accusing 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 had 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 at the time.
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 make clear that they are only 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.
Ruling on the case last month, Judge Federico A. Moreno said the evidence pointed “overwhelmingly” in the band’s favor. In particular, the judge cited angry social media posts and emails from fans who attended the “Reunion” shows because they thought it was the original band — proof of the kind of “actual confusion” that’s crucial evidence in a trademark lawsuit.
“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,” the judge wrote.
Following Tuesday’s order, the only remaining issue in the case is an injuction permanently banning Legacy Reunion from infringing the name. That issue will be subject to future rulings clarifying exactly what it will cover.