Band-Name Fights May Trigger Lengthy Battles

The recent high-profile litigation over rights to 'Supernova' was the latest example of the common hot-button issue of who may ex-ploit a band's name. The 'Super-nova' dispute was settled with the original pop-punk group of that name agreeing that the marquee band from the CBS-TV talent-series will be able to perform as 'Rock Star Supernova.' In 2004, South Carolina became the first state to enact a 'Truth in Musical Advertising' statute to regulate the use of music-group names, at least in live performances. Since then, at the urging of the Vocal Group Hall of Fame, several other states ' including Connecticut, Illinois, Pennsylvania and North Dakota ' have enacted similar laws. The goal of these statutes generally is to prevent the 'false, deceptive or misleading affiliation, connection or association' between a recording group and a performing group. But issues of contractual or service-mark rights may need to be resolved before a 'Truth in Musical Advertising Statue' may be enforced.

Sorting out contractual claims to band names can be a messy and sometimes lengthy. The nearly four-decade fight over the name 'Moby Grape,' a 1960s San Francisco rock group, is a case in point. The band formed in 1966 but released its last studio album with some original members in 1971. It wasn't until July 2006 that the California Court of Appeal ruled that the band, rather than the group's original manager, Matthew Katz, owned the Moby Grape name. Lewis v. Katz, A111654.

The five members of the music group had signed management and other contracts with Katz in 1966, after band members Skip Spence and Bob Mosley thought up the name 'Moby Grape.' Later that year, the parties executed an addendum that stated in part: 'It is understood and agreed that the name 'MOBY GRAPE' is the property of Matthew Katz. The undersigned [band member] has no ownership right, title, or interest in and to the name 'MOBY GRAPE' and he is entitled to utilize the same, only pursuant to the license and consent of Matthew Katz[,] which may be revoked and cancelled at any time.'

Considered a band with great potential, Moby Grape signed to CBS Records but never achieved significant popularity among record buyers. In 1967, the band members notified Katz that they were rescinding their agreements with him and, in 1969, filed a complaint with the California Labor Commissioner challenging their contracts with Katz ' including for alleged violations of the state's Talent Agencies Act, Calif. Labor Code Sec. 1700 et seq., which requires parties who procure employment for artists to be licensed by the state. (The current language of the law doesn't mandate a license for obtaining a recording contract for an artist.)

In 1970, the labor commissioner decided: 'Katz, independently and doing business as MATTHEW KATZ PRODUCTIONS and AFTER YOU PUBLISHING COMPANY, acted in the capacity of an unlicensed artists' manager and, therefore, his contracts with [the band members] are void for failure of said respondent to comply with Sections 1700 to 1700.46 of the Labor Code.' Then, in 1973, an attorney who represented Moby Grape's then-manager (and producer) David Rubinson, executed a settlement with Katz that purportedly gave the former manager Moby Grape's publishing and ownership of the band name. None of the band members had signed the settlement agreements.

The band sued Katz in 1994, and the San Francisco Superior Court granted summary judgment setting the so-called settlement aside. The California Court of Appeal affirmed. But Katz and the band sued each other in additional suits. Then in 2002, the trial court upheld the Labor Commissioner's 1970 ruling and the court of appeal affirmed. In addition, the band's claims against Katz, including for monies he allegedly still owed them, proceeded to trial. The trial judge ruled that the band owned the 'Moby Grape' name as well as the rights to the band's recordings, performances and songs. But the court found that Katz committed no torts against the group and that the band wasn't entitled to attorney fees under the 1966 management contracts, considering that the Labor Commission had voided those agreements.

Band Members Not Employees

Katz argued on appeal that he owned the band name because Moby Grape's members worked for him as employees. The court of appeal noted in an unpublished opinion, however:

'[T]he band's musical performances and albums were clearly a distinct occupation and the kind of occupation not done in a particular location or under the supervision of an individual. Indeed, composing and playing music is generally a creative process that is constantly changing as a result of the band members' processes. Moreover, this 'work' requires special skill.

'Further, the management contracts between the band members and Katz specified that the band was hiring the services of Katz as an independent contractor. ' Katz's argument that [he was the employer] is extremely weak. He cites testimony by a witness that Katz put the band together and that Katz had asked this witness to acquire the facility for the band members to showcase their talent. This does not establish that Katz had control over the band members, but merely shows that he was carrying out the services for which he had contracted. Katz also cites [Grape member Peter] Lewis's testimony that Katz provided an amplifier and microphone as evidence that he supplied the instrumentalities or tools of the work. Again, this evidence does not establish anything other than Katz was performing services under the management contract and there is no evidence that he furnished the band with musical instruments.'

As for Katz's claim of continuous use of the band name, the court of appeal emphasized: 'Evidence presented at trial established that in September 1967 the band members notified Katz that they were rescinding their contracts with him. During that same period, the evidence established that Rubinson produced the band's second album; he later became the band's manager. Evidence also showed that the name Moby Grape was associated with the band as the album covers featuring the Moby Grape had the names and picture of the band members. Further, the Labor Commissioner voided the contracts with Katz, including the addendum to the management contracts, which had provided Katz with the right to the name Moby Grape. Thus, the evidence supported a finding that Katz did not have continuous use or control of the name Moby Grape after 1967. ' Katz may have continued to market and use the name Moby Grape, but that was not done legally.'

More than anything, this case demonstrates the ongoing value that can attach even to the names of bands that have broken up years before. Perhaps the ultimate irony of the decades-long Moby Grape fight may have been, to quote the Court of Appeal, that Grape members Bob Mosley and Peter Lewis 'testified that [at the start] Katz did not like the name Moby Grape and suggested other names.'

Counsel of record: Glendon William Miskel of Sausalito, CA's Johnson & Miskel for the band. Gregory Moore Ingerson of Redondo Beach and Malibu, CA, for Katz.

The recent high-profile litigation over rights to 'Supernova' was the latest example of the common hot-button issue of who may ex-ploit a band's name. The 'Super-nova' dispute was settled with the original pop-punk group of that name agreeing that the marquee band from the CBS-TV talent-series will be able to perform as 'Rock Star Supernova.' In 2004, South Carolina became the first state to enact a 'Truth in Musical Advertising' statute to regulate the use of music-group names, at least in live performances. Since then, at the urging of the Vocal Group Hall of Fame, several other states ' including Connecticut, Illinois, Pennsylvania and North Dakota ' have enacted similar laws. The goal of these statutes generally is to prevent the 'false, deceptive or misleading affiliation, connection or association' between a recording group and a performing group. But issues of contractual or service-mark rights may need to be resolved before a 'Truth in Musical Advertising Statue' may be enforced.

Sorting out contractual claims to band names can be a messy and sometimes lengthy. The nearly four-decade fight over the name 'Moby Grape,' a 1960s San Francisco rock group, is a case in point. The band formed in 1966 but released its last studio album with some original members in 1971. It wasn't until July 2006 that the California Court of Appeal ruled that the band, rather than the group's original manager, Matthew Katz, owned the Moby Grape name. Lewis v. Katz, A111654.

The five members of the music group had signed management and other contracts with Katz in 1966, after band members Skip Spence and Bob Mosley thought up the name 'Moby Grape.' Later that year, the parties executed an addendum that stated in part: 'It is understood and agreed that the name 'MOBY GRAPE' is the property of Matthew Katz. The undersigned [band member] has no ownership right, title, or interest in and to the name 'MOBY GRAPE' and he is entitled to utilize the same, only pursuant to the license and consent of Matthew Katz[,] which may be revoked and cancelled at any time.'

Considered a band with great potential, Moby Grape signed to CBS Records but never achieved significant popularity among record buyers. In 1967, the band members notified Katz that they were rescinding their agreements with him and, in 1969, filed a complaint with the California Labor Commissioner challenging their contracts with Katz ' including for alleged violations of the state's Talent Agencies Act, Calif. Labor Code Sec. 1700 et seq., which requires parties who procure employment for artists to be licensed by the state. (The current language of the law doesn't mandate a license for obtaining a recording contract for an artist.)

In 1970, the labor commissioner decided: 'Katz, independently and doing business as MATTHEW KATZ PRODUCTIONS and AFTER YOU PUBLISHING COMPANY, acted in the capacity of an unlicensed artists' manager and, therefore, his contracts with [the band members] are void for failure of said respondent to comply with Sections 1700 to 1700.46 of the Labor Code.' Then, in 1973, an attorney who represented Moby Grape's then-manager (and producer) David Rubinson, executed a settlement with Katz that purportedly gave the former manager Moby Grape's publishing and ownership of the band name. None of the band members had signed the settlement agreements.

The band sued Katz in 1994, and the San Francisco Superior Court granted summary judgment setting the so-called settlement aside. The California Court of Appeal affirmed. But Katz and the band sued each other in additional suits. Then in 2002, the trial court upheld the Labor Commissioner's 1970 ruling and the court of appeal affirmed. In addition, the band's claims against Katz, including for monies he allegedly still owed them, proceeded to trial. The trial judge ruled that the band owned the 'Moby Grape' name as well as the rights to the band's recordings, performances and songs. But the court found that Katz committed no torts against the group and that the band wasn't entitled to attorney fees under the 1966 management contracts, considering that the Labor Commission had voided those agreements.

Band Members Not Employees

Katz argued on appeal that he owned the band name because Moby Grape's members worked for him as employees. The court of appeal noted in an unpublished opinion, however:

'[T]he band's musical performances and albums were clearly a distinct occupation and the kind of occupation not done in a particular location or under the supervision of an individual. Indeed, composing and playing music is generally a creative process that is constantly changing as a result of the band members' processes. Moreover, this 'work' requires special skill.

'Further, the management contracts between the band members and Katz specified that the band was hiring the services of Katz as an independent contractor. ' Katz's argument that [he was the employer] is extremely weak. He cites testimony by a witness that Katz put the band together and that Katz had asked this witness to acquire the facility for the band members to showcase their talent. This does not establish that Katz had control over the band members, but merely shows that he was carrying out the services for which he had contracted. Katz also cites [Grape member Peter] Lewis's testimony that Katz provided an amplifier and microphone as evidence that he supplied the instrumentalities or tools of the work. Again, this evidence does not establish anything other than Katz was performing services under the management contract and there is no evidence that he furnished the band with musical instruments.'

As for Katz's claim of continuous use of the band name, the court of appeal emphasized: 'Evidence presented at trial established that in September 1967 the band members notified Katz that they were rescinding their contracts with him. During that same period, the evidence established that Rubinson produced the band's second album; he later became the band's manager. Evidence also showed that the name Moby Grape was associated with the band as the album covers featuring the Moby Grape had the names and picture of the band members. Further, the Labor Commissioner voided the contracts with Katz, including the addendum to the management contracts, which had provided Katz with the right to the name Moby Grape. Thus, the evidence supported a finding that Katz did not have continuous use or control of the name Moby Grape after 1967. ' Katz may have continued to market and use the name Moby Grape, but that was not done legally.'

More than anything, this case demonstrates the ongoing value that can attach even to the names of bands that have broken up years before. Perhaps the ultimate irony of the decades-long Moby Grape fight may have been, to quote the Court of Appeal, that Grape members Bob Mosley and Peter Lewis 'testified that [at the start] Katz did not like the name Moby Grape and suggested other names.'

Counsel of record: Glendon William Miskel of Sausalito, CA's Johnson & Miskel for the band. Gregory Moore Ingerson of Redondo Beach and Malibu, CA, for Katz.