Musicians’ intellectual property and trademark law have intersected several times in recent years. The singers Jelly Roll and Pink are just two of the artists involved in the latest trademark cases hitting the music industry.
Jelly Roll — a Grammy-nominated country music superstar whose real name is Jason DeFord — is being sued by Jellyroll, a Pennsylvania-based wedding band, for alleged trademark infringement.
To be clear, this is a trademark case, not a copyright one.
Donald Harris, the associate dean for Academic Affairs and Diversity, Equity and Inclusion liaison at Temple University, is a law professor. When asked to clarify the difference between trademark and copyright, Harris responded as only an expert can.
“Trademark is a source identifier,” Harris said. “That’s what it protects. If you have a mark, it identifies the source from which the products or services, the goods or services come from. If it doesn’t have this source identification feature, then we don’t protect it.
“Copyrights, we’re protecting literary and artistic works, and we’re protecting the author’s right to exploit those works. So two different things, one is talking about creativity, one is talking about brand or source identification.”
If you are interested in copyright, Straight Arrow News Business Correspondent Simone Del Rosario has an in-depth report on what’s been going on with copyright law lately.
In Jellyroll v. Jelly Roll, the band, which has performed for weddings and big events along the East Coast — including for former President George W. Bush at the White House — said it has been using the name Jellyroll since 1980, obtained a trademark in 2010 and renewed it in 2019.
“In this case, Jellyroll the band has got a mark for that name for their entertainment services, singing, live music in a band and their claim is that serves as a source identifier, and that someone else coming in and using it now is going to confuse consumers,” Harris said. “And so the test for infringement is likelihood of confusion. Are consumers likely to be confused when someone else is using the mark and be confused as to the source, that it’s coming from the actual mark owner?”
The suit points to the singer being born in 1984, four years after the band started using the name. It emphasizes that the singer didn’t start using the name Jelly Roll, a nickname given to him as a child by his mother, professionally until 2010 — the same year the band got its trademark.
The band claims the singer’s infringement of the mark is creating confusion in the marketplace. But remember: this case is about likelihood of confusion — not actual confusion.
Confused? Professor Harris can help.
“What you need to show is not actual confusion, just the likelihood that consumers are going to be confused,” Harris said. “Most courts use a multi-factor test to determine whether there’s likelihood of confusion. You look at things such as the similarity of the names, the similarity of the goods, the sophistication of the consumers, whether they are in the same market, when there’s any bad faith, a number of different factors to determine this likelihood of confusion.”
One place the band said the singer is infringing on its business is in Google searches. Jellyroll claims that the band would top Google’s search index years ago. Now, however, users have to scroll through roughly 20 links to get to one about the band. Harris said this evidence falls on the suit’s claim of dilution.
“The concept with dilution is that someone else is now using the mark and it’s not likely to confuse consumers, but now we’re no longer going to be able to bring to mind just one Jellyroll,” Harris said. “So we’re diluting the significance of the original mark. And I think that that’s where they’re going with that. I think that’s also going to be a really tough cause of action to prove because in order to have a dilution cause of action, you’d have to prove that your mark is famous and that it’s not fame just in a geographic niche, you have to be famous across the country. And I’m not sure that Jellyroll the band can prove that kind of fame.”
It was another singer vs. band trademark case in 2020 when Anita “Lady A” White got into a dispute with the band Lady A, who had just changed its name that year.
Both parties sued one another after holding a Zoom meeting about the name. They eventually reached a settlement.
One particular part of the band’s suit is worth noting here, as Lady A (the band) claimed the singer never challenged the trademark before 2020, even though the band had been using Lady A as a nickname for years. It’s this argument of timing that could be on the side of Jelly Roll, the singer.
“It’s this idea of laches,” Harris said. “It’s an idea that you could have enforced your rights a lot earlier and instead you waited so there’s an unreasonable delay before enforcing your rights. And that unreasonable delay resulted in an unfair prejudice to, in this case, the singer.”
Just weeks after the Jelly Roll dispute made headlines, the singer Pink filed legal action against Pharrell Williams, claiming his plans to register a trademark for the term “P. Inc” would cause “confusion and damage her business.” The singer registered her Pink trademark in 2001.
In the suit, Pink’s attorneys said she and Williams provide “goods and services that are identical and/or closely related,” and that Williams is likely to “market and promote [his] goods through the same channels of trade and to the same consumers as [Pink].”
Williams’ team said P. Inc would be used for his business of “promoting marketing services in the field of music.”
However, it’s not always singer vs. singer or band vs. band when it comes to trademark fights in the music realm.
In fact, Williams already faced legal action against his trademark a month before Pink came into the picture, and it wasn’t from another singer. It was from Victoria’s Secret.
The retailer also claimed consumers could be confused since the company has been using the term “PINK” in its clothing line for decades. In its suit, Victoria’s Secret said Williams’ trademark is “highly similar to, and is the phonetic equivalent of” its “PINK marks.”
A clothing company can sue a singer. How about a cereal company? That happened, too.
In 2022, the marketers at Post created a line of portable cups of some of its most sought-after cereals like Honey Bunches of Oats and Fruity Pebbles, named them “OK Go!” and thought the company had a hit on its hands.
What Post didn’t realize was members of the band OK Go, who had several hits, were not pleased.
The band’s attorney sent Post a cease-and-desist letter, saying the cereal’s new line would “suggest to consumers that OK Go (the band) is endorsing Post’s products.” The move serves as an example of the band trying to show a likelihood of confusion.
An attorney for Post disagreed with the band’s rhetoric, saying rock music and breakfast cereal were “clearly unrelated” and “ok go” was a common term used by many other companies.
The dispute led to Post filing suit against the band. Post said it had offered to pay OK Go to resolve the issue without litigation, despite the cereal company not finding any merit in the ban, leading the company to have no other choice but to file the lawsuit.
OK Go vowed to fight the “big corporation,” but a few months later, both parties reached a confidential settlement. The band released a statement saying Post agreed to withdraw its application to register “OK Go!” as a trademark.
When it comes to trademark lawsuits, Harris said it is much more difficult for the suing party to claim that likelihood of confusion when the alleged violator is in a completely different industry.
“The two factors that play the biggest role are how similar the marks are and then how similar the products are,” Harris said. “So if you have someone using OK Go for a band and OK Go for cereal, are consumers really likely to believe that they’re coming from the same source? Highly unlikely. But if you have Jellyroll the band and Jelly Roll the singer you know now they’re both in entertainment, they’re both singing, it’s both about music, they’re using the exact same name and it seems to me to get much more likely that consumers are likely to be confused here, as opposed to using the exact same name on wildly different products or services.”
So will the Jelly Roll and Pink lawsuits follow the same tune as the Lady A and OK Go battles — with settlements? Harris said most cases usually do settle, which could be music to the ears of all parties involved.
