Former members of the 1970s hardcore punk band Black Flag, who faced shutting down their reunion tour after a founding member sued over trademark infringement, can play on.
U.S. District Judge Dean Pregerson in Los Angeles ruled against guitarist Greg Ginn, who claims former members of the band are illegally performing Black Flag’s songs and using the iconic Black Flag logo as part of the tour. The judge on October 8 declined to issue a preliminary injunction.
Pregerson said he wasn’t persuaded that Ginn can show a “protectable interest in either the Black Flag name or the Logo,” neither of which is registered to him or his licensing company, SST Records Inc.
The judge noted that the Black Flag logo has appeared illegally on merchandise all over the world and that the logo of the competing band, which goes by the name Flag, includes explanatory language that distinguishes it from Black Flag’s. (The former members of Black Flag are playing under the name Flag.)
Cheryl Hodgson, an attorney for Ginn and SST Records, didn’t return a call for comment. Jonathan Pink, counsel at Bryan Cave in Irvine, Calif., who represents the former members of Black Flag, said he was pleased with the judge’s decision.
“Where this leads us is we can perform, we can use any marks we choose to use,” said Pink, who leads the firm’s entertainment and media team. “SST and Ginn don’t own these marks and there’s no likelihood of success on the merits of their lawsuit.”
Pink said the plaintiffs, to resolve the dispute, are “going to have to sweeten the pot from what they currently suggested. They never should have filed this lawsuit.”
Black Flag was founded in 1976 in Hermosa Beach, Calif., by guitarist Ginn and singer Keith Morris. The band, which released 18 albums, has a logo that features four uneven black vertical bars.
Ginn quit his own band in 1986, ending performances. Over the years, he and some of the other band members performed occasional shows but also found themselves in court against one another.
In August, Ginn sued several former band members performing this year as Flag, whose name depicts the Black Flag logo. Ginn, meanwhile, launched his own reunion tour this year under the name Black Flag. He and his recording studio, which claims to own the rights to all things Black Flag, claim the Flag band members are illegally using the trademark. He also accused two defendants of fraudulently filing an application for a trademark for the Black Flag logo in 2012.
“As a result of Defendants’ conduct, there are two competing bands playing Black Flag’s songs and using the Logo to promote their shows,” Hodgson, of Hodgson Legal in Santa Monica, Calif., wrote in the request for a preliminary injunction. “With another, competing group touring touting the Black Flag logo and association, plaintiff Ginn is losing business and fans that might otherwise attend his shows.”
The Flag musicians, in a counterclaim against Ginn, insist that the original partnership of Black Flag never dissolved, even though the band stopped performing. They assert their own fraud allegations against Ginn and claim they never assigned the licensing rights to SST Records.
“To say there could be confusion between the two bands is laughable,” Pink wrote in court papers. “With Flag quickly filling venues across the country and a new fan base growing quicker by the day, it is clearly Ginn’s palpable jealousy of Flag’s success that has led to this lawsuit.”
The former band members named as defendants are: Morris, who left the band in 1979; Gary McDaniel, also known as Chuck Dukowski, who left the band in 1983 but remained a partner with Ginn in SST for several years; Henry Garfield, known professionally as Henry Rollins, who performed in the band from 1981 to 1986; Dennis “Dez” Cadena, who joined the band in 1980 and left three years later; John William Stevenson, who goes by Bill Stevenson and was part of the band from 1982 to 1985; and Stephen Patrick O’Reilly, who goes by Stephen Egerton, a member of Flag who never performed with Black Flag.
Amanda Bronstad is a reporter with The National Law Journal, a Recorder affiliate.