A federal decide dominated Wednesday (Jan. 31) {that a} tribute band sued by Earth, Wind & Fireplace for trademark infringement can proceed to attempt to show its daring counterargument: That the legendary R&B group deserted the mental property rights to its title.

Confronted with a lawsuit for utilizing the title “Earth Wind & Fire Legacy Reunion” at concert events, the smaller act argued final summer time that the unique group had allowed loads of different tribute bands to make use of its title with out repercussion — so many, in reality, that it might not declare any unique authorized rights to it.

Legal professionals for Earth, Wind & Fireplace have known as that argument meritless and demanded that it’s dismissed, however in a call Wednesday, Choose Federico A. Moreno refused to take action. Although he mentioned Legacy Reunion may finally discover it “difficult” to show that “abandonment” argument, he mentioned that they had “done enough” to keep away from having it tossed out solely within the early phases of the case.

Earth, Wind & Fireplace 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 underneath a license from an entity known as Earth Wind & Fireplace IP, a holding firm owned by Maurice White’s sons that formally owns the title.

In a March lawsuit, that firm accused Legacy Reunion of making an attempt to trick shoppers into considering it was the actual Earth Wind & Fireplace. Although it known as itself a “Reunion,” the lawsuit mentioned the tribute band contained only some “side musicians” who briefly performed with Earth, Wind & Fireplace a few years in the past.

“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 attorneys wrote.

Tribute acts — teams that completely cowl the music of a selected band — are legally allowed to function, they usually typically undertake names that allude to the unique. However they should be clear that they’re a tribute band, they usually can get into authorized scorching water in the event that they make it seem that they’re affiliated with or endorsed by the unique. In 2021, ABBA filed an identical case towards a what it known as a “parasitic” band known as ABBA Mania.

Going through the lawsuit filed by Earth, Wind & Fireplace, Legacy Reunion filed a response in August that listed out a dozen different tribute acts that allegedly function “Earth, Wind & Fire” as a part of their title. Legacy Reunion argued that for the reason that authentic band had “taken no action to enforce its purported trademark rights,” it had legally deserted them.

“Due to the unchecked third-party use of the phrase, [EW&F] has abandoned ‘Earth, Wind & Fire,’ and [the name] has lost its trademark significance,” wrote attorneys for Substantial Music Group, which operates Legacy Reunion.

In a response fired again in September, attorneys for Earth, Wind & Fireplace mentioned the band had very clearly not deserted its rights to the title, including that the “bare allegations” made by Legacy Reunion, mixed with only a “handful” of different tribute bands, falls “woefully short” of what they would want to show.

Wednesday’s choice by Moreno rejected Earth, Wind & Fireplace’s movement to dismiss the abandonment argument, nevertheless it doesn’t imply that Legacy Reunion has evaded the band’s infringement allegations. On the contrary, the smaller group should now really show that argument in future proceedings.

An legal professional for the Earth, Wind & Fireplace didn’t instantly return a request for remark.