A tribute band that was sued by Earth, Wind & Hearth for trademark infringement is firing again with a daring counterargument: That the famed R&B act has truly deserted any mental property rights to its title.

In a court docket submitting on Wednesday (Aug. 30), the smaller band — which calls itself Earth Wind & Hearth Legacy Reunion — argued that the unique group had allowed so many tribute bands to make use of its title with out repercussion that it could possibly not declare unique rights to it.

“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.

The brand new submitting listed out a dozen different tribute acts that allegedly function “Earth, Wind & Fire” as a part of their title, together with “September: A Tribute to Earth, Wind & Fire” and “Let’s Groove Tonight: The Ultimate Earth, Wind & Fire Tribute Band,” in addition to even less complicated names like merely “Earth Wind & Fire Tribute.”

“[The band] has taken no action to enforce its purported trademark rights against any of the third-party vocal and instrument groups that have been using the phrase,” Legacy Reunion wrote in Wednesday’s submitting. “The present civil action represents the first occasion on which Counter-Defendant has sought to enforce its registered trademarks against another party.”

Earth, Wind & Hearth 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 below a license from Earth Wind & Hearth 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 attempting to trick shoppers into pondering it was the true Earth Wind & Hearth. Although it known as itself a “Reunion,” the lawsuit mentioned the tribute band contained only some “side musicians” who briefly performed with Earth, Wind & Hearth 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 legal professionals 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 have to 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 the same trademark lawsuit towards a band that had been touring below the title ABBA Mania, calling it “parasitic”; that swimsuit was shortly settled after ABBA Mania agreed to cease utilizing the title.

In accordance with Earth, Wind & Hearth’s legal professionals, using “Legacy Reunion” was not a transparent sufficient distinction. The lawsuit cited alleged examples of indignant shoppers who mistakenly purchased tickets for the flawed band, together with one which learn, “This was not Earth Wind and Fire. NO Philip Bailey or Verdine White. It was just a band playing Earth Wind and Fire music. I purchased 3 tickets and I was very disappointed. It was truly false advertisement. I want my money back!!!!!”

Wednesday’s submitting got here as a so-called “answer and counterclaims” — an ordinary response to any lawsuit, through which a defendant like Legacy Reunion can formally deny the accusations and stage their very own at their opponent.

In its counterclaims, Legacy Reunion argued that the band’s lack of enforcement towards different tribute bands implies that its trademark to “Earth, Wind & Fire” must be formally “cancelled.”