Wednesday, February 07, 2024

In a Unanimous Decision, TTAB Dismisses SPLIT DECISION Opposition: Billy Stott Failed to Prove Ownership of the Band Name

The Board dismissed an opposition to registration of SPLIT DECISION for "Entertainment services in the nature of live visual and audio performances, namely, musical rock band," finding that Opposer Billy Stott failed to carry his burden to prove that Applicant Split Decision Music, LLC was not the owner of the mark. Stott began to "manage" the band SPLIT DECISION two years after it was formed, and claimed to be a "full, non-performing primary band member," but there was no agreement regarding ownership of the band's name. Applying the reasoning of its Wonderbread 5 decision, the Massachusetts district court's ruling in Bell v. Streetwise Records, and the CAFC's Lyons decision, the Board sided with the applicant. Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 (January 31, 2024) [Not precedential] (Opinion by Judge David K. Heasley).

As plaintiff in this proceeding, Opposer Stott had the burden to prove prior ownership of the subject mark by a preponderance of the evidence. Wonderbread 5. The parties submitted extensive deposition and declaration testimony in this proceeding that began in July 2019.

The band began as a part-time, two-member outfit in Philadelphia in 1990 and became a five-member, full-time band that now performs up and down the east coast. The dispute concerned the extent of Mr. Stott’s involvement in the band’s operations from 1991 until they parted ways in 2018. Stott claimed he was a "full, non-performing primary band member," while the applicant asserted that Stott was more in the nature of a manager who assisted in the development of the band. According to the applicant, Stott did not handle the band’s finances, did not select its songs, did not direct its style of play, and did not select its wardrobe.

The Board found this case to be similar to Bell v. Streetwise Records. There, a singing group began performing for nominal amounts of money in the Boston area under the name New Edition. "An ownership dispute arose between the group and Streetwise Records, the record company that produced and marketed the group’s first albums. Streetwise contended that New Edition was a "'concept group,' like The Monkees or Menudo, whose performers are cast to fill roles created by entities that conceived both the concept and name."

The district court, however, found that New Edition was never a concept group: "they were not, as defendants contend, replaceable actors in a play . . . ." "[T]hey existed and performed as New Edition long before [Streetwise released their first album]." "[T]he norm in the music industry is that an artist or group generally owns its own name." "They and no one else controlled the quality of those services. They own the mark.”

Here, as in Bell, the group SPLIT DECISION performed publicly twice a month for a nominal amount—$200 per performance—before the members ever met Mr. Stott. They retained the name they had chosen, SPLIT DECISION, and perform under it to this day. Mr. Stott made undeniably significant contributions during the group’s early years, but as it matured over the course of time it came to control its own music, clothing, performances, and publicity. The group and no one else controls the quality of its services. The group owns the service mark.

The Board also considered, for the sake of completeness, Stott's claim that he was not just the manager, but the "primary, non-performing member" of the group. According to the CAFC's Lyons case, "[g]enerally, there are three main factors to be considered in ownership disputes surrounding service marks as between a departing member and the remnant group: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark"

As to the parties' intentions or expectations, there was never an agreement with Stott regarding ownership of the band name.

The band members’ actions, undertaken in concert, establish their collective ownership of the mark. Their band leader testified, "It's owned collectively from the five of us, not individually." The five band members . . . authorized their band leader, Doug Moore, to apply to register the SPLIT DECISION mark on their behalf via the band’s limited liability company, Applicant Split Decision Music, LLC. The five band members later signed nunc pro tunc assignments memorializing their prior agreement to have the LLC apply to register the mark."

Moreover, based on the objective evidence, Stott did not hold himself out to club owners or patrons as a member of the group, "much less a 'primary, nonperforming member.'"

As a result, the relevant members of the public—club owners and patrons—will look to the band members to perform as Split Decision and stand behind the quality of their performances. They would not look to Opposer, whose participation was terminated in 2018, over five years ago, who has no further role in managing or booking the band, and who has not attempted to field another band under the mark SPLIT DECISION.
And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: One is tempted to call this a WYHO? but given the length of the proceeding and the number of papers filed, I hesitate to do so.

Text Copyright John L. Welch 2024.


At 1:33 PM, Blogger Fred Samuels said...

The standard that the TTAB used for determining a departed band members ownership is different than that used by many federal courts, e.g. at least the 9th and 11th circuits. Commodores Entm’t Corp. v. McClary, 879 F.3d 1114, 1132 (11th Cir. 2018) and Robi v. Reed, 173 F.3d 736 (9th Cir. 1999). Both of these cases hold that when a member departs a band and the band continues operations with at least one original member, the departing member relinquishes his/her ownership claim. These different standards may lead to inconsistent results.


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