Expose Trademark Row At 'Point Of No Return': 11th Circ.
By Zach Winnick
Law360, Los Angeles (June 21, 2011) -- The Eleventh Circuit upheld a lower court's ruling Tuesday that the common law trademark for 1980s female singing group Expose is owned by its current members, not by the successor to the entertainment company that created the group in 1984.
"The parties recognize the bedrock principle of trademark law that a mark can identify and distinguish only a single commercial source, and the opposing parties request this court to 'Let Me Be the One' who obtains rights to the Expose mark," U.S. Circuit Judge William Pryor wrote in a decision playfully littered with titles of songs recorded by the music act.
The three-judge panel upheld a district court's finding that Florida-based Crystal Entertainment & Filmworks Inc. never proved that it first appropriated the trademark for Expose, and that current group members Jeanette Jurado, Gioia Bruno and Ann Curless Weiss, known as Ann Curless, were the mark's common law owners.
The decision promises to strengthen the rights of musicians and other artists to their performing names in fights with record labels, producers, and other behind-the-scenes entertainment industry players.
A predecessor to Crystal formed Expose in 1984 and recruited the current members in 1986. The group scored a hit in 1987, selling more three million copies of its debut album "Exposure," which featured Jurado, Curless and Bruno on the cover, the decision said.
Expose disbanded in 1995. In 2003, Jurado and Curless decided to get the group back together again and signed a series of trademark and licensing agreements with Crystal, but the arrangement soured.
"In 2007, the relationship between the band and Crystal reached a 'Point of No Return,'" the court wrote, dropping another Expose song title. The band stopped paying licensing fees, and Crystal sued in federal court in 2008, claiming breach of contract and violations of the Lanham Act and other federal and state laws.
After a three-day bench trial, the district court ruled in favor of Crystal on the breach of contract claim, but found that Jurado, Curless and Bruno were the common law owners of the Expose trademark.
Crystal appealed the trademark finding. The Eleventh Circuit ruled Tuesday that the district court had reached the correct result.
"'Seasons Change,' but the law in this circuit about the requirements for ownership of a trademark or service mark at common law has remained relatively constant," Judge Pryor wrote. Reviewing the evidence, the Eleventh Circuit found that Crystal had failed to satisfy its burden to prove it had appropriated the Expose mark.
The court then turned to the question of who actually owned the mark, noting that the case was novel in the circuit.
"We have yet to address a trademark dispute of this type, but other courts have consistently resolved such disputes by awarding trademark rights to the claimant who controls the nature and quality of services performed under the mark," Judge Pryor wrote, pointing to a 1986 Massachusetts case finding trademark ownership by members of the singing group New Edition.
The court observed that Expose had been consistently portrayed to the public as Jurado, Curless and Bruno since 1986, and described the findings of the district court.
"They were the product denoted by the Expose mark, they owned the goodwill associated with the mark, and a member of the public who purchased a ticket to an Expose concert would clearly expect to see Jurado, Curless and Bruno perform," the decision said.
"Because the record supports the findings of the district court, we affirm," Judge Pryor wrote.
Dorothy Easley, an attorney for the singers, said the performers were thrilled by the decision.
"This is a long time coming. They have had the name Expose for decades and they really are the face of Expose, and the Eleventh Circuit Court of Appeals fully appreciated that," Easley said. "And I am so impressed with the court's recitation of the law on this issue. I think it'll have a positive impact on performers controlling their rights, and appropriately so."
Representatives for Crystal did not immediately respond to requests for comment.
The decision was joined by U.S. Circuit Judge Emmett Cox and U.S. District Judge Charles Pannell, sitting by designation.
Crystal is represented by Howard Kahn of Kahn Chenkin & Resnik PL as well as Robert Kain and Darren Spielman of Kain & Associates.
Jurado, Weiss, Bruno, Kelly Moneymaker, and Walking Distance Entertainment LLC are represented by Dorothy Easley of Easley Appellate Practice PLLC, Jon Gibbs of Akerman Senterfitt LLP, and Lawrence Noble of Noble & Associates PLC.
The case is Crystal Entertainment & Filmworks Inc. et al. v. Jeanette Jurado et al., case number 10-11837, in the U.S. Court of Appeals for the Eleventh Circuit.
--Editing by Eydie Cubarru
