Standard of Review and 12(b)(6) seem like they should be punk bands, but instead are legal terms of art. So why do I mention this? In the discussion of the (original) Black Flag v. (new) Black Flag v. Flag legal dispute many of the recent news articles claim that a lawsuit has been definitively won, and someone else has lost.
While it is possible for the present order denying plaintiff’s motion for preliminary injunction to be the end, due to the still pending claims and counterclaims this case is likely to live on, like the legend of the phoenix. Temporary Restraining Orders (also tried and failed here) and preliminary injunctions are only issued in situations where if someone isn’t stopped RIGHT NOW the harm can’t be backtracked.
On to the good stuff! The origin story:
A long, long time ago, punk existed. And lo, there was a band called Black Flag. And they had an awesome logo, created by their first bass player, Raymond Pettibon, also the brother of Greg Ginn. Though not during the first phase, but during the second did Henry Rollins (nee Garfield) become their vocalist. And yo, there was drama, but the fact they had a woman bassist was not the reason. They lived in the van.
They had disputes with their label, leading an injunction preventing them from releasing material as Black Flag. This led to the release of a compilation recording that specifically was not credited to the BAND Black Flag, but to the individual members of the group — Everything Went Black.
And then there were two — Hank and Greg. And then according to the chronicle of Hank, “[Greg] told me [Henry] he was quitting the band. I thought that was strange considering it was his band and all. So in one short phone call, it was all over.”
Years passed only marked with three reunion shows …
In 2013, Ginn and Ron Reyes decided to restart Black Flag, under the name … Black Flag. At about the same time, Dez Cadena, Chuck Dukowski, Keith Morris, and Bill Stevenson decided to tour playing Black Flag songs under the name … Flag. Hank wasn’t involved in either project.
Based on the possibility of confusion (or more likely, raw anger), nu-Black Flag and Ginn sued basically everyone else in SST Records Inc et al v. Garfield et al, 2:13-cv-05579 (C.D. Cal August 2, 2013) for trademark infringement, unfair competition, and breach of contract.
The application for a temporary restraining order was denied in August due to “waiting until the eleventh hour to seek injunctive relief.” Burn! The order denying included the factually incorrect statement “Plaintiff Ginn and Defendant Rollins allegedly started the band Black Flag in 1976”, and ever since, the filings in this case have been been piling up.
By 1986, Plaintiff Ginn and Defendant Rollins were the only parties remaining in Black Flag. The parties dispute whether Ginn or Rollins was the last member of the band. (Ginn Decl. ¶ 6; Rollins Decl. ¶ 5.) In any event, the band broke up, and no party performed under the Black Flag name for almost twenty years …
There are also disputes between the parties about whether the band was a statutory partnership or some other legally recognized entity, collective, or if, as Ginn claims, he was the last one standing.
But the heart of this dispute is who is authentically or truly Black Flag and gets to call themselves Black Flag. (And who owns the copyright to the Black Flag recordings, ’cause Ginn filed with the Copyright Office, and there are outstanding claims that this was fraudulent.) And that is yet to be decided.
On the other hand, the judge did state that the Black Flag trademarks are most likely dead. DEAD. And why? The logo and other trademarks weren’t protected from use by others since 1986. Genericide, allowing trademarks to become generic — in use by anyone — kills trademarks.
the court is not persuaded that Plaintiffs can demonstrate a protectable interest in either the Black Flag name or the Logo, neither of which are registered to either Plaintiff. Plaintiffs assert that both marks are extremely well known, but at some point, marks may “transcend their identifying purpose” and fall outside the protection of trademark law. … Defendants have submitted evidence suggesting that even if Plaintiffs own the marks, they have allowed them to fall into generic use. … Nor, in the years following the band’s dispersal in 1986, did Plaintiffs take any action to maintain the distinctiveness of the marks. … It is, therefore, doubtful whether Plaintiffs can establish that the marks are protectable.
The issue of Ginn’s connection to the trademarks over the years was raised:
Aside from three shows in 2003, Ginn did not claim any connection to the Black Flag and Logo marks until after Flag announced its tour plans in 2013. Even if it is ultimately determined that SST owns the marks, Defendants have presented at least a colorable argument, and certainly some evidence of a good faith belief, that they, through some iteration of a partnership, own or owned the marks.
And here is support that this case isn’t over:
The similarity, intent, and actual confusion factors weigh heavily against a finding of likelihood of confusion. Though Plaintiffs may ultimately be able to establish such a likelihood, at this stage, they have failed to demonstrate a likelihood of success on the merits sufficient to warrant injunctive relief.
So what does this mean for your weekend? If you’ve been making Black Flag parody shirts, go right ahead! If you are interested in seeing any iteration of former members of Black Flag performing, you’ll have ample chances! But if you didn’t see the original Black Flag perform before their breakup in 1986, too bad.
Further Reading Material