Earth, Wind & Fire have reached a settlement with a tribute act that used the R&B group's name without permission, avoiding an impending lawsuit over how much the unauthorized group would have to pay in damages.
The settlement, filed in court on Tuesday (May 14), comes two months after a judge ruled that the tribute group had infringed Earth, Wind & Fire's trademark rights by calling themselves the “Earth, Wind & Fire Legacy Reunion” – a name which the judge called “misleading and misleading”.
Following that ruling, a trial was scheduled for later this month over how much Legacy Reunion would have to pay in damages. But in a joint filing this week, lawyers for both sides said those proceedings will no longer be necessary.
“The parties have reached an agreement in principle regarding the indemnification issues remaining before the court in the referenced action,” the lawyers wrote. “The parties are in the process of preparing documents that reflect their agreement on the indemnification issues and which should fully dispose of the indemnification issues that remained unresolved in this action.”
Terms of the deal, including how much Legacy Reunion will pay Earth Wind & Fire, were not disclosed in court filings. Neither side immediately returned requests for comment.
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by Philip Bailey, Ralph Johnson and White's brother Verdine White. The complex is licensed by an entity called Earth Wind & Fire IP, a holding company controlled by Maurice White's sons who officially own the rights to the name.
Last year, that company filed the current lawsuit, accusing Legacy Reunion of trying to trick consumers into thinking it was the real Earth, Wind & Fire. Although it called itself “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who had briefly played with Earth, Wind & Fire years ago.
“The defendants did this to take advantage of the commercial magnetism and enormous public goodwill that the plaintiff's 'Earth, Wind & Fire' marks and logos have, thereby misleading consumers and selling more tickets at higher prices.” the group's lawyers wrote at the time.
Tributes – groups that exclusively cover the music of a particular band – are allowed to operate legally and often adopt names that refer to the original. But they need to make it clear that they are only a tribute band and can get into legal hot water if they make it appear that they are connected to or supported by the original.
He ruled on the case last month, Judge Federico A. Moreno said the evidence was “overwhelmingly” in favor of the band. In particular, the judge cited angry social media posts and emails from fans who attended the “Reunion” shows because they thought they were the original band — evidence of the kind of “genuine confusion” that is crucial evidence in a trademark lawsuit.
“It is not a stretch to think that an average consumer looking for an Earth, Wind & Fire concert would believe that they could obtain that experience from either the plaintiff or the defendants,” the judge wrote.
