A California-based band by the same name has filed a lawsuit against popular United Kingdom boy band One Direction. In a complaint filed in the United States District Court for the Central District of California on April 9, 2012, the California band claims it has been using the ONE DIRECTION
trademark in connection with musical performances since 2009 and has extensively used the trademark in connection with the band’s marketing and sales promotions on various websites since 2010. When the California band released its first album in the United States in February 2011, they also filed an application with the United States
Patent & Trademark Office for the ONE DIRECTION trademark.
The UK band — comprised of members Niall Horan, Zyan Malik, Liam Payne, Harry Styles and Louis Tomlinson — rose from obscurity just two years ago when a judge on the UK version of the ‘X Factor’ suggested that the five solo artists unite and form a band. According to the allegations in the complaint, the UK band first performed under the ONE DIRECTION trademark in the UK on October 2, 2010 and released an album in the UK in September 2011. It is alleged that the UK band signed on with Columbia Records (a division of Sony) and introduced a single in the United States around February 2012.
Each member of the UK band is individually named in the complaint, as well as Columbia Record’s parent companies, Sony Entertainment and Sony Music Holdings, Syco Entertainment Inc. (‘X Factor’ judge Simon Cowell’s label) and Simco Limited (managers for the UK band). The California band alleges that the defendants were aware of the California band’s rights in and to the ONE DIRECTION trademark but “chose to ignore the [California band’s] rights and willfully infringed them.” Records at the United States Patent & Trademark Office show that the California band’s application for the ONE DIRECTION trademark was published on November 29, 2011 and that Simco Limited requested a 90 day extension of time to file an opposition on December 13, 2011 — approximately two months before the UK band debuted in the United States.
The complaint alleges counts for false designation of origin under 15 U.S.C. § 1125(a) and common law unfair competition. The California band seeks a permanent injunction, the destruction of all infringing materials, an accounting of profits and three times the profits generated by the UK band. The complaint alleges damages exceeding $1 million.
We will monitor this case and provide updates on the Grimes LLC blog. For additional information please send us an email or call us at (203) 849-8300.
