Earth, Wind & Fire Lawsuit: Judge Says Tribute Law Can Try To Prove R&B Legends' Name Was 'Abandoned'

A federal judge ruled Wednesday (Jan. 31) that a tribute band sued by Earth, Wind & Fire for trademark infringement can continue trying to prove its bold counterargument: That the legendary R&B group gave up copyright to its name .

Faced with a lawsuit over the use of the name “Earth Wind & Fire Legacy Reunion” in concerts, the smaller act claimed last summer that the original band had allowed several other tribute bands to use its name without repercussions – so much so, in reality, which could no longer claim any exclusive legal right to it.

Lawyers for Earth, Wind & Fire called that argument untenable and asked that it be dismissed, but in a ruling Wednesday, the judge Federico A. Moreno he refused to do so. While he said Legacy Reunion could ultimately find it “difficult” to prove that “abandonment” argument, he said they “did enough” to avoid throwing it away entirely in the early stages of the case.

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 owned by Maurice White's sons who officially own the name.

In a March lawsuit, that company accused 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 only featured a few “side musicians” who 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.

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 it should be clear that they are a tribute band, and they can get into legal hot water if they make it appear that they are connected to or supported by the original. In 2021, ABBA filed a similar case against a “parasitic” band called ABBA Mania.

Countering the lawsuit filed by Earth, Wind & Fire, Legacy Reunion filed a response in August listing a dozen other dedication acts that allegedly include “Earth, Wind & Fire” as part of their name. Legacy Reunion argued that since the original band had “taken no action to enforce its alleged trademark rights,” it had legally abandoned them.

“Due to the unsolicited use of the phrase by third parties, [EW&F] has left 'Earth, Wind & Fire' and [the name] has lost its significance as a trademark,” wrote lawyers for Substantial Music Group, which operates Legacy Reunion.

In a response filed in September, lawyers for Earth, Wind & Fire said the band apparently had not given up its rights to the name, adding that the “bare claims” made by Legacy Reunion, combined with a “handful” of other tribute bands, falls “sadly” short of what they should prove.

Wednesday's ruling by Moreno denied Earth, Wind & Fire's motion to dismiss the abandonment argument, but that doesn't mean Legacy Reunion avoided the band's infringement claims. Rather, the smaller group must now actually prove this argument in future proceedings.

An attorney for Earth, Wind & Fire did not immediately return a request for comment.