Two groups, one name, no joy, as bands and lawyers head in One Direction

From the 'it is all sounding rather familiar' department, this Kat brings you news that UK boy band One Direction, who captured third place in the UK X-Factor 2010, is being sued by a US band of the same name. See KatPost on problems encountered by last year's X-Factor's winners Little Mix (when they were formerly known as Rhythmix) here.

The US One Direction is comprised of five members: lead singer Sean O'Leary, drummer Adam Davis and guitarists Isaiah Chavez-Pickett, Tyler Rodriguez and Scott Nagareda. The band was formed at school by O'Leary and Davis in late 2009 with the other members later joining. To date, the band mostly plays at local fairs and bars in California. They have released two albums (One Direction and The Light) and numerous singles but, to date, these have failed to have a significant impact on the US Billboard Charts.

On 14 February 2011, Dan O'Leary (Sean's father) filed an application with the US Patent and Trademark Office for the trade mark 'One Direction' in Class 41 for 'entertainment, namely, live performances by a musical band' (No 85241506). The dates of first use and of first use in commerce were given as being 2 October 2010. The trade mark was accepted and published for opposition on 29 November 2011. It was duly opposed and those proceedings are ongoing.

The UK One Direction also comprises of five members: singers Niall Horan, Zayn Malik, Liam Payne, Harry Styles and Louis Tomlinson. The band was formed after the singers entered as solo artists on the UK X-Factor 2010 and were put together as a group. They finished third in the competition, behind Matt Cardle and Rebecca Ferguson. To date, they were part of the X-Factor tour and in recent weeks they have given performances in New York and Sydney. Their debut single 'What Makes You Beautiful' topped the charts in the UK and Ireland (No 4 in the US) and their debut album Up All Night topped the charts in the US, Australia and Canada (No 2 in the UK).

On 16 August 2011, Simco Ltd (part of the Simon Cowell music empire) filed an application with the US Patent and Trade Mark Office for the stylised trade mark '1D One Direction' in Classes 9, 16, 25, 28 and 41 (No 85398709). The trade mark has a priority date of 21 April 2011 based on an earlier European Community Trade Mark Registration (No 009913195). The US trade mark application has been examined and received its first adverse report on 9 December 2011.

Last week came news that the US One Direction had commenced proceedings in the California Central District Court to stop the UK One Direction from using the same name. This Kat has not been able to get her paws on the particulars of claim but understands that the US One Direction also sought $1m in damages from Syco Music and Sony Music.

According to US One Direction's lawyer Peter Ross, Cowell’s company should have known better than to bring the UK band to America as One Direction, since he claims UK One Direction was made aware of the US One Direction when it attempted to file its US trade mark application. He is quoted in numerous sources as saying 'Rather than change their name or do anything to avoid confusion or avoid damage to our goodwill, they chose to press ahead and come on their tour'. As proof of the confusion, US One Direction pointed to a recent segment on NBC's Today Show where the UK One Direction was shown, but accompanied accidentally by music from the US One Direction.

A spokesperson for Cowell’s Syco Entertainment is reported as saying 'there is a dispute with a local group in California about the ownership of the One Direction name in the US. One Direction’s management tried to resolve the situation amicably when the matter first came to light, but the Californian group has now filed a law suit claiming they own the name. One Direction’s lawyers now have no choice but to defend the lawsuit and the band’s right to use their name.'

The IPKat wonders if it might be hard to prove that the US One Direction has actually been harmed by the attention. Indeed, it would appear that the US One Direction has received significantly more attention and music sales than it might otherwise have had, thanks to the confusion with the UK One Direction ...

Merpel speculates that surely it is a sign that one has made the big time is when other people are willing to pay AU$100,000 for a piece of your discarded toast. Last week, while in Sydney, UK One Direction appeared on breakfast television show Sunrise. During the program Niall Horan offered to try some Vegemite spread on plain white toast. He took a large bite, but then had to spit it out in a napkin. The producers of Sunrise apparently put the remaining piece of bread with Niall’s bite marks up for auction on eBay soon with the proceeds going to the Australian charity YoungCare. The auction was taken down prematurely with the highest bid at AU$100,000.

Last word goes to the IPKat, who observes that the existence of groups with the same name is not a new phenomenon. He has already noted episodes involving the Rhythmix, Nirvana (ibid) and Buck's Fizz, and recalls plenty more name-sharing: The Seekers, The Spinners, The Rebels and Spirogyra/Spiro Gyra. float swiftly into his mind. No doubt, in an attempt to get "with it" and make intellectual property more relevant to the generation of youngsters who consume IP faster than it can be created or protected, the World Intellectual Property Organization (WIPO) will soon be convening a Committee of Experts and examining the basis for a new International Convention on the International Registration of the Names of Collective Performance Entities ...