October 11, 2013 2:54pm PT by Eriq Gardner
Black Flag Co-Founder Can't Stop Ex-Bandmates From Performing as 'Flag'
Here's a scary thought: Black Flag, the name of the iconic punk band, might be as bland as aspirin.
Oh, no? Check out an opinion this week by a California judge.
In August, Black Flag founding guitarist Greg Ginn sued his former bandmates Keith Morris, Dez Cadena, Chuck Dukowski and Bill Stevenson. This latter group was touring as "Flag," which allegedly constituted a violation of alleged rights to "Black Flag" enjoyed by Ginn and his label, SST Records.
Black Flag's most famous member Henry Rollins was sued too. Rollins and Morris made a trademark application on "Black Flag," but Ginn asserted that the two had lied in the application by submitting material belonging to SST, which released and distributed all 18 of the band's albums.
The lawsuit was prompted when both Black Flag and Flag started touring, nearly three decades after breaking up. Ginn claimed that use of the band's logo, consisting of four uneven black bars simulating a waving flag, was an infringement and that "Flag" was "a colorable imitation" that's "likely to cause confusion, mistake or deception among consumers."
But U.S. District Judge Dean Pregerson has refused an injunction -- for a pretty interesting reason.
The judge writes, "As an initial matter, even putting aside the question whether either Plaintiff owns either of the marks, 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."
The judge continues.
"Defendants have submitted evidence suggesting that even if Plaintiffs own the marks, they have allowed them to fall into generic use," he writes.
In failing to police the famous "Black Flag" name by, among other things, not stopping unlicensed merchandisers, Ginn might not be able to claim ownership. Becoming generic is a fate suffered by some lackadaisical companies. Bayer AG lost "aspirin" as perhaps the most famous instance of this. "Escalator," "zipper" and "heroin" are some other examples.
The judge says that Ginn hasn't shown a sufficient likelihood of success on the merits, and that's why he's denying the injunction. The lawsuit survives, however.
Of course, it makes sense that a band who did their best work in the late 70s and early 80s and then went their separate ways wouldn't be more vigilant. The judge also says that "given Plaintiffs' dissociation from the marks for the better part of three decades, Plaintiffs' argument that defendants' selection of the Flag marks was in bad faith is not persuasive."