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JUN
22
2 YEARS

Simon Cowell Label Countersues Over 'One Direction' Band Name

Who will get to use one of the hottest monikers in the music business?

One Direction U.S. vs. One Direction U.K.

One Direction, the British boy band that's heating up charts around the world, has launched a counterattack against the American group also known as One Direction.

In April, the Americans filed a $1 million trademark lawsuit against the Brits, alleging that their foray to this side of the Atlantic was causing confusion. As proof, the Yanks pointed to a segment on NBC's Today where the popular teen-scream group was shown as music from the less popular group played.

On Thursday, Simon Cowell's record label Simco and Sony Music Entertainment lodged counterclaims, alleging that the USA's One Direction has "devised and perpetrated a scheme to exploit the goodwill" of the U.K.'s One Direction and that the Brits are the real ones under the threat of consumer confusion.

In the original lawsuit, One Direction U.S. said it had been selling its album, The Light, on iTunes since February 2011. This was before the U.K. doppelganger -- made up of Louis Tomlinson, Harry Styles, Liam Payne, Zayn Malik and Niall Horan -- released its own album, Up All Night, in America.

But now, Simco and Sony say, check the dates.

The cross-claimants say they have consistently been using the name One Direction since the U.K. group made its public debut on the British version of The X Factor in fall 2010. They say the activity extended to the U.S., including an August registration of onedirectionmusic.com, a Twitter account and a Facebook page. Attorneys for the U.K. band say music videos were put up on YouTube that circulated worldwide starting in September 2010. Three months later, the U.K. group claims more than 30 videos were up and enjoyed by the U.S. public.

The latest countersuit goes on to say that the U.S. band, fronted by Sean O'Leary, knew about the Brits back then.

According to the cross-claims, "For example, reference was made to ODUK on Nov. 28, 2010, in postings on the 'OneDirectionUSA' Facebook page (established by Third Party Defendants after the creation of ODUK's own, highly popular Facebook page)."

Simco and Sony, represented by Karin Pagnanelli at Mitchell Silberberg & Knupp, now are offering up allegations that O'Leary's band has "willfully and maliciously" used the One Direction trademark and want damages for false designation of origin, unfair competition and cybersquatting.

It should be noted that in the original lawsuit, the U.S. act claimed to have been using One Direction "continuously in commerce in the United States since the fall of 2009," though the registration of the Facebook page was the first specific activity mentioned thereafter.

"It looks like we got defendants’ attention," says Peter Ross, the attorney for the U.S. band. "This is the response we expected, given who we’re up against.  An effort is being made to intimidate these young men from California.  Our clients believe in their case and will not be deterred."

One Direction became the first U.K. musical act to have its debut album enter the Billboard 200 album chart at  No. 1. The countersuit is proud of that fact, pointing out that The Beatles' first album debuted at No. 2.

As we pointed out in the original exclusive about this dispute, the history of pop music has had many famous name disputes including Dinosaur vs. Dinosaur Jr., Death From Above vs. Death From Above 1979 and Galaxie 500 vs. Galaxie. Many popular acts including Pink Floyd, The Grateful Dead, and The Chemical Brothers took their monikers after name disputes.

E-mail: eriq.gardner@thr.com

Twitter: @eriqgardner