September 05, 2012 4:21pm PT by Eriq Gardner
One Direction Settles Legal Dispute Over Band Name
One Direction, the mega-selling UK act that was put together by Simon Cowell on The X Factor, has settled a legal war over its band name.
Cowell's record label, Syco Entertainment as well as Sony Music and members of the band were sued in April after coming to America as part of a new "British Invasion." The problem was that an American boy group also known as One Direction already existed, which prompted a dispute both at the U.S. Trademark Office and in California federal court over who would be the one to keep the name.
The American act claimed $1 million in damages in a trademark infringement lawsuit and said that evidence of the confusion was clear. When the UK act went on NBC's Today, for instance, producers accidentally accompanied their visit with music from the U.S. band.
On Wednesday, all claims and counterclaims between the parties were dismissed with prejudice with both sides agreeing to bear their own legal costs. It appears that the UK act will be keeping its name. According to a document filed on Tuesday at the Trademark Office, the U.S. act has expressly abandoned its claim to the mark, "One Direction."
In the five months since the lawsuit was first filed, the dispute did nothing to slow One Direction's burgeoning success. Despite the legal cloud hanging over the band's name, the UK act has made some big endorsement deals, recently signing a lucrative one with Pepsi, for instance.
UK's One Direction -- made up of Louis Tomlinson, Harry Styles, Liam Payne, Zayn Malik and Niall Horan -- played defense by going on the offensive against the US formation fronted by Sean O'Leary. In June, counterclaims were filed that alleged the U.S. act had "devised and perpetrated a scheme to exploit the goodwill" of the U.K.'s One Direction and that the Brits were the real ones under the threat of having consumers steered wrong.
In past cases where two bands shared a name across an ocean, measures have been taken like adding a suffix to denote who is who. Think The Charlatans UK, The English Beat or Wham UK.
In this latest instance, the parties had evidence to fuss over like which band was the first to put up a Facebook page, which band was first to put up a YouTube music video, who was the first on iTunes and which band was getting nasty comments from confused fans.
Ultimately, the two sides found the coordinates to meet eye-to-eye on an agreement that not only resolves the lawsuit, but also a quarrel at the Trademark Trial & Appeal Board.
Full terms of that settlement haven't been disclosed yet. Neither party has responded yet to a request for comment.
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