April 10, 2012 3:47pm PT by Eriq Gardner
Simon Cowell's Record Label Sued Over Hot Boy Band One Direction (Exclusive)
One Direction is one of the hottest boy bands in years, formed by Simon Cowell after the bands' members finished strongly on the seventh season of The X Factor in the U.K. The group's debut album recently topped the U.S. chart, and it had a successful performance on Saturday Night Live. The band's arrival is being hailed as the new "British Invasion."
But there's a problem: Another U.S. band already calls itself One Direction.
Cowell's record label, Syco Entertainment, and Sony Music have just been hit with a $1 million lawsuit that says that One Direction (U.K.) can't navigate itself into U.S. jurisdiction without causing consumer confusion and destroying the goodwill of the U.S.-based doppelganger. As proof of the confusion, the plaintiffs point to a recent segment on NBC's Today, where the British teen-scream group was shown, accompanied accidentally by music from the U.S. band. So now One Direction (U.K.) is being threatened with losing its name.
One Direction (U.S.), fronted by Sean O'Leary, is not signed to a label, but the pop group has been selling its album, The Light, on iTunes since February 2011.
The band's attorney, Peter Ross, points out that this is well before the U.K. band -- made up of Louis Tomlinson, Harry Styles, Liam Payne, Zayn Malik and Niall Horan -- released its own album, Up All Night, in America. Last month it became the first debut album by a U.K. band to bow at No. 1 on the Billboard 200.
But Ross maintains that Cowell's company should have known better than to bring his band to the U.S. as "One Direction." The attorney says that One Direction (U.K.) was made aware of One Direction (U.S.) when it attempted to file an application with the U.S. Trademark Office. (The matter is now before the Trademark Trial & Appeal Board.) "Rather than change their name or do anything to create confusion or avoid damage to our goodwill, they chose to press ahead and come on their tour," says Ross.
Proving consumer confusion might be a snap for the plaintiffs.
The American band posted a song, "2012," on YouTube, and it's been viewed more than 100,000 times. In addition, "2012" has been selling nicely on iTunes. Part of the success of One Direction's (U.S.) song could be attributed to consumers who stumbled on the song after searching for the more popular act. According to Ross, "2012" was the song NBC mistakenly played on Today when introducing the hot U.K. act.
Proving harm could be an entirely different issue in the coming case, though.
The American group might be the beneficiary of attention they wouldn't have ordinarily have gotten -- for better or worse. On one hand, sales have been nice. On the other, some commentators on YouTube have left nasty comments, perhaps after seeing and hearing something they weren't expected. Ross says it shows that the goodwill of his client's trademark is being denigrated.
With only so many great band names out there, the history of pop music is replete with disputes: Dinosaur vs. Dinosaur Jr., Death from Above vs. Death from Above 1979, Galaxie 500 vs. Galaxie.
In some instances, bands simply agree to change their name. For instance, Pink Floyd was originally called The Tea Set before finding out about a band with the same name. Same goes for The Grateful Dead, originally called The Warlocks, or The Chemical Brothers, originally called The Dust Brothers.
Other times, bands have been forced to add prefixes or suffixes to make a distinction to an existing band: See The Charlatans UK, The English Beat or Wham UK.
But Cowell and One Direction allegedly are resisting this direction, perhaps because they've already become quite famous.
"We've been in negotiations for a month to find a resolution," says Ross. "In our view, the negotiations weren't turning out to be very productive."
As a result, One Direction LLC has filed a lawsuit against Syco and Sony that seeks an injunction plus $1 million in damages.
In a statement, a spokesperson for the One Direction (U.K.) had this to say:
“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.”