A tribute band that was sued by Earth, Wind & Fire for trademark infringement is firing back with a bold counterargument: That the famed R&B act has actually abandoned any intellectual property rights to its name.
In a court filing on Wednesday (Aug. 30), the smaller band — which calls itself Earth Wind & Fire Legacy Reunion — argued that the original group had allowed so many tribute bands to use its name without repercussion that it can no longer claim exclusive rights to it.
“Due to the unchecked third-party use of the phrase, [EW&F] has abandoned ‘Earth, Wind & Fire,’ and [the name] has lost its trademark significance,” wrote attorneys for Substantial Music Group, which operates Legacy Reunion.
The new filing listed out a dozen other tribute acts that allegedly feature “Earth, Wind & Fire” as part of their name, including “September: A Tribute to Earth, Wind & Fire” and “Let’s Groove Tonight: The Ultimate Earth, Wind & Fire Tribute Band,” as well as even simpler names like simply “Earth Wind & Fire Tribute.”
“[The band] has taken no action to enforce its purported trademark rights against any of the third-party vocal and instrument groups that have been using the phrase,” Legacy Reunion wrote in Wednesday’s filing. “The present civil action represents the first occasion on which Counter-Defendant has sought to enforce its registered trademarks against another party.”
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from Earth Wind & Fire IP, a holding company owned by Maurice White’s sons that formally owns the name.
