Two bands, One Direction: court!

It seems that originality continues to be an issue for boy bands.  “Well-known” UK teen heartthrobs One Direction may have taken a step in the wrong direction as media reports emerged concerning the filing of a lawsuit in the Californian US District Court alleging trade mark infringement and seeking an injunction preventing them from using that name.  The suit was filed by none other than One Direction, a US group with the same name, which they allege they have been using since late 2009.

The UK band was created by media giant Simon Cowell’s company Simco Limited and the hit TV show the X-Factor.  They went on to take the (16 year old female) world by storm, culminating in the organisers of the recent Logies urging fans to stay away from the event after chaotic scenes in Sydney  a few days earlier (see here).  The band claims some 4.5 million Facebook fans and over 3 million Twitter followers.  By contrast, the US band keeps a slightly lower profile, and has played at local fairs and bars. 

The suit alleges that by using the name “One Direction”, the UK band has caused “substantial confusion and substantial damage” to the US group — it seems they don’t want to have their image tarnished!  The claim seeks compensation of more than $1 million, as well as profits earned by the UK group. 

The trade mark for the US band was filed by Dan O’Leary, father of lead singer Sean O’Leary, on 14 February 2011.  This is after the UK group was signed to Cowell’s record label Syco in December 2010.  The registration of the US band is in respect of “entertainment, namely, live performances by a musical band”.  Interests associated with Simco appear to have filed a trade mark application in the US some seven months after the US group, on 16 August 2011.  The Simco application is far broader than that of the US band, encompassing, amongst other things, sound storage media, feature films, clothing and decorations for Christmas trees (can’t you just wait for next Christmas?), but, notably, not live performances by a musical band.

It is possible that the UK band (or its managers) did not conduct a thorough search before deciding on a name, and it seems that there was some delay in filing the trade mark application.  This may be a result of the unanticipated success of the UK band.  Budding reality TV show contestants should take note — we’ll keep you informed which direction the Court takes.

The case is One Direction LLC v Syco Entertainment Inc, U.S. District Court, Central District of California, no. 12-cv-03100.