11th Circuit adopts "joint endeavors" test to determine who owns trademark rights where ownership is unclear

What should a court do to determine who owns a trademark where it is unclear who or which of two or more claimants owns it? In a case involving a dispute whether a music group’s members or its manager owns trademark rights in the group’s name, the 11th Circuit yesterday held that in “joint endeavors” such as this, courts should: (1) first identify what “qualities or characteristics” for which the group is known; and (2) figure out who actually controls those qualities or characteristics.

In Crystal Entertainment & Filmworks, Inc. v. Jurado, No. 10-11837 (11th Cir. June 21, 2011), the plaintiff management company’s predecessor came up with the band’s name, hired the original band’s members, songwriter, and producer, and arranged for the original band’s performances. After a few fruitless years, however, new band members in 1986 replaced the original members. Despite the new members’ having signed two license agreements in the 2000s acknowledging the management company’s ownership of the mark, the district court found that the management company could not prove that it had exercised control over the new members or taken any role in scheduling their performances. The 11th Circuit did not find these findings to be clearly erroneous. Under the “joint endeavors” test, the court held that the replacement band members therefore controlled the qualities and characteristics for which the band is known by the public.