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‘Alumni’ band agrees to pay Earth Wind & Fire $750,000 after judge finds it infringed on trademark

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An “alumni” band found to have committed trademark infringement against veteran R&B group Earth Wind & Fire agreed to pay $750,000 in monetary damages but fell short in its effort to seek clarification on how it can market itself in the future.

Earth Wind & Fire has sold tens of millions of records since the 1970s with music that spanned multiple genres, including soul, funk, disco, jazz, rhythm and blues, pop and Latin. Its long list of hits included “Shining Star,” “Let’s Groove” and “Boogie Wonderland.”

Promoters of the alumni group, most recently known as Legacy Reunion of Earth Wind & Fire Alumni, were sued by Earth Wind & Fire in U.S. District Court in Miami in March 2023.

The alumni band’s promoter, Substantial Music Group, was named with Stellar Communications Inc., as defendants in the lawsuit. Both companies are based in Indiana, according to the lawsuit.

Substantial Music’s founder, Richard Smith, last year said he was a member of Earth Wind & Fire for five years and had performed on two tours and one album.

While agreeing “that Smith played with the Earth Wind & Fire for a few years,” U.S. District Judge Frederick A. Moreno said in his March 4 ruling in favor of Earth Wind & Fire’s claims that “the size of (Smith’s) role during those years is in dispute.”

Moreno’s ruling found that the alumni band failed to sufficiently disclaim its independence from the original band in advertisements, promotions, and on websites.

He cited social media reviews from fans who expressed disappointment that the act they had paid to see did not include original members of Earth Wind & Fire.

On May 14, the two sides filed a notice that they had agreed to a monetary settlement. On May 20, Moreno signed a judgment affirming the settlement amount of $750,000.

After the March ruling, Smith said that he planned to wait for the penalty phase of the trial, which was scheduled to begin on May 28, before deciding whether to change the band’s name.

“Judge Moreno has yet to clarify what the alumni members can or cannot do with the name to be in compliance with his ruling, so the victory dance might be a little early,” Smith said via email in March.

That statement, provided for a South Florida Sun Sentinel story on March 6, also appeared in a Joint Motion for Clarification of Injunction Language filed in the case on April 23.

The motion included proposals from both sides on how the legacy band should promote itself in the future.

Earth Wind & Fire proposed a list of 18 rules. The band said the legacy band should be prohibited from:

—Using Earth Wind & Fire in its “marquee” name, promotional videos or “above, below or adjacent to their logo.”

—Describing the history and/or musical accomplishments of Earth Wind & Fire in promotional materials.

—Using the name “Earth Wind & Fire” in text promoting the band, unless accompanied by words like “music of,” “songs of” or “tribute to” Earth Wind & Fire.

—Issuing any press release or promotional materials that mischaracterize the legacy band as the original band, or as sponsored by, endorsed by, or associated with the original band.

—Using any variation of the name Earth Wind & Fire in any way that can be picked up by “ticket services’ robotic search engines” and combined with listings of shows by the real band.

Substantial Music proposed keeping the name Legacy Reunion of Earth Wind & Fire and adding a clear disclaimer “about who is performing.” The company also proposed omitting discussion about Earth Wind & Fire’s legacy or history in advertising and promotional materials.

“Defendants believe that compliance with both of these requirements will dispel the notion that Defendants’ act is somehow sponsored by or associated with Plaintiff,” the motion states.

But the judge declined to consider the motion for clarification, stating in a June 3 ruling published online in the court docket, that the court would offer no further assistance.

“The Court was sufficiently clear in its ruling and cannot provide further commentary or legal advice to the parties,” the ruling stated. “The defendants are already on notice not to advertise or perform as the Plaintiff ‘Earth, Wind & Fire.’”

In addition, Moreno canceled the March 28 trial after approving the $750,000 settlement agreement.

How Smith will proceed remains unclear. He did not immediately respond to an email and phone message seeking comment on Tuesday.

On Substantial Music Group’s website, the name Legacy Reunion: Earth Wind & Fire Alumni appears in a video that plays automatically on the homepage and in the thumbnail of a video preview on a page labeled Media.

But on a page identifying artists represented by the company, the name Legacy Reunion appears by itself plus “With Special Guest From Average White Band.”

A description promises “an evening of monster grooves, high energy and danceable hits” with “some of the greatest musicians in the world.”

Below it is a statement clarifying that “The Legacy Reunion Alumni in no way represents or implies endorsement or sponsorship by Earth Wind & Fire IP LLC.”

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