What’s in a rock band’s name? Plenty, if you are talking about Jefferson Starship, which goes back more than 40 years, has had more than 30 members and was born from the 1960s psychedelic rock band Jefferson Airplane.
Craig Chaquico, a founding member of Jefferson Starship and the only musician to perform on all 10 of their albums, on August 11 secured from U.S. Magistrate Judge Maria-Elena James in San Francisco a decision greenlighting the cause of action that his lawyers say was the core claim over use of the legendary band name. The ruling came in a lawsuit initiated by Chaquico in April in the U.S. District Court for the Northern District of California for breach of contract and violation of §43(a) of the federal Lanham Act, and seeking an injunction to stop the band from using the Jefferson Starship name and his likeness. Chaquico v. Freiberg, 3:2017cv02423.
Magistrate James ruled that he could pursue his breach of contract claim against multi-instrumentalist David Freiberg and drummer Donny Baldwin — who have played with the band since the ’70s and ’80s respectively — for performance and merchandising revenues taken in since January 2016, when the band’s co-founder Paul Kantner died.
But the federal magistrate dismissed his claim for earlier contract breaches and rejected a trademark infringement claim over the use of his likeness in promotional materials, such as in T-shirts or posters designed to help sell tickets, even though he wouldn’t be performing.
Chaquico’s attorney David W. Swift, a partner at Kinsella Weitzman Iser Kump & Aldisert, notes that Magistrate James “rejected defendants’ statute of limitations argument and allowed Mr. Chaquico to proceed with his core claim against David Freiberg and Donny Baldwin for their unauthorized and improper use of the name Jefferson Starship in violation of their written agreement to not do so.”
Defense attorney Travis W. Life of Chicago-based Leavens Strand & Glover declined to comment beyond a statement that he provided: “We are grateful that the court recognized that the plaintiff’s Lanham Act claim lacked merit and that the band had First Amendment rights to reference the name Jefferson Starship.”
Magistrate James left the door open for Chaquico to pursue the trademark issue with new evidence and a reframed argument. Swift confirmed that was the plan.
Chaquico alleges the defendants have “created the false impression amongst consumers that [Plaintiff] sponsors, endorses and/or is associated in some manner with Defendants and their band.” The defendants argue their use of Chaquico’s persona was artistically relevant to the Jefferson Starship’s history.
Magistrate James found that with “the current Jefferson Starship’s ties to the original Jefferson Starship to which Plaintiff belonged, Defendants’ use of Plaintiff’s image is minimally relevant.” She noted in her ruling that, though Chaquico “alleges Defendants use his likeness in ‘a blatant attempt to confuse the public by passing off their current band as the original, world-renowned, Jefferson Starship that includes Chaquico’, there are no facts to support this assertion.”
The magistrate went on to find: “Plaintiff’s allegations that defendants’ use of his likeness violates the Lanham Act are merely conclusory. The court therefore dismisses his Lanham Act claim. However, as there is nothing to suggest plaintiff cannot allege the required facts, the court grants him leave to amend to give him an opportunity to do so.”
Robert Allen, a principal in McKool Smith’s Los Angeles office and veteran of the music industry wars who recently helped Quincy Jones win a $9.4 million award from Michael Jackson’s estate, sees that as a positive for Chaquico’s case. “I think what you see here is a procedural hiccup rather than a rejection of the claim,” says Allen. “The judge is in effect saying I see what you’re saying, but you’ve got to back it up with evidence, and I think you can.”
Who Built this Starship?
This is only the latest chapter in the tumultuous history of the Jefferson Starship, which took flight in 1974 after evolving from the Jefferson Airplane. The latter band defined the psychedelic “San Francisco Sound” a decade earlier with Grace Slick performing vocals on songs like “White Rabbit” and “Somebody to Love.”
Jefferson Starship was formed as a touring band when Marty Balin, Jorma Kaukonen and Jack Cassidy exited Jefferson Airplane. Chaquico was joined by Johnny Barbata, “Papa” John Creach, Kantner, Slick and Freiberg in the new group. When the Jefferson Starship did make it into the studio they churned out nearly a decade’s worth of hits including “Miracles,” “Count On Me,” “With Your Love,” “Jane” and “We Built This City.” As the 1980s approached, however, things were coming apart. After Slick’s behavior at two disastrous 1978 shows in Germany, Kantner said she had to leave the band. Years later, disenchanted with the band’s tilt toward pop, Kantner left too.
Before Kantner’s departure he persuaded the remaining band members — Freiberg and Baldwin included — to agree not to use the name Jefferson Starship and to pay him an exit fee. They did and proceeded on as Starship, dropping “Jefferson.” They had No. 1 hits in 1985 with “Sara” and 1986 with “Nothing’s Going to Stop Us Now,” a Slick and Mickey Thomas vocal duet written by Diane Warren and Albert Hammond for the movie Mannequin.
For nearly a decade the band continued on with various alums, friends and new faces floating in and out. Chaquico remained the lone constant. In 1993, Kantner began using the retired Jefferson Starship name in his live performances and Chaquico prepared to go to court. But instead, he and Kantner agreed to arbitration and Kantner wound up with permission to use the name for live performances and merchandising. Freiberg and Baldwin later joined the revamped Jefferson Starship lineup, and Chaquico wasn’t bothered — until Kantner’s death.
Kantner’s demise ended the rightful use of the name, Chaquico maintained, and he sent numerous letters threatening legal action to the band asking them to stop using the name before he filed suit in April 2017. The other current band members, Chris Smith, Jude Gold and Catherine Richardson, are also named defendants in the suit.
“This case is about tarnishing the legacy of the original Jefferson Starship band,” Chaquico said at that time. “We retired the name in 1985 and we agreed that nobody would use the name again. For this band lineup to tour and call itself Jefferson Starship is woefully misleading to the public and confuses longtime fans.”
***** Todd Cunningham covers entertainment, media and sports law in Los Angeles for The Recorder, an ALM sibling of Entertainment Law & Finance.
The views expressed in the article are those of the authors and not necessarily the views of their clients or other attorneys in their firm.