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Eleventh Circuit Flirts With Nominative Fair Use Test in Alan Parsons Project Trademark Case

The U.S. Court of Appeals for the Eleventh Circuit affirmed a preliminary injunction in favor of Alan Parsons — the progressive-rock artist/engineer/producer — in a trademark infringement action he brought over alleged unauthorized use of "The Alan Parsons Project" name for concerts. Parsons v. Regna, 20-11293. Parsons explained that he and 1970s band co-founder/singer-songwriter Eric Woolfson, who died in 2009, "were the only two members of The Alan Parsons Project, ever," that over the years the two group founders hired "more than 500 musicians and vocalists" to work on the Project's albums by being "all paid on a session-by-session, work for hire basis, and [who] were never considered, or credited as, members of the group." The U.S. District Court for the Middle District of Florida issued the preliminary injunction against Parsons' former agent John Regna, a concert promoter, and Regna's affiliated company World Entertainment Associates of America, for promoting a world tour billed as "The Original Alan Parsons Project Band." On appeal, Regna insisted the district court lacked subject matter jurisdiction over the dispute because the Lanham Act federal trademark statute, 15 U.S.C. §1051 et seq., didn't apply to Regna's disputed activity outside the United States that he said was for a "single concert in Barcelona," which had no impact "on United States commerce, let alone a 'substantial' one." The district court, however, had noted the Regna defendants were "allegedly violating U.S. trademarks by: running their business in the U.S., soliciting former musicians to play in an 'imposter band' in the U.S., maintaining infringing internet domains in the U.S., and drafting and sending emails from the U.S[.] to solicit infringing bookings." The Eleventh Circuit agreed that this resulted in  "substantial effects" on U.S. commerce. But Regna further argued his was a nominative fair use of the Parsons band name. A nominative fair use defense arises when a party uses another's trademark for product or service comparison purposes. The district court rejected Regna's argument on this by finding the "band names and descriptions used by Regna [we]re carefully created to draw a close, unmistakable association with The Alan Parsons Project to a degree unwarranted by the historical record" and thus were "deceptive and misleading." Notably, the Eleventh Circuit acknowledged, "We have not yet addressed whether nominative fair use is an affirmative defense to trademark infringement claims under the Lanham Act." Though not ultimately deciding the issue, the appeals court did state "that nominative fair use is not an affirmative defense set forth in the Lanham Act, see 15 U.S.C. §1115(b), and that the considerations underlying nominative fair use appear to be more properly considered, if at all, as part of the likelihood-of-confusion analysis …" The Eleventh Circuit nevertheless added "even under Regna's proposed framework for nominative fair use, he failed to establish an entitlement to such a defense."