In an attempt to lend support to the Black Lives Matter movement, the well known country artists formerly known as Lady Antebellum announced in June 2020 that they would be changing their name to Lady A. In the process, they have stepped further into controversy as the Lady A name has been used as a stage name by a black blues singer, Anita White, for the past 20 years. Initially it appeared the two artists were in talks to co-exist, but the band Lady A recently escalated the name dispute from friendly negotiation to the courts. The move has been viewed as bad public relations for the band Lady A, as they made the change in support of correcting racial injustice, but in the process have made life more difficult for a black singer and her career. Let’s break down what the Lady A vs. Lady A name dispute is all about, and why the likely outcome is for these artists is a co-existence agreement.
What is the Lady A vs. Lady A case asking the court to decide?
Despite the fact that the band Lady A has several trademarks for “Lady A,” applied for in and around 2010, the band is not actually suing the singer Lady A for monetary damages for trademark infringement, nor are they suing to prevent the singer Lady A from using the stage name she has used for the last two decades. Instead, the band Lady A has filed what is called a Declaratory Judgment action in the federal court in the Middle District of Tennessee, which seeks to get a declaration from the court that the band Lady A is entitled to continue to use the name and isn’t infringing on any of the singer Lady A’s common law trademarks as the two artists move forward into a world where they will co-exist, each using the name.
Why involve the court?
Initially it appeared the artists were in friendly informal negotiations to arrive at a co-existence agreement. A June 15 Tweet with photos of a video conference with smiling faces all around certainly seemed promising.
However, the singer Lady A brought in new attorneys, and demanded $10 million for the singer Lady A’s cooperation in the co-existence agreement (the singer has professed she intends to donate half the amount to charity). Perhaps the singer Lady A’s attorneys were too aggressive, or perhaps the band Lady A’s attorneys were too sensitive or are angling for a less expensive resolution. Either way, the band Lady A filed the Declaratory Judgment action and the matter now becomes more public, more time consuming, and more expensive to resolve from a legal fees perspective.
Why the band Lady A is entitled to use of the name?
The band filed a federal trademark applications for “Lady A” in 2010. Those applications received no opposition, and the prior use by the singer Lady A was seemingly unknown by the examiner from the United States Patent and Trademark Office who did the search for prior uses during the trademark approval process. While the singer Lady A had the opportunity to file objections, it is likely she didn’t even know about the band’s applications. That’s why it’s important for artists to both register their artist name trademarks, and to monitor the United States Patent and Trademark Office’s new applications to be certain no new applications are potentially so similar that they are likely to cause confusion among consumers.
Having received no opposition, the band Lady A was granted the trademark registrations, and in due course made their additionally required five year trademark filings (known as Section 8 and 15 filings) that make their registered marks even more difficult to cancel or invalidate through a challenge.
Why the singer Lady A is entitled to use of the name?
A trademark does not have to be federally registered in order to confer legal rights upon its owner. This is referred to as “common law” trademark. While it does not confer all the rights an artist is entitled to under a federally registered mark, it does confer a great many rights. The singer Lady A has been using the name for a lot longer than the band, and the priority of use does give her rights and benefits. This is especially true in the geographic area in which she primarily uses the name. Or, in the case she can show she has music available on nationwide platforms like YouTube, and Spotify, she can argue that she has common law rights to the name throughout the country.
So, the singer Lady A does have legal rights in the name, and could sue the band Lady A for common law trademark infringement. It would be difficult to predict the outcome of such a suit, but that’s precisely why the band Lady A has filed the pending Declaratory Judgement action. If the Court rules in the band’s favor they can continue to use the name without fear of a common law trademark infringement lawsuit by the singer Lady A.
What is the likely outcome?
Since a litigated outcome always comes with risk to both sides, the likely outcome in this case is that the parties will eventually reach a negotiated co-existence agreement and dismiss the Declaratory Judgment lawsuit. Such an agreement would mean the band Lady A won’t prevent the singer Lady A from using her long used stage name, and the singer Lady A won’t sue the band Lady A for common law trademark infringement to stop their use of the name. They will co-exist.
So why would the band Lady A risk the bad publicity?
In this case the band Lady A stepped forward with a name change intended to be responsive to the issues of racism and social injustice that have been pushed to the forefront in recent months. Instead of amicably resolving the issue between the parties, lawyers on both sides appear to have contributed to the heightening of the stakes that resulted in the filing of the Declaratory Judgement action. While it was probably a power move intended to give the band Lady A the upper hand in negotiations, it has been perceived publicly as seeking to take or limit use of the name of a black artist with decades of use in the name. Remember that happy June 15 Tweet? It now has hundreds of retweets and comments, most unhappy with the filing of the lawsuit by the band, such as the comment from David Gorski, MD, PhD that “…Lady A reveals their true colors. It’s all about the money and they’ll use their greater fame and resources to crush the less famous in their way,” and many others calling the band tone deaf to the issues of racial injustice and inequality that is now at the forefront of the country’s attention.
It’s always important to work with an attorney who is sensitive to the goals of their client, and who pays enough attention to current events to guide clients away from potential legal, or even public relations, issues. This public misstep might have been avoided by keeping negotiations informal and amicable.
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