Earth Wind & Fire IP, LLC, which holds the band's trademarks following the death of founder Maurice White in 2016, filed a lawsuit in a U.S. District Court in Miami against Substantial Music Group and Stellar Communications. The lawsuit alleged that the defendants falsely marketed their "Earth Wind & Fire Legacy Reunion" act as the real Earth, Wind & Fire, rather than a tribute or cover band. The plaintiffs claimed the defendants illegally used the band’s copyrights, including the well-known “Phoenix” logo, word mark, Egyptian iconography, and photos of the original EWF members, to promote their concerts.
The lawsuit claimed the defendants' scheme aimed to benefit from the commercial magnetism and goodwill associated with Earth, Wind & Fire, misleading consumers and selling tickets at higher prices. It included complaints from fans who accidentally attended a "Legacy Reunion" concert believing it was the original band. Some ticketing sites reportedly combined tour dates of both acts, further contributing to the confusion. The lawsuit sought all revenues derived from the defendants' promotional activities and concerts, as well as compensatory and general damages, or statutory damages.
In response, the defendants argued the original band had abandoned its intellectual property rights by allowing numerous other tribute bands to use its name without repercussion. A federal judge initially allowed this abandonment argument to proceed, though noting it might be difficult to prove. However, a subsequent ruling in May determined that Legacy Reunion had committed trademark infringement. As part of a settlement agreement, Legacy Reunion offered to pay $750,000 in damages. The court declined to provide further clarification on future marketing practices, reiterating that the defendants were already on notice not to advertise or perform as the original Earth, Wind & Fire.
The court emphasized that while bands can use a plaintiff's trademark solely to identify the plaintiff's product under nominative fair use, the defendants in this case went too far. The judge ruled that Legacy Reunion prominently used Earth, Wind & Fire's marks and logo to mislead the ticket-buying public into believing the real band was performing and failed to sufficiently distinguish itself in advertisements and online presence. The court noted that it understood the need for the alumni band to use the name to do business but stressed that their methods implied sponsorship or endorsement and used historical legacy suggestions that falsely connected them to the original band.
