You Can't Sue For Trademark Infringement Forty-Five Years Later; Wailers Get To Keep Their Name

from the taking-your-sweet-time dept

Mon, Feb 4th 2008 12:01pm — Mike Masnick

If you're a music fan, and you hear of a band called "The Wailers," your first thought is most likely to be the band originally formed with Bob Marley, which continued to perform well after Marley's death. However, there's apparently another band called "The Wailers" that was formed in Seattle in 1959, pre-dating Bob Marley, Peter Tosh and Bunny Wailer getting together at Studio One in Kingston for Coxsone Dodd in 1963. Obviously, that was a long, long time ago, so it was a bit strange that the Seattle Wailers sued the Jamaican Wailers back in June for trademark violation. Considering the two bands had coexisted in some manner for 45 years, you would think there wouldn't be much of a problem. In fact, the Seattle Wailers only registered a trademark on the name in 2003. And, while they complained that the Jamaican Wailers owned the wailers.com domain name, that was registered before 2003. Luckily a judge has agreed, and told the Seattle Wailers that they waited way too long to file such a lawsuit, and there's no evidence that the Jamaican Wailers did anything in bad faith with their name or domain name. This is a good ruling, at least, but even the fact that the Seattle Wailers thought it was worth taking a shot at such a lawsuit shows how the concept of "intellectual property" has been changing recently. It really has reached the point, where people are associating any kind of intellectual property with having total and complete rights over things that shouldn't be limited that way. In an age where copyright, patent and trademark lawsuits are so commonplace, it's really no surprise that folks would dredge up a situation that had worked fine for 45 years and try to make a lawsuit out of it.

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Filed Under: bob marley, trademark, wailers

17 Comments

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quick cash, 4 Feb 2008 @ 12:37pm

Take a shot
Are you in anyway surprised at this? Clearly the Seattle Wailers were hoping to grab a quick stack of cash, most likely based on 'barracks-lawyer' legal advice. They were hoping for an out-of-court settlement but they got hammered when it went to trial. The unfortunate part of this tale is the Kingston Wailers had to waste money defending against such an obvious grab for cash.
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Anonymous Coward, 4 Feb 2008 @ 12:50pm

Legalize It
Come on, you know you want to.
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Killer_Tofu (profile), 4 Feb 2008 @ 12:55pm

Adding to Mike's Statement
I think it should be:
"This is a good ruling, at least, but even the fact that the Seattle Wailers thought it was worth taking a shot at such a lawsuit shows how the concept of "intellectual property" has been changing recently" for the worse.

Because it really is just getting worse from every view (except the greedy lawyer's view).
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Eliot, 4 Feb 2008 @ 1:24pm

Just to play Devil's Advocate...
They may not have been going for anything malicious. Suppose that you had a business on the West Coast quite a few years old called Fubar, and you went to register a website, only to find that a company on the East Coast just recently started a business but immediately registered the website, also called Fubar.

They may have just been giving it a shot without much hope of actually winning in the hopes of getting the URL.
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- Ima Fish, 4 Feb 2008 @ 1:35pm
  
  Re: Just to play Devil's Advocate...
  "Suppose that you had a business on the West Coast quite a few years old called Fubar, and you went to register a website, only to find that a company on the East Coast just recently started a business but immediately registered the website, also called Fubar."
  
  Trademarks only apply to limited areas. Thus, if your business was limited to the west coast there would be nothing illegal under trademark law for a second company to use the same name on the east coast.
  
  That's exactly why Hellman's mayonnaise is called Best Foods on the west coast. Some other company beat Hellman's to that geographic region with the name Hellmans.
  
  And it's ludicrous to imply that the Jamaican Wailers "just recently started" using the name. They've been successfully using the name "Wailers" worldwide since the 60s.
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  - ehrichweiss, 4 Feb 2008 @ 3:57pm
    
    Re: Re: Just to play Devil's Advocate...
    All that depends on where you filed your trademark. If you registered it with the feds then you have nationwide ownership of the trademark.
    
    Another parallel though is that I could file for a trademark of "Intel" for my line of clothes(this specific example lost in another country(Malaysia?) but works here in the US) and Intel, the CPU company, won't have any case since we're in different trades altogether. If I so much as branched out into "clothing for the computer geek", I'd have a much harder time proving I was innocent though since I'd then be using the name with a reference to technology.
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Anonymous Coward, 4 Feb 2008 @ 2:00pm

....
I'm waiting for companies like WotC and Games Workshop to try and sue the Tolkien estate for usage of elves and orcs.
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Drbuzz0, 4 Feb 2008 @ 2:04pm

Yippie! Now I can name my band what I want!
This is exactly what I was hoping to hear! My band, "The Beatles" has been wanting to put out our first album for a while, but apparently there was another band by that name once so we were worried. Also, there was apparently an album with the same name as ours: "Sergent Pepper's Lonely Heart's Club Band"

But now that it's been shown that you can use the name as long as the other band hasn't been around for a while, then we can go full steam ahead. We're already talking about our next album. We have two potential names: "The Jimi Hendrix Experience" and "The Dark Side of the Moon"
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- Jon, 4 Feb 2008 @ 2:41pm
  
  Re: Yippie! Now I can name my band what I want!
  Wow. That sounds like *IAA logic. Slight detail you missing in this article was the 45 years they had previously co-existed without issue.
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Anonymous Coward, 4 Feb 2008 @ 8:32pm

People will do anything when there is money involved.
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JustMatt, 5 Feb 2008 @ 6:02am

Re: People will do anything when there is money in
That, sir, is slander. I demand you remit the sum of 26.01 million dollars to the unfortunate widow of a certain foreign minister in Nigeria. I understand she has been having difficulties lately.
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Marc Arnold, 6 Feb 2008 @ 10:57am

Wailers
It is too bad that none of your writers has ever heard of The Wailers. They are from Tacoma, not Seattle, and they had a couple of Top 10 songs as The Wailers in the summer of 1959, including a stop at Dick Clark's American Bandstand to show case "Tall Cool One," rising on the charts at that time. They put out an album that year, The Fabulous Wailers, and had many more singles and albums over the years. They are not a Johnny come lately looking for the money-- they are professional musicians trying to protect their name.
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Kent Morrill, 6 Feb 2008 @ 10:59am

Wailers vrs Wailers
Just wanted to clear the air on why The Fabulous Wailers tried to inforce our Trade Mark "Wailers". We had no problem with Boy Marley & The Wailers co-existing with the West Cost Wailers for many years. However, when Marley died and his estate apparently did not allow the Bob Marley Wailers to continue using his name...they became "The Wailers" and the confusion began. Promoters thought we were them and they were us. Example: We were contracted to perform at the New Orleans Ponderosa Stomp Festival two years ago. The promoter called a week before the date and threatened to cancel us for "booking ourselves down the street the same week of the festival". Of course it was the other Wailers. This confusion continues. Our lawyer suggested we secur our Trade Mark which we did....and later suggested we inforce it to clear the confusion. We were never after a quick buck....only wanted to presever our history...a history that influenced many groups...including The Beatles, The Stones, Paul Rever, and many others. We also were the band that first converted Richard Berry's Latin song, "Louie Louie" to the rock legend that it became by The Kingsmen. We're not and never have been gold diggers..Just a rock band that feels that 50 years of creating should give us the right to preserve our history. Thats all. The courts saw things differently...so that's life in the sytem...and so now to try to make the distinction...we will prote our band with the title of our first album: The Fabulous Wailers
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david asher, 13 May 2008 @ 10:57am

Wailers Trademark
I have a copy of The Wailers first album form Jamaica, circa 1965. It is credited to "The Wailers", with a pic of a young Bob Marley with Peter Tosh and Bunny Wailer on the cover. It wasnt until later the Bob Marley and The Wailers name took over. Check out the 1973 album "Burnin" by "The Wailers" (with I Shot the Sheriff on it). You have bad information.
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Allen Petrich, 4 Sep 2010 @ 2:37pm

No, the Real Wailers didn't get to keep their name.
The real Wailers were the first. Marley, a more famous musician, came second. The suit was about the Wailers getting to keep their name, as you see on albums that predated Marley: The Wailers. If Marley's successor group (he is now gone) had any class, they would tip their hats to the guys who were first: The Wailers and come to an agreement that let the first Wailers use their original name.

The second Wailers group used the law to have exclusive use of the name and prohibit the original inventors of the name from using it. There is an example of this in the commercial world. The original company Budweiser in Czeck Republic wanted to come into the US to sell their beer. The had the name well before the US company. The US company stopped them from selling it under the name it had and was using long before Budweiser US. In a fair world, the arrangement would have been for Budweiser of Czeck Republic to use their own graphics and not mimic US-Bud and plainly state "Budweiser of Czeck Republic" and the US Budweiser, in their colors and scripts style to say "Budweiser - USA".

Fair is fair and the first is still the first.
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Dennis White, 20 May 2018 @ 7:00pm

The Wailers
You might believe that when anyone hears the name the "Wailers" they think of Bob Marley and the Wailers. The line "...there's apparently another band called "The Wailers" that was formed in Seattle in 1959" shows a real lack of music history knowledge. The "Seattle" Wailers were not from Seattle. They were from Tacoma Washington and remained proud of it until the last one of them dropped dead. The Wailers had a national hit in 1959 called "Tall Cool One". Their songs "Granny's Pad and "Out of Our Tree" are classic garage rock that any real music critic or historian would know. Anyone with a grasp of rock history is aware of the Wailers and their Seattle counterparts The Sonics.
The Jamaican band were NOT the first to use the name The Wailers. It was the band often referred to as "The Boys From Tacoma". I cannot say why they waited so many years to seek the trademark to their name. It's certain that they co-existed alongside the band Marley ended up in for decades...but that's not my point. The author seems to think the northwest Wailers were some small insignificant band tying to usurp someone else's intellectual property They were not. I know publishing and intellectual rights law, so the judgment in this case was warranted, however if the original Wailers had acted sooner they surely would have won this battle. History is history, but PLEASE do some research or have a clue before making yourself look so silly.
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Anonymous Coward, 19 Jul 2019 @ 8:59am

Waiilers name.....
The Seattle Wailers were without any DOUBT the original WAILERS and always will be!!!! {Spanish Castle was the Place!!!}
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