Parsons v. Regna

In trademark suit brought by musician Alan Parsons against concert promoter, Eleventh Circuit affirms district court’s preliminary injunction prohibiting defendant from using group name “The Original Alan Parsons Band The Project – The Men Who Made The Records.”

Plaintiff Alan Parsons, of the namesake band The Alan Parsons Project, filed suit against concert promoter John Regna and his company asserting claims of trademark infringement based on Regna’s use of various trademarks associated with The Alan Parsons Project. Parsons founded the band with Eric Woolfson in the 1970s. Although the two occasionally hired additional musicians to collaborate on specific songs, none of those musicians were considered members of the band. Parsons registered trademarks for “ALAN PARSONS” for audio and video recordings and live musical performances and for “ALAN PARSONS LIVE PROJECT” for live performances by a musical group. Parsons also commonly used the mark “THE ALAN PARSONS PROJECT” in connection with his band. Parsons worked with Regna from 2009 to 2018 to promote his brand at live concerts. During this time, Regna made statements to the effect that Alan Parsons and Eric Woolfson were the sole members of The Alan Parsons Project. After a falling out between Parsons and Regna, Regna attempted to promote a group he called “The Original Alan Parsons Band The Project – The Men Who Made The Records” both overseas and in the United States. The group included session musicians who had occasionally recorded music with The Alan Parsons Project.

A district court in Florida issued a preliminary injunction prohibiting Regna from using Parsons’ trademarks. On appeal to the Eleventh Circuit, Regna put forth a three-pronged attack, arguing that the district court abused its discretion in issuing the preliminary injunction because the court lacked subject matter jurisdiction over Parsons’ infringement claims as they related to activities outside the United States, that Parsons lacked standing under the Lanham Act and that Regna’s use of Parsons’ trademarks constituted a nominative fair use defense, which applies when a defendant uses the plaintiff’s trademark to describe the plaintiff’s own products or services in order to compare them to the defendant’s product. The Eleventh Circuit rejected all three arguments and affirmed the injunction.

The court first determined that the trial court had jurisdiction over Parsons’ claims because Regna’s infringing activities had substantial effects in the United States. Even though Regna’s group performed only once in Europe, the fact that Regna ran his business in the U.S., solicited the former musicians to play in the U.S., maintained infringing internet domains in the U.S. and sent emails from the U.S. to solicit infringing bookings all supported the application of the Lanham Act to Regna’s activities.

The court also found that Parsons had standing to pursue claims under the Lanham Act because he was the registrant of the various marks associated with The Alan Parsons Project and because he continuously used the name of the band over a substantial period of time.

The court also determined that Regna was not entitled to a nominative fair use defense. The fact that the name of Regna’s group was so similar to The Alan Parsons Project and that Regna had admitted that only the original founders could be considered the “original” Alan Parsons Project was sufficient for the court to deny Regna’s request for nominative fair use. The fact that Regna promoted his band as original “musicians” of The Alan Parsons Project band and not as original “members” was a distinction that made little difference, according to the court. 

Summary prepared by Tal Dickstein and Michael Segal.