What essentially is a trademark dispute has taken on dinosaur proportions due to the participants involved – the children of the late US musician, Frank Zappa, who died on the 4th December 1993.
Zappa Plays Zappa was a tribute band formed in 2006 by Dweezil Zappa, the eldest son of the late Frank; and as the name implies, performs the music of his father. The Zappa Family Trust (ZFT) managed the late musican’s estate, with his widow Gail Zappa as its Trustee. On July 26th, 2006 the ZFT filed a trademark registration application with the United Sates Patents and Trademark Office (USPTO) for the name ZAPPA PLAYS ZAPPA and was granted an unopposed registration on May 15, 2007. For nearly a decade, Dweezil Zappa performed under the monicker of Zappa Plays Zappa, playing the music of his late father to audiences worldwide and winning one Grammy in 2009. So far so good.
In October 2015, Gail Zappa died leaving two of her four children – Ahmet and Diva, the younger siblings, as the Trustees of the ZFT with a share of 30% each, thereby handing control of the Trust over to them. All four children are beneficiaries, with – Dweezil and Moon, the older siblings – on 20% each.
In February 2016, ZFT filed an Application (86918908) with the USPTO to register the name ZAPPA as a trademark in the field of entertainment services to include live music performances, personal appearances in concert, live music concerts, etc. In April 2016, prior to a forthcoming Zappa Plays Zappa tour starting on 1st July 2016, Dweezil’s lawyer received from ZFT’s lawyer, a cease and desist letter informing them that the Trust’s permission was required for him to perform their copyrighted music and the use of their trademark name and that he risked copyright infringement and damages of $150,00 per song. Dweezil’s response was to change the name of the tour to Dweezil Zappa Plays Frank Zappa. In an interview with the New York Times on April 19, 2016; he claimed that the name change was made to avoid a legal conflict with ZFT who owns the trademark ZAPPA PLAYS ZAPPA and the rights to the songs of Frank Zappa.
In response Ahmet posted an open letter to Dweezil on Facebook in which he disclosed that the fee being asked to use the Zappa Plays Zappa name was a nominal fee of $1 and that the profits from performing the songs and selling merchandising would go to the ZFT and distributed among the four beneficiaries. Dweezil responded with his own open letter on his website in which he claimed that the present dispute between him and ZFT arose due to 100% of merchandising income having been withheld from him by Gail Zappa since 2006 and that the Trust owed him $2.5m in merchandising sales. The $1 deal offered by ZFT included a demand that ZFT sell merchandising on the tour and collect 100% of the profits – a deal he could not accept.
In June 2016, two weeks before the start of his tour, Dweezil’s lawyer received another cease and desist letter from the Trust’s lawyer informing them that the name Dweezil Zappa Plays Frank Zappa infringed on their registered trademarks of “Zappa” and “Frank Zappa.” Dweezil changed the name to ‘50 Years of Frank: Dweezil Zappa Plays Whatever the F@%k He Wants – The Cease and Desist Tour’, not because he felt he had done anything wrong, but because he did not want to keep paying $30,000 every time he received a letter from the Trust. Had he ignored the letter and gone ahead, the venues would have received infringement letters putting the tour in jeopardy and incurring further legal costs. The Trust did not object to the latest name change and the tour went ahead as scheduled.
On November 9th, 2016, Dweezil filed an opposition to the trademark Application (86918908) on the grounds that if granted, ZFT would have exclusive rights to use the name ZAPPA in connection with the services listed in the application and it was unclear what restrictions he (Dweezil) would have on his use of the word ZAPPA as his legal name. Simultaneously, Dweezil filed an Application to register his name “Dweezil Zappa” as a trademark in the field of ‘entertainment services in the nature of live musical performances’. The Trust responded by filing a letter of protest on the grounds that there would be a ‘possible likelihood of confusion’ under s.2(d) Trademark Act (US) citing their registrations of ZAPPAä and ZAPPA PLAYS ZAPPAä granted for use in ‘… entertainment service in the nature of musical performances and recordings’. Dweezil’s application to register his name as a trademark was refused in May 2017 on the grounds of ‘likelihood of confusion’. Dweezil has filed an appeal and the outcome is yet to be decided.
A search of the USPTO applications reveals that ZFT has also filed several applications to register the name ZAPPA for a multitude of services, inter alia, in the fields of clothing, t-shirts, edible oils and seeds, beverages, cosmetics, e-cigarettes and smoking paraphernalia, restaurants and bars, musical instruments, record production services, and entertainment services in the nature of performances and recordings. (In the US, an application for registration is based on a bona fide ‘intent to use’ but the actual registration itself will not be finalised until use occurs).
Meanwhile, in an update on his website a few days ago (25 Sept 2017), Dweezil summarises his position in an appeal for support with his ongoing legal costs via PledgeMusic : “The ZFT is attempting to require me to license my own name from them and be forced to sell Official Frank Zappa (ZFT) merchandise at my shows, for which I would be expected to pay 100% percent of that income to the ZFT. They seek to impose this without making any contribution of any kind to my tour expenses, band salaries, tour bus, flights etc. They seek to enrich themselves, all while maintaining a claim that they own my first and last name”. The ZFT has not responded so far.
This open feud between the Zappa siblings raises issues with the USPTO of ownership in registering your own name as a trade mark and possible restraint of trade in preventing other family members from using that name in associated fields of use. In store for the future and possibly dependant on the outcome, may be similar disputes over registrations granted to the estates of other famous deceased musicians. The estate of John Lennon has similarities. Both siblings, Julian Lennon and Sean Lennon have registered their names with the USPTO with the classification (IC 41) of entertainment services in the nature of live musical performances and (IC 009) for musical sound and video recordings. Yoko Ono has also registered the name ‘John Lennon’ and ‘Lennon’ with the same classifications of use. Both Lennon siblings are singers, musicians and performers capable of performing the music of their father as – Lennon Plays Lennon – or similar, giving rise to a likelihood of confusion.
© George Chin LLB(Hons)