Overview
(May 15, 2024) – Steptoe LLP obtained a major victory for our client, legendary new wave band The Plimsouls. Formed in Los Angeles in 1979 by singer-songwriter Peter Case (ex-Nerves), bassist Dave Pahoa, drummer Lou Ramirez, and guitarist Eddie Munoz, the Plimsouls released two studio albums before breaking up in 1984. Their hit song A Million Miles Away was featured in the movies Valley Girl and Speed and they appeared as themselves in several scenes in Valley Girl.
The case arose when guitarist Eddie Munoz obtained a trademark on The Plimsouls’ name and began performing as “The Plimsouls” without his bandmates. Represented by Steptoe, Mr. Case, Mr. Pahoa, and Mr. Ramirez brought a proceeding on behalf of The Plimsouls partnership before the US Patent and Trademark Office’s Trademark Trial and Appeal Board to cancel Mr. Munoz’s trademark. (Sadly, Mr. Pahoa died in September 2023, but the case was continued by his widow Kathy and his children.)
A three-judge panel held that The Plimsouls partnership owned the band’s name and Mr. Munoz had no individual right to the trademark. The judges rejected Mr. Munoz’s arguments that the partnership had dissolved and that The Plimsouls had abandoned their name by not playing live for years.
The judges laid out a clear and helpful standard for who owns a band’s name. Importantly, live performance is not required:
Petitioner [The Plimsouls] has not abandoned its mark . . . because the band’s music has remained on sale and has been otherwise distributed in various ways through the band’s 45-year existence. Respondent [Eddie Munoz] is one of the Plimsouls, and he and his bandmates in the original Plimsouls have collected and continue to collect royalties on the band’s music, and have continued to pursue their joint business interests in other ways.
[T]he record reveals the parties’ joint intention and expectation since 1979 that they would own the mark THE PLIMSOULS together, in partnership.
The Steptoe team included partners Chris Paparella and Michael Allan and counsel Justin Ben-Asher and Bruce Bishop.
Read more at Billboard (subscription may be required).
About Steptoe
In more than 110 years of practice, Steptoe has earned an international reputation for vigorous representation of clients before governmental agencies, successful advocacy in litigation and arbitration, and creative and practical advice in structuring business transactions. Steptoe has more than 500 lawyers and other professional staff across offices in Beijing, Brussels, Chicago, Hong Kong, Houston, London, Los Angeles, New York, San Francisco, and Washington. For more information, visit www.steptoe.com.
