In 2004, South Carolina became the first state to enact a “Truth in Musical Advertising” statute to regulate the use of music-group names, at least in live performances. Since then, at the urging of the Vocal Group Hall of Fame, several other states—including Connecticut, Illinois, Pennsylvania and North Dakota—have enacted similar laws, with more under consideration in additional states. The goal of these statutes generally is to prevent the “false, deceptive or misleading affiliation, connection or association” between a recording group and a performing group. But contractual or service-mark issues as to who owns the original group’s name may need to be resolved before a “Truth in Musical Advertising Statue” is enforced.

Sorting out claims to band names can be messy, complicated and sometimes lengthy. The nearly four-decade fight over the name “Moby Grape,” a 1960s San Francisco rock group, is a case in point. The band formed in 1966 and released its last studio album with some original members in 1971. But it wasn’t until July 2006 that the California Court of Appeal decided that the band, rather than the group’s original manager Matthew Katz, owned the Moby Grape name. Lewis v. Katz, A111654.

The five members of the music group had signed management and other contracts with Katz in 1966, after band members Skip Spence and Bob Mosley thought up the Moby Grape name. Later that year, the parties executed an addendum that stated in part: “It is understood and agreed that the name ‘MOBY GRAPE’ is the property of Matthew Katz. The undersigned [band member] has no ownership right, title, or interest in and to the name ‘MOBY GRAPE’ and he is entitled to utilize the same, only pursuant to the license and consent of Matthew Katz which may be revoked and cancelled at any time.”

A band with great potential, Moby Grape signed to CBS Records but never achieved significant popularity among record buyers. In 1967, the band members notified Katz that they were rescinding their agreements with him. In 1969, the musicians filed a complaint with the California Labor Commissioner challenging their contracts with Katz—including for alleged violations of the state’s Talent Agencies Act, Calif. Labor Code Sec. 1700 et seq., which requires parties who procure employment for artists to be licensed by the state. (The current language of the law doesn’t mandate a license for obtaining a recording contract for an artist.)

In 1970, the labor commissioner decided: “Katz, ‘independently and doing business as MATTHEW KATZ PRODUCTIONS and AFTER YOU PUBLISHING COMPANY, acted in the capacity of an unlicensed artists’ manager and, therefore, his contracts with [the band members] are void for failure of said respondent to comply with Sections 1700 to 1700.46 of the Labor Code.” Then in 1973, an attorney who represented Moby Grape’s then-manager (and record producer) David Rubinson, executed a settlement with Katz that purportedly gave Katz Moby Grape’s publishing and the ownership of the band name. None of the band members had signed the settlement agreements.

The band sued Katz in 1994 and the San Francisco Superior Court set the so-called 1973 settlement aside. The California Court of Appeal affirmed.



The Dispute Thickens

Still, the dispute was far from over. Katz and the band now filed news suits against each other. In 2002, the trial court upheld the Labor Commissioner’s 1970 ruling in favor of the band and the court of appeal affirmed. The band’s current claims against Katz, including for monies he allegedly still owed them, then proceeded to trial. The trial judge ruled that the band owned the “Moby Grape” name as well as the rights to the band’s recordings, performances and songs. (The court nevertheless found that Katz had committed no torts against the group.)

Katz appealed, arguing in part that he owned the band name because Moby Grape’s members had worked for him as employees. The court of appeal noted, however: “[T]he band's musical performances and albums were clearly a distinct occupation and the kind of occupation not done in a particular location or under the supervision of an individual. Indeed, composing and playing music is generally a creative process that is constantly changing as a result of the band members' processes. Moreover, this ‘work’ requires special skill.”

The court of appeal continued: “Further, the management contracts between the band members and Katz specified that the band was hiring the services of Katz as an independent contractor. … Katz's argument that [he was the employer] is extremely weak. He cites testimony by a witness that Katz put the band together and that Katz had asked this witness to acquire the facility for the band members to showcase their talent. This does not establish that Katz had control over the band members, but merely shows that he was carrying out the services for which he had contracted. Katz also cites [Grape member Peter] Lewis's testimony that Katz provided an amplifier and microphone as evidence that he supplied the instrumentalities or tools of the work. Again, this evidence does not establish anything other than Katz was performing services under the management contract and there is no evidence that he furnished the band with musical instruments.”

As for Katz’s claim of ownership based on his continuous use of the Moby Grape name, the court of appeal emphasized: “Evidence presented at trial established that in September 1967 the band members notified Katz that they were rescinding their contracts with him. During that same period, the evidence established that Rubinson produced the band's second album; he later became the band's manager. Evidence also showed that the name Moby Grape was associated with the band as the album covers featuring the Moby Grape had the names and picture of the band members. Further, the Labor Commissioner voided the contracts with Katz, including the addendum to the management contracts, which had provided Katz with the right to the name Moby Grape. Thus, the evidence supported a finding that Katz did not have continuous use or control of the name Moby Grape after 1967. … Katz may have continued to market and use the name Moby Grape, but that was not done legally.”

More than anything, this case demonstrates the ongoing value that can attach even to the names of bands that have broken up years before. Perhaps the ultimate irony of the decades-long Moby Grape fight may have been, to quote the court of appeal, that Grape members Bob Mosley and Peter Lewis “testified that Katz did not [even] like the name Moby Grape and suggested other names.”

This article is based upon a piece that appeared in Entertainment Law & Finance.

Stan Soocher is an Associate Professor of Music & Entertainment Industry Studies at the University of Colorado at Denver, where he has served as Music Department Chair.

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