Haynes and Boone, LLP Associate Wesley Lewis spoke with Rolling Stone about a recent declaratory judgment lawsuit filed by country music group Lady A (formerly Lady Antebellum) against the Seattle-based blues singer Anita White over the right to use the name Lady A.
Here is an excerpt:
When country trio Lady Antebellum announced a name change in mid-June amid national conversations about racism, it was meant to be a gesture of goodwill. The band had been criticized for romanticizing the pre-war, slavery-ridden American South — so it chopped off the offending word and refashioned itself “Lady A.”
But Lady A was already someone else’s name: A 61-year-old black singer in Seattle, Anita White, had recorded and performed music with it for decades. In the days after White spoke with Rolling Stone about her shock, the band contacted the singer and posted on Instagram that the two parties were working toward an agreement. Last Wednesday, however, the band filed a declaratory judgment lawsuit against the singer in the U.S. District Court for the Middle District of Tennessee, asking a court to affirm its right to use the name Lady A. The trio — Hillary Scott, Charles Kelley, and Dave Haywood — said in an accompanying statement that White had asked for a $10 million payment, so “we are sad to share that our sincere hope to join together with Anita White in unity and common purpose has ended.”
The declaratory judgment suit essentially asks a court to affirm that both parties can use the name. “This is a proactive way to clear up a dispute,” intellectual-property attorney Wesley Lewis tells Rolling Stone. “I think the band was cognizant of the optics, because they said they are not seeking damages from Anita White. They’re not requesting that the court prevent her from using the name Lady A. This is a mechanism for parties to request that the court establish they have a legal entitlement to use this particular mark.”
While it’s technically correct that the band is “suing” Lady A, Lewis notes, that word alone “doesn’t provide the full picture of what’s going on here.”
Lewis and other attorneys say that time and scope will both be crucial points for the court to examine. The parties will first need to show how long they have been using the trademarks in commerce; the second factor in the court’s decision will be how broadly they have used the mark in commerce. (Trademarks deal with logos, merchandise, novelty items, and other items that can be sold or marketed; copyrights, which rear their head in infringement suits over songs and albums, are a different matter.)
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