What do you do when you’re a $2.5 billion company with a CEO who’s known to spend exorbitant amounts of money on dinner after playing blackjack?
Simple, sue an unsigned indie band from LA because their name is just too similar to your company’s name.
ViceVersa, whose band members are struggling to pay rent like most indie bands, were handed a cease-and-desist letter by Vice Media, who claim that the group’s name and logo sound and look way too much like that of Vice’s name and logo.
The letter argues that the band is “infringing on the exclusive rights held by Vice Media in the VICE® Mark” and is “likely to confuse consumers as to the source of services offered under [ViceVersa’s] mark, and wrongly implies that Vice Media sponsors, endorses or is otherwise affiliated with [ViceVersa].”
This cease-and-desist was issue in December, a full month after United States Patent and Trademark Office gave propositional approval to guitarist Christopher Morales to trademark “ViceVersa.” The letter sent by Vice goes on to accuse Morales of “unauthorized use of Vice Media’s intellectual property,” arguing that the group’s trademark application is “clearly for Mr. Morales’ commercial profit and gain, to the great detriment of Vice Media.”
Naturally, the cease-and-desist came with a series of demands, which included that the band should stop using the same ViceVersa, take down their website and all social media pages in addition to stopping the sale of all band merch. Oh, and Vice Media wants documentation of all revenue earned by the band since their formation in 2012.
If those demands aren’t met, the band could face “claims for injunctive relief and monetary damages.”
The group then released a YouTube video reading some of the letter and comparing their logo to Vice’s. Spoiler alert, the logos look nothing alike.
In a statement, ViceVersa said they have “never claimed to be affiliated or supported by Vice Media. A name change and complete brand makeover could potentially set the band back thousands of dollars and gravely harm their growing fan base and social media presence.”
These kind of things are pretty common, though, and ViceVersa’s attorney Harry Finkel isn’t surprised by the cease-and-desist letter. “You have a big company that is overzealous in protecting its mark,” he said. So, Finkel wrote back to Vice offering to “change some of the language” in the trademark application to make it clear that the group “would not be doing anything with TV shows or magazine publishing or publishing in general.” This way, the band could carry on without worrying about encroaching on Vice’s territory.
He never heard back from Vice. Instead, the media company filed a letter of opposition to the Trademark Trial and Appeal Board and requested that ViceVersa’s trademark application be denied. So, does the small indie group have a chance?
They sure do.
Finkel argues that legal precedent will work in his client’s favor and that companies “can’t protect commonly used words or phrases like ‘vice,’ when used inside of another word or phrase that is unique.” Since “vice-versa” has “little to do with Vice itself,” there’s a good chance that the group can come out on top.
“There is clear legal precedent they’re ignoring by moving ahead with the opposition,” Finkel added.
Meanwhile, a Vice spokesperson told the Huffington Post that ViceVersa’s trademark application “overlaps with the scope of our already existing federal trademark. This is a standard, cut-and-dry trademark matter and we are not involved in litigation with this band.” You know, it’s really un-rock-and-roll of Vice to be going after a small band like this, especially considering the fact that they started a a small punk magazine in the early 1990s.
“This is our life and dream,” Morales said. “All we want to do is rock out.”