Federal Judge Orders Tommy Lee’s “Supernova” to Change its Name

Auric D. Steele

Rockstar: Supernova is the name of a reality/talent show hybrid, which was broadcast on CBS this summer.  The purpose of the show was to select a worthy lead singer from among a competing group of unknowns to front a band consisting of tattooed exhibitionist Tommy Lee, and other lesser known journeymen rockers.  The show averaged seven million viewers per week.  Last week, at the end of the season, the resulting “supergroup,” known simply as Supernova, was set to launch a world tour, release an album, sell lots of Supernova merchandise, and live happily ever after.

The fatal glitch in this scheme now appears to be the unavailability of the Supernova name.  A California based punk band called Supernova has been performing and selling albums under the “Supernova” mark since 1989.  The space-suit-wearing Supernova is perhaps best known for their “Chewbacca” song, which is featured on the soundtrack to “Clerks,” the classic Kevin Smith cult film.  For what it’s worth, at least one member of our staff has seen the group perform live.

Prior to the broadcast premiere of Rockstar: Supernova, members of the original Supernova filed a trademark infringement suit in federal court in San Diego.  The show’s producers, CBS, Tommy Lee and the other members of the soon-to-be band, were all named as defendants.  Despite the lawsuit, the defendants did not change the name of the show or the band that it was intended to spawn.  The suit seeks destruction of all merchandise and advertising materials containing the Supernova mark, and the publication of clarifying statements that the show is not associated with the original Supernova.

Supernova alleges bad faith on the part of the producers of the TV show and has presented evidence that the producers had actual notice of Supernova’s rights in the mark, and their prior and continued use of the mark in commerce.  As a result, Supernova is seeking punitive and compensatory damages, recovery of attorney’s fees, profits, and all damages sustained due to the misuse of Supernova’s mark.  Supernova asserts that the defendants continue to knowingly and deliberately infringe on Supernova’s rights, and that they continue to cause confusion and mistake among consumers as to source, sponsorship, and approval of defendants’ goods.

On September 13, as the finale of Rockstar: Supernova was taping, U.S. District Judge, John Houston, granted a preliminary injunction sought by the original Supernova, against any further use of the name by Tommy Lee’s group.  This injunction did not apply to the TV show.  The next day, producers of the show announced that the group’s name would hereafter be the same as that of the show, Rockstar: Supernova, rather than simply Supernova. However, this change may not be enough to avoid a claim of ongoing infringement.  Trademark infringement is based on likelihood of confusion in the minds of consumers.  Likelihood of confusion can still exist even where the marks are not exactly the same, especially when they are being used in the same industry.

For an excellent example of the careful analysis of factors, which a court applies to determine whether likelihood of confusion exists, see the recent decision in Winchester Federal Savings Bank v. Winchester Bank, 359 F. Supp. 2d 561 (E.D. Ky. 2004).  In that case, like Supernova, the marks were not identical, but the court determined that there was a likelihood of confusion on the part of consumers.

The Brand will continue to follow this story and report any developments as they occur.