## Facts

- Five teenage performers (Bell, Bivins, Brown, DeVoe, and Tresvant) performed in Boston under the name “New Edition” beginning in 1980 or early 1981.
- Producer Maurice Starr and record companies Streetwise Records, Ltd. and Boston International Music, Inc. produced and marketed the group’s first album, *Candy Girl*, and related singles.
- Each performer (then a minor) signed an individual recording agreement with Streetwise; defendants later relied on these agreements to claim rights in the “New Edition” name.
- After commercial success, the performers obtained new management and entered a new recording relationship (ultimately with MCA Records).
- In 1983, the performers disaffirmed their Streetwise recording contracts based on minority under Massachusetts law.
- Streetwise/BIM claimed they created a producer-controlled “concept” called “New Edition,” asserted the name identified their recordings rather than the individuals, and stated an intent to use “New Edition” with different performers and to seek federal registration.
- The performers and MCA sued under Lanham Act § 43(a) and related Massachusetts unfair-competition and anti-dilution theories; defendants counterclaimed seeking to bar plaintiffs’ use of “New Edition.”

## Issues

1. Who owned the trademark rights in “New Edition” for purposes of Lanham Act § 43(a) and related state-law claims: the individual performers (and their current label) or the original producer/label entities?
2. If the name arose through a joint undertaking between performers and producers, how should ownership be allocated based on what consumers understand the mark to identify?
3. Would defendants’ use of “New Edition” for different performers constitute false designation of origin or passing off likely to cause consumer confusion?

## Decision

- The court held that the five performers owned the “New Edition” mark.
- The court found ownership based on (a) priority/first appropriation and, alternatively, (b) a joint-endeavors analysis.
- The court found the mark’s identified “quality” to consumers was the performers themselves—their distinctive personalities and performance style—not a producer-driven concept.
- The court granted injunctive relief preventing Streetwise/BIM (and those acting with them) from using “New Edition” in a manner likely to cause confusion or to pass off other performers as the original group.
- Defendants’ counterclaims seeking to enjoin plaintiffs’ use of “New Edition” were rejected.

## Legal Principles

- Trademark rights in an unregistered mark generally arise from actual use and the goodwill created through that use; priority may be established by first appropriation in the marketplace.
- In disputes over a performing group name, ownership turns largely on what the consuming public understands the mark to identify; when the mark signifies the performers’ identity and style, rights generally follow the performers.
- A producer’s “concept group” theory does not control when the public associates the mark primarily with the specific artists rather than an abstract production concept.
- Using a group name to market substitute performers can constitute false designation of origin/passing off under Lanham Act § 43(a) when it is likely to cause confusion as to source, sponsorship, or affiliation.
- Disaffirmance of minors’ recording contracts does not, by itself, transfer trademark ownership to a label or erase the goodwill created by performers; trademark ownership is assessed independently from contract enforceability.

## Conclusion

The court determined that “New Edition” functioned in the marketplace as a designation of the five performers, giving them priority-based ownership (and ownership under a joint-endeavors framework), and it enjoined the original producer/label from using the name to market different performers because such use would likely confuse consumers and misappropriate the goodwill associated with the band members.


Bell v. Streetwise Recs., Ltd., 640 F. Supp. 575 (D. Mass. 1986)