## Facts

- The Beach Boys formed in 1961; in 1967, the members formed Brother Records, Inc. (BRI) to hold and administer the group’s intellectual property, including the registered trademark “The Beach Boys.”
- In the early 1990s, touring operations shifted to Brother Tours, Inc., while BRI was to receive compensation for trademark use from touring income.
- By 1998, band members’ touring arrangements fractured; BRI granted Mike Love a written, non-exclusive license to use “The Beach Boys” in connection with his touring band.
- At a July 1998 BRI board meeting, directors (including Alan Jardine) voted in favor of issuing non-exclusive licenses to each shareholder, but BRI never executed a comparable written license with Jardine.
- Jardine organized and toured with a separate group using names prominently featuring “Beach Boys,” including “Beach Boys Family & Friends,” with “Beach Boys” emphasized in promotion.
- Evidence showed actual confusion among promoters and consumers, including mistaken beliefs that Jardine’s group was the official Beach Boys or was authorized by them; at least one promoter billed the act as “The Beach Boys.”

## Issues

1. Whether Jardine’s use of “Beach Boys” in the name of his touring group, without a license, infringed BRI’s registered mark under the Lanham Act.
2. Whether Jardine’s use was protected by nominative fair use or classic (descriptive) fair use.
3. Whether Jardine established enforceable contracts for lifetime employment and trademark licensing, and recoverable damages.
4. Whether the district court abused its discretion in denying leave to amend Jardine’s counterclaims.

## Decision

- The Ninth Circuit affirmed summary judgment for BRI on Lanham Act trademark infringement and affirmed a permanent injunction barring Jardine from using “Beach Boy” or “Beach Boys” in his group’s name.
- The court held Jardine’s naming and promotional use was likely to cause confusion and in fact caused actual confusion.
- The court rejected nominative fair use because Jardine used “Beach Boys” as a dominant part of his group name and his conduct suggested sponsorship or endorsement beyond what was reasonably necessary for identification.
- The court rejected classic fair use because “The Beach Boys” functioned as a source identifier and Jardine’s use traded on the mark’s goodwill rather than using the words descriptively.
- The court affirmed summary judgment against Jardine on counterclaims for breach of a lifetime employment agreement and breach of a trademark license, citing lack of proof of a binding agreement with definite terms and failure to prove damages with reasonable certainty.
- The court affirmed denial of leave to amend due to undue delay and resulting prejudice in an already advanced case.

## Legal Principles

- Trademark infringement under the Lanham Act may be shown through likelihood of confusion; evidence of actual confusion strongly supports infringement.
- Nominative fair use permits use of another’s mark only as reasonably necessary to identify the trademarked product or entity and forbids use that suggests sponsorship or endorsement.
- Classic (descriptive) fair use applies when words are used descriptively and not as a mark; it does not protect use that functions as a source identifier or trades on the trademark’s goodwill.
- A corporate shareholder or band founder has no personal right to use a corporation’s trademark absent a valid license.
- Contract claims require proof of an enforceable agreement with definite terms and proof of damages with reasonable certainty; speculative damages are not recoverable.
- Denial of leave to amend under Rule 15(a) is proper where amendment would cause undue delay and prejudice.

## Conclusion

The Ninth Circuit held that Jardine’s unlicensed use of “Beach Boys” as the dominant feature of his group’s name infringed BRI’s registered mark and was not protected by fair use doctrines, and it affirmed injunctive relief and the dismissal of Jardine’s contract-based counterclaims and proposed amendments.


Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003)