## Facts

- Steppenwolf formed in 1967; Nicholas Kassbaum joined as bass player in 1968 and performed with the band through April 1970, later appearing on some recordings.
- In 1968, band members entered a partnership agreement as co-equal owners and signed a recording agreement with a record label.
- After Steppenwolf disbanded in the mid-1970s, Kassbaum and others toured as “The New Steppenwolf,” prompting disputes over use of the Steppenwolf name.
- Several agreements followed, culminating in a 1980 agreement under which Kassbaum and The New Steppenwolf, Inc. relinquished “all rights” to use the name “Steppenwolf” to Steppenwolf Productions, Inc. and Steppenwolf, Inc. “for any purposes whatsoever.”
- After 1980, Kassbaum performed under another name but described himself in promotions as a “former member of Steppenwolf” for many years without objection.
- In 1996, Kassbaum joined “World Classic Rockers,” whose promotions described him as “formerly of,” “original member of,” or “original founding member of” Steppenwolf.
- The corporate owners of the Steppenwolf name and John Kay sent cease-and-desist letters asserting (1) the 1980 agreement barred any use of “Steppenwolf,” including descriptive references, and (2) the promotions infringed under Lanham Act § 32(1)(a) by creating likely confusion as to endorsement or affiliation.
- Kassbaum sued for declaratory relief; defendants counterclaimed for breach of contract and sought an injunction. The district court granted summary judgment for defendants, dismissed Kassbaum’s claim, and entered a permanent injunction barring the challenged phrases.

## Issues

1. Whether the 1980 agreement relinquishing “all rights” to the name “Steppenwolf” barred Kassbaum from truthfully describing himself as a former/original member of Steppenwolf.
2. Whether Kassbaum’s truthful use of phrases such as “formerly of Steppenwolf” violated Lanham Act § 32(1)(a) by creating a likelihood of confusion as to endorsement, sponsorship, or affiliation.

## Decision

- The Ninth Circuit reversed the dismissal, summary judgment, and permanent injunction, and remanded.
- The court held the 1980 agreement did not bar Kassbaum from truthfully referring to himself in promotional materials as a former/original member of Steppenwolf.
- The court held Kassbaum’s truthful descriptive references did not infringe under Lanham Act § 32(1)(a) because they were not likely to cause consumer confusion about current sponsorship or endorsement.
- Because Kassbaum’s conduct was not barred by contract or trademark law, summary judgment on defendants’ breach-of-contract counterclaim and the permanent injunction were improper.

## Legal Principles

- A contract granting exclusive rights to use a band name as a mark will be construed in context; absent clear and unambiguous language, it will not be read to prohibit truthful statements of historical association by a former member.
- Contract language relinquishing rights to a name “for any purposes whatsoever” can be limited to trademark-style use (identifying a band or musical services) rather than autobiographical or descriptive references to past membership.
- In assessing trademark infringement under Lanham Act § 32(1)(a), a truthful reference to a mark to identify a performer’s past affiliation, without suggesting current sponsorship or endorsement, is generally not likely to cause confusion.
- Longstanding, unchallenged course of performance may support a narrower interpretation of a name-rights agreement and weigh against claims that descriptive historical references are prohibited.

## Conclusion

The Ninth Circuit held that Kassbaum could truthfully describe himself as a former/original member of Steppenwolf despite an agreement transferring rights to the band name and that such descriptions, without more, did not create a likelihood of confusion under the Lanham Act, requiring reversal of summary judgment and the injunction.


Kassbaum v. Steppenwolf Prods., Inc., 236 F.3d 487 (9th Cir. 2000)