A Tres Pinos-based band has set itself up for a globally prominent legal battle as it claims in a million-dollar lawsuit that it has the right to the name “One Direction,” the same name of a hugely popular British boy band managed by Simon Cowell.
The boy band battle became media fodder this week, with reports of the squabble covered in media outlets from TMZ.com and MTV to Entertainment Weekly and the New York Times. As an example of the intertwining of the bands, when Cowell’s One Direction group recently appeared on NBC’s “Today” show, music played in a promotion for the group’s performance was actually from the song “2012” by the San Benito County band, One Direction.
At the heart of the matter is which band has a legal right to use the name. The local five-member group – which includes three current or former San Benito High School students – contends it started in the fall of 2009 and has since gained more than 100,000 fans on Facebook. It also has put out an album that is available on iTunes. The band in November 2011 told The Weekend Pinnacle, in an interview about a Battle of the Bands competition, that it had launched in October 2010.
Cowell formed his group sometime in 2010 while members appeared on the British version of the television show “X Factor.”
“(The local band) put an album out nearly nine months prior to the One Direction in the U.K. putting theirs out,” said Dan O’Leary, whose 18-year-old son, Sean, is the lead singer of the local group. The father noted that the band’s launch-date discrepancy would have to be clarified in court.
O’Leary said the Tres Pinos band filed for a trademark on its name in February 2011 and “really had not paid much attention to it” until he was notified that Cowell’s Syco Entertainment label asked the U.S. Patent and Trademark Office to extend its decision on approval of the name.
“We really didn’t start anything,” Dan O’Leary said. “It was something they started by basically appealing to the trademark association about our application.”
After negotiations between representatives of the two bands proved fruitless, the San Benito County band One Direction this week filed suit in federal court against Syco and Sony Music.
“We weren’t getting anywhere” with the negotiations, said Los Angeles-based attorney Peter Ross. “We want to resolve this dispute in any way that makes sense. What doesn’t make sense for us is to have two bands out there with the same name.”
Dan O’Leary said the Tres Pinos band filed a cease-and-desist order with its British counterpart when it found out the U.K. One Direction had a U.S. tour planned.
“They came anyway and started touring with no regard to my son’s trademark,” he said. “If you’ve got kids yourself, you know how important it is to stand up for their rights.
“You have what they call common law rights – who had the name first and who applied for it. We applied months and months in advance of them, and our album was out nine months prior to theirs. We had been doing music months prior to their existence and they were well aware of our existence when they decided to adopt the name.”
Ross said he could not divulge details of negotiations between representatives of the bands, but he did confirm that the suit seeks $1 million in damages and asks for an injunction to stop Cowell’s group from continuing to use the name “One Direction.”
The British band has yet to reply to the lawsuit. It has 21 days from the filing to do so, according to Ross.
As the story of the dispute hit the tabloids and entertainment websites this week, many fans of the British band have disparaged the California band on comment boards.
“There’s a lot of ill will out there from some fans of the British band who think our California band is doing something wrong by using their own name,” Ross said. “The good will of the band is definitely being hurt.”
Dan O’Leary said the British tabloids “are chewing this up and twisting the facts slightly to make it appear we’re chasing them down” looking for money. “We didn’t strike first – we were here first – and we didn’t jump on anybody’s coattails. We got our coattails stepped on.”
Lead singer Sean O’Leary, a senior at San Benito High School, said that while the British fans are “pretty one-sided” in favor of their homegrown band, “a majority of them are like, ‘We like your music, but you have the same name.’”
O’Leary said that, in fact, the two bands are “completely opposite.”
“Ours is more of a rock-pop style with live instruments, a few synth sounds and some electronica,” he said. “There’s is more straight pop, all synth. We play our own instruments and write and record our own music.”
O’Leary is joined by bandmates Scott Nagareda – a 2011 SBHS graduate – Skylar Campbell, SBHS graduate Tyler Rodriguez, and Klaus Campbell. O’Leary said the media buzz “has been a roller coaster.”
“It got out two months ago that there was something going on and we had some pretty big news outlets write something about it,” he said. “We had very large traffic and people threw hate mail at us. Then within a couple days people turned around and said this music is really awesome. This shows the truth will prevail and we are a band that is here to enjoy.”
Ross, the attorney, said “facing a well-funded opponent and being the little guy is always a concern, but one of the beauties of the court system is only one person can speak at a time no matter how big you are. Just because you are a little guy doesn’t mean you don’t have rights.”
The Tres Pinos band is banking on the fact that it was the first of the two groups to “use the name in commerce,” which Ross believes will prove it owns the rights to the name One Direction.
“Ultimately, we hope the dispute is resolved and we get to go on making music,” he said. “We’re just going to wait for their response – then each side can learn about the other’s intentions and what really happened. Then we’d go to trial if necessary.”
Asked if he thought the matter would make it to court, Ross said that “most cases – the vast majority – are settled.
“The California band members harbor no hostility whatsoever to the British group,” he said. “They look forward to putting this behind them.”
