One Direction is one of the hottest boy bands in years, formed by Simon Cowell after the bands' members finished strongly on the seventh season of UK's "X-Factor." On Saturday, the group had a successful performance on "Saturday Night Live." The band's arrival is being hailed as the new "British Invasion."
But there's a problem. Another U.S. band already calls itself One Direction.
Cowell's record label, Syco Entertainment, and Sony Music have just been hit with a $1 million lawsuit that says that One Direction (U.K.) can't navigate itself into U.S. jurisdiction without causing consumer confusion and destroying the goodwill of the U.S.-based doppelgänger. As proof of the confusion, the plaintiffs point to a recent segment on NBC's "Today Show," where the British teen-scream group was shown, accompanied accidentally by music from the U.S. band. So now One Direction (U.K.) is being threatened with losing its name.
One Direction (U.S.) is fronted by Sean O'Leary and while not signed to any label, the pop group has been selling its album, "The Light," on iTunes since February, 2011.
The band's attorney, Peter Ross, points out that this is well before the UK band -- made up of Louis Tomlinson, Harry Styles, Liam Payne, Zayn Malik and Niall Horan -- released its own album, "Up All Night," in America. That album came out last month as No. 1 on the Billboard chart.
But Ross maintains that Cowell's company should have known better than to bring his band to the U.S. as "One Direction." The attorney says that One Direction (U.K.) was made aware of One Direction (U.S.) when it attempted to file an application with the U.S. Trademark Office. (The matter is now before the Trademark Trial & Appeal Board.) "Rather than change their name or do anything to create confusion or avoid damage to our good will, they chose to press ahead and come on their tour," says Ross.
Proving consumer confusion might be a snap for the plaintiffs.
The American band posted a song, "2012," on YouTube, and it's been viewed more than 100,000 times. In addition, "2012" has been selling nicely on iTunes. Part of the success of One Direction's (U.S.) song could be attributed to consumers who stumbled on the song after searching for the more popular act. Ross also says that NBC's "Today Show" mistakenly played "2012" when introducing the hot UK act.
Proving harm could be an entirely different issue in the coming case, though.
The American group might be the beneficiary of attention they wouldn't have ordinarily have gotten -- for better or worse. On one hand, sales have been nice. On the other, some commentators on YouTube have left nasty comments, perhaps after seeing and hearing something they weren't expected. Ross says it shows that the goodwill of his client's trademark is being denigrated.
With only so many great band names out there, the history of pop music is replete with band name disputes: Dinosaur vs. Dinosaur Jr.; Death from Above vs. Death from Above 1979; Galaxie 500 vs. Galaxie.
In some instances, bands simply agree to change their name. For instance, Pink Floyd was originally called the Tea Set before finding out about a band with the same name. Same goes for the Grateful Dead, originally called the Warlocks or the Chemical Brothers, originally called The Dust Brothers.
Other times, bands have been forced to add prefixes or suffixes to make a distinction to an existing band. See The Charlatans UK. the English Beat, or Wham UK.
But Simon Cowell and One Direction are allegedly resisting this direction, perhaps because they've already become quite famous.
"We've been in negotiations for a month to find a resolution," Ross says. "In our view, the negotiations weren't turning out to be very productive."
As a result, One Direction LLC has filed a lawsuit against Syco and Sony that seeks an injunction plus a million dollars in damages.
The defendants haven't yet responded to a request for comment.