A feud that has split one of regional Mexican music’s most successful groups has raised several legal issues as well as the age-old question: What’s in a name?
Alacranes Musical, the youthful Chicago group that blends an urban image and vocal stylings with bouncy duranguense, has sold over a million copies of its albums in the U.S. alone, according to Nielsen SoundScan. The group also drew a record 74,147 in paid attendance when it played the Houston Rodeo & Livestock Show with norteño legend Ramon Ayala on Mar. 15.
But six of the eight band members have since defected to new management and continued to schedule shows as Alacranes Musical, even while their two former bandmates have assembled a new group under the same name.
As of Wednesday, both groups’ Web sites showed concert dates scheduled for the coming days, including dates in Texas and New Mexico.
Aguila Records, the company that has managed Alacranes Musical for several years and licenses its recordings to Fonovisa, filed a federal lawsuit last week against the six band members, the group’s founder and their new management company, Martin Fabian’s Nueva Generacion Music Group. The suit alleges copyright infringement (of Alacranes’ name and logo), unfair competition, breach of contract and interference with the band’s contractual relations.
The lawsuit seeks damages of at least $75,000 on each of three counts and $50,000 on another count, to recover alleged profits that the departing band members and their new management have earned under the Alacranes name since the split-as well as attorneys’ fees.
The suit came after Oscar Urbina, Jr., one of the members who left the label, filed a petition to cancel Aguila Records’ trademark of the Alacranes Musical name-which Aguila founder Pedro Avila registered in 2006. Included in Urbina’s petition is a copy of an Alacranes Musical CD cover and label from 1999, prior to Avila’s involvement with the group. Elsewhere in the petition, Urbina claims the group, composed mainly of his family members, began using the name in 1995.
In addition to a prior-use argument, Urbina also alleges that Avila doesn’t own the trademark, but was simply allowed to use it per Urbina’s 2003 artist’s contract.
On the other hand, Aguila Records’ suit specifies that the same 2003 contract “assigned in perpetuity all trademark and other rights to the name ‘Alacranes Musical'” to the label.
Aguila Records trademarked the band’s scorpion logo in 2008; the other side’s new manager claims the Urbinas created the logo in 2002.
While a trademark registration is a considerable hurdle to overcome in terms of proving a non-registrant’s right to the name, “the fact that [Avila] registered the mark doesn’t necessarily mean he automatically wins,” says music industry attorney Christian Castle.
“The decision would probably turn on what is in that contract. I wouldn’t assume it’s a slam-dunk for either side.”
Neither Pedro Avila nor his attorneys could be reached for comment. A hearing on a preliminary injunction motion filed by Aguila Records to stop the alleged “infringing activity” while the case continues was scheduled for June 19. A hearing on Urbina’s petition to cancel Aguila Records’ trademark registration is scheduled for June 30.
Meanwhile, Martin Fabian-a veteran of a 2006 name fight over another successful act, his current client Grupo Montez de Durango-is confident his Alacranes will release an album under that name.
“We have the album done, we have a strategy to internationalize them,” says Fabian, adding that the first single by his new group is a duet with top Fonovisa act Espinoza Paz. “We’re ready.”
Fabian says the first option to release the album, “Juntos 4ever,” would go to Fonovisa. But a Fonovisa source says all the Alacranes members are signatories to the exclusive license that Aguila Records has with Fonovisa, a reality that complicates any effort by the departing members to get out of their contract and record separately with Fonovisa. Under the Aguila license, Alacranes signed a new four-album deal with Fonovisa late last year.
The case highlights the importance of a band’s name to its brand. In a genre whose big groups often split off from each other and reassemble under new names, a famous name may be the only part of a group that the audience consistently recognizes. In the case of Alacranes, however, its boy-band-like following means the individuals, particularly the two vocalists that stayed with Aguila Records, are popular too.