Ozzy Osbourne is using a somewhat untested legal theory to argue that he is entitled to a half share of the Black Sabbath name even though he may have signed away his trademark rights nearly 30 years ago.

As one intellectual property expert has observed, there is “no consistent standard for ascertaining the ownership of band name marks.” Osbourne plunged into that murky legal area last month by filing a lawsuit in New York which challenges lead guitarist Tony Iommi's claim to exclusive ownership of the Black Sabbath name.

Iommi, the one constant during all the band's fluctuating lineups, registered "Black Sabbath" as a mark in the U.K. in 1999 and in the U.S. the following year. He says he became sole owner after Osbourne and the other original band members, Geezer Butler and Bill Ward, assigned their rights to him in the 1980s.

Osbourne's complaint seeks a court order declaring he is a co-owner of the mark based on “the quality control he has exercised” over the exploitation of the mark since he rejoined Black Sabbath in 1997 after a 16-year hiatus.

“As you probably are aware, whoever controls the quality of goods or services marketed under a trademark owns that trademark,” Osbourne attorney Howard J. Shire wrote Iommi's lawyer in a Jan. 26, 2009 letter that is attached to the suit.

But Shire cites a precedent -- Liebowitz v. Elsevier Science Ltd., 927 F. Supp. 688 (1996) -- which involved a trademark dispute between an editor and a publisher. And it is by no means clear how the courts would apply a “quality control” standard in the context of a band name battle.

The Black Sabbath battle erupted after Iommi filed his own trademark infringement suit in December against Signatures Network, a company to which he had licensed the band's merchandising rights. “[B]y 1985, Iommi had unequivocally obtained sole ownership of and rights in and to the Black Sabbath name from each of the other original members of the band,” the suit said.

Describing Osbourne as “at least a co-owner of the Mark,” Shire argued in the Jan. 26 letter that any assignation of rights to Iommi

does not preclude Ozzy's ownership interest in the Mark based on subsequent events such as, for example, his and [his wife] Sharon's controlling the nature and quality of services rendered under the mark from at least 1997 to date.

In a trademark case involving the soul group New Edition and its record label, a Massachusetts judge found the group owned the name after determining that the group's members controlled the distinctive quality or characteristic for which it was known by the public. Bell v Streetwise Records Ltd., 640 F. Supp. 575 (1985).

With his screeching vocals and flamboyant showmanship, there is no doubt that Osbourne has made a vital contribution to the distinctiveness of Black Sabbath. “[R]ock fans worldwide recognize Ozzy, the 'Godfather of Heavy Metal,' as the driving force behind the Black Sabbath band,” he says in his suit.

But since 1997, the band's recordings have mostly been limited to compilations of old material and Iommi and Butler collaborated with another vocalist, Ronnie James Dio, in recording the new studio album “The Devil You Know” under the alternative band name Heaven and Hell.

Some courts, moreover, have resolved band name disputes without considering quality control. In a New York case -- Marshak v Green, 505 F. Supp. 1054 (1981) -- a judge barred an original member of The Drifters from forming another group under the same name because he had assigned his trademark rights to the manager of the original group.

By Matthew Heller
6/10/09