They Fought the Law and Guess Who Won

A few months back, during one of his regular Wednesday night jazz jams at Tobacco Road, flautist Mark Krumich was approached by a tense man who wanted to know when Krumich's Roadkill Jazz Orchestra was going to take a break. Krumich, who has run the jam session at the venerable nightclub for two years, figured the stranger, Steve Massey, was a musician who wanted to sit in.

"So I talked to the guy on break," Krumich recalls. "And it turns out he also has a band called Roadkill. He tells me they have a patent on the name. Now, keep in mind, my band was not doing any recordings. We were not looking to promote our name. So I just joked with the guy. I bought him a drink. And I thought that was that." Surely, Krumich figured, the matter would go no further. Why would a rock band named Roadkill (Rock and Rolled Animals) want to hassle with a jazz outfit called Roadkill Jazz Orchestra?

There was one factor Krumich didn't take into account: three of the members of the other Roadkill are lawyers.

Inevitably, a few weeks later in July, the owners of Tobacco Road received a certified letter from attorney Gary Stiphany, ordering Krumich's band to "cease and desist from all further use" of the name Roadkill.

"The name 'Roadkill Jazz Orchestra' is confusingly similar to, and infringes upon, our client's trademark and service mark," Stiphany noted. "Indeed, there have already been instances where members of the consuming public have been confused into believing that our client is the band playing at Tobacco Road Restaurant when, in fact, it is not." The letter goes on to threaten legal action ("injunctive relief, treble damages, attorney's fees, and costs") should the jazz band not drop its name.

The verdict from Road owners Patrick Gleber and Kevin Rusk was unanimous.
Gleber: "Sure it's bullshit. But so is every other time we get sued. We didn't want to do deal with all the hassle."

Rusk: "We don't want to get into a fight with a bunch of lawyers. It costs them nothing to jerk us around."

Krumich says he was disappointed, but not crushed. "We jammed for more than a year with no name, and people were always coming up to me to ask what the band was called. I chose Roadkill as a joke, because of the connection with the Road. We were even going to get some T-shirts printed up. But the name was kind of random to begin with, so I didn't make a stink."

Mark Weiser, the booking agent for Tobacco Road, was a bit more indignant. "Actually, I was incensed that these guys were throwing their name around," says Weiser. "I've seen them. They play classic rock covers. It's not like they've recorded. If it was a big corporate tour and promotion, I could understand. But for one local band to bitch at another over something like this just doesn't make sense."

Weiser defied the owners' orders to drop the name from all Tobacco Road literature. Instead, he went ahead and printed the bar's September newsletter using the forbidden moniker. By this time, though, Gleber and Rusk had received a second, more insistent, letter. After they reiterated to Weiser their desire to avoid a lawsuit, Weiser spent the better part of a night taping over the word "Roadkill" on about 10,000 newsletters.

Attorney Steve Massey, who plays guitar and congas for Roadkill (Rock and Rolled Animals), says the threatening letters weren't intended maliciously. "This wasn't an uptight thing," he argues. "There was a legitimate confusion. Fans were calling us, upset, saying, 'We thought you were going to be at Tobacco Road.' Besides, we went to a considerable amount of trouble to get our name copyrighted, and if we don't challenge when somebody violates our copyright, we lose that protection."

Trademark attorney Mitchell Stabbe of Holland & Knight, tends to agree. "Do they have a good claim in court? Yes. 'Roadkill' is a very strong mark," Stabbe says admiringly. "Very good. Very solid. The rock group was using the name before the jazz group, and obviously they both work in the same area. That's the whole point of trademark law: to avoid consumer confusion. And people were being confused."

The copyright protection the band is guarding so carefully could prove vital, Steve Massey says, if his four-year-old quintet -- which does play mostly classic rock covers -- ever makes a significant impact. "We'd like to be successful someday and record our own original songs," Massey stresses. "The Roadkill Jazz Orchestra is just a pickup band." (Massey does concede, however, that his band members have day jobs, while the jazz players are full-time musicians.)

In any event, the Roadkill dispute is officially over, and Krumich's troupe is again nameless. "I joked with [Road owner] Patrick that we should rename the band Roadkilt, just to piss the Roadkill guys off. But we wouldn't do that, especially to lawyers. I toyed with the name 'The Tobacco Road Quartet.' But that sounds too corny. As of now, we're still sort of looking."

The name "Cease and Desist" is still under consideration.


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