Metallica Pushing Ahead With Multiple Trademark Lawsuits

Metal pioneers are suing a number of companies for alleged trademark infringement.

Although Metallica have long been road warriors, touring tirelessly in support of their albums since their inception in 1981, in recent weeks the only action they’ve been seeing has been in courtrooms. The metal act is currently in the process of settling a series of lawsuits against such companies as clothiers Victoria’s Secret and Pierre Cardin, online retailer N2K, a tuxedo maker and a nail-file manufacturer.

Jill Pietrini, a lawyer handling Metallica’s trademark lawsuits against Victoria’s Secret, Pierre Cardin, West Mill (tuxedos), and Cosmar (nail files), acknowledged the recent flurry of lawsuits and said she could not explain why Metallica seem to be having so many trademark-infringement difficulties.

“The ones doing it are fairly sizable companies. I don’t know what the thought process is here,” Pietrini said. “I’m not sure why they think they can get away with it. Anyone who does a trademark search would come up with the Metallica name and see how much we protect the trademark.”

Metallica filed suit against Victoria’s Secret Jan. 14, alleging that the company used the name Metallica on lip pencils without authorization, and seeking injunctive relief and damages.

Similar suits were filed in December against West Mill, a tuxedo-manufacturing licensee of Pierre Cardin that allegedly used the name Metallica in advertisements for its products, and Cosmar, a manufacturer of nail files, which allegedly used the name Metallica on the files’ plastic sleeves.

Pietrini said the cases are close to settlement, an assessment with which Jonathan King, attorney for West Mill and Pierre Cardin, agreed.

“It looks like we’re resolving the case. We’re not carrying that line of tuxedos anymore. In the end it will be much ado about nothing,” King said. “It’s not a line we’re interested in pursuing. We could have changed the name and kept selling it, but we’ve resolved it.”

Julie Green, attorney for Cosmar, declined comment on the suit.

Known for a blistering metal attack on their early albums that produced songs such as “Blackened” (RealAudio excerpt), Metallica have slowed the pace in recent years and put their focus on creating more melodic songs such as “The Unforgiven” (RealAudio excerpt).

In a suit filed Nov. 12 in the U.S. District Court in Los Angeles, Metallica sued online retailer N2K, distributor Dutch East India Trading and the English label Outlaw Records over what they claimed is an unauthorized “live” album.

The band alleged that the defendants marketed and distributed the album Bay Area Thrashers, The Early Days without its knowledge or consent.

Metallica attorney Howard King said that N2K is no longer selling the album online and the suit is nearing resolution, with only a few details left to address.

“We’re real close. It should be done in the next week. N2K has asked for another week to respond to the settlement,” King said. “Based on the discussions we’ve been having, I anticipate in a week to 10 days we’ll resolve it with them.”

King said the band is also proceeding with a lawsuit against online retailer Amazon.com, seeking damages for trademark infringement. “They just answered the complaint,” King said. “It’s up to us to push the litigation along.”

Kay Dangaard, spokeswoman for Amazon.com, declined comment on the suit, citing company policy of not commenting on ongoing litigation.