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Judge declines to force Lady A v Lady A case to Washington state

By | Published on Friday 14 May 2021

Lady A

The big old Lady A trademark litigation is staying in Tennessee. Lady A are very happy about this news. Lady A is rather annoyed. And if anyone is confused about any of this, maybe you should put yourself forward as a witness supporting Lady A’s defence and countersuit. Lady A, however, would prefer it if you kept quiet.

One of the Lady As in this ongoing legal battle, of course, is the band formally known as Lady Antebellum. They announced in June last year that they were changing their name, due to the word antebellum’s associations with the slave trade. The new name they chose was Lady A, a nickname they said that many fans already used. However, they were quickly criticised by the other Lady A in the case, blues singer Anita White, who had been performing under that name for more than 20 years.

Initial discussions attempting to resolve the issue appeared positive, with an agreement struck that would allow both parties to continue to use the name and see the band offer a certain amount of career support to White.

However, Lady A the singer wasn’t happy with the written agreement that came out of those discussions. She then hired new legal representation which wrote an alternative agreement, allegedly including a $10 million pay off for their client – significantly more than the originally agreed $10,000.

Having received that proposal, Lady A the band went legal last July, arguing that they own the registered trademark in the name in the US and have done so for a decade. Lady A the singer then filed her own lawsuit last September, arguing that she had “accrued common law rights” in the name simply by using it for so long.

The band went legal in Tennessee, whereas White sued in her home state of Washington. Under US court rules, where two suits are very similar, the later-filed case is generally transferred to the district where the first was filed, which would mean this dispute being fought out in Tennessee. However, last December, White submitted a legal filing arguing that, in this case, the dispute should be shifted to her home state, even though she filed her litigation second.

But the judge overseeing the band’s lawsuit has declined to force any such transfer, concluding that White has failed to present a compelling case as to why the dispute cannot be fought in his court. Among the reasons for keeping the legal battle in the band’s chosen state are that White has performed there, her music is available online there, and she engaged legal representation in Tennessee – albeit pro bono – when initially negotiating a settlement with the band.

Another argument presented by White was that most of the witnesses she would call to prove she had been using the Lady A name for more than 20 years are based in Washington. The judge did accept that this was likely the case, but added: “Defendant claims nationwide common law rights in the trademark. Therefore, supporting witnesses presumably will not be limited to those residing in the Washington area, but will include witnesses residing in other states, including Tennessee”.

One other issue raised by White was the cost of defending the legal action in Tennessee, and the hugely different level of resources available to the two sides in the dispute. “As for the costs of litigating, the court acknowledges that plaintiffs likely have more financial resources”, the judge conceded, “but defendant has not provided any specifics about the costs she expects to incur”.

“Without more information regarding expected litigation costs”, he went on, “this factor does not weigh in favour of transfer. As for her own travel expenses … defendant has travelled to Tennessee for music-related activities at least once a year over the last several years. In terms of private interest factors, therefore, defendant has not shown that the Western District Of Washington is a more convenient forum for this litigation”.

With all that in mind, the judge declined to force the transfer of the case to Washington, and likewise knocked back White’s additional attempts to dismiss the lawsuit outright. And so the Lady A v Lady A dispute continues. In Tennessee.