Gray area: When is a tribute more than just a tribute?

Music tribute acts walk a fine line between selling themselves as a worthy facsimile – an exercise in pure nostalgia – and crossing a legal boundary by “fooling” the public that they are, in fact, the real thing.

They can dress like the real stars, wear wigs and makeup, play all the same instruments and sing all the same songs. They just can’t claim to “be” somebody they’re not.

This is how acts called “Fleetwood Max,” “Deft Leppard” and “One Night of Queen” flourish.

The somewhat shadowy laws of trademark infringement were tested in March when the remaining original members of the groundbreaking 1970s funk band Earth, Wind & Fire sued Atlanta-based Substantial Music Group and Stellar Communications, alleging the companies have been marketing a tribute act as the actual Earth, Wind & Fire.

The act is called Legacy Reunion of Earth, Wind & Fire Alumni, and it has been booked to play St. Petersburg’s Mahaffey Theater Nov. 24.

Filed in a Miami U.S. District Court, the lawsuit claims Legacy Reunion includes only a few “side musicians” who briefly recorded or performed in later years with Earth, Wind & Fire, which was formed in 1969.

Substantial Music president Richard Smith played guitar with Earth, Wind & Fire from 1987 to 1991, and appears on the album Heritage. He maintains that Legacy Reunion is more than a mere tribute act. “Some of our alumni were there longer, during their tenure, than some of the original principals in the band,” he said.

No names or musician photographs appear on the company’s website, or on marketing material for the concerts.

“Our lineup is fluid – it’s based upon, and changes, according to who’s available on their touring schedule,” Smith said. Any Legacy Reunion might include a combination of ‘80s and ‘90s-era band members Vance Taylor, David Romero, Morris Pleasure, Daniel de los Reyes and Smith himself.

Earth, Wind & Fire survived the retirement (and 2016 death) of founding singer/songwriter Maurice White. White’s sons own the group name, and license it to the current iteration of the group, which includes founding bassist Verdine White (Maurice’s brother), longtime lead vocalist Philip Bailey and longtime percussionist Ralph Johnson. All three performed on Earth, Wind & Fire’s lengthy string of hit records.

The lawsuit from Earth Wind & Fire IP LLC reads, in part:

“To increase ticket sales to these concerts, Defendants hatched a scheme to falsely imply in advertising that this new group was the real Earth, Wind & Fire. Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for Plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices to shows Defendants promote than would be sold if Defendants honestly advertised who was rendering these performances.”

Smith bristles at this, and brings up the nominative fair use rule, a sort of legal loophole wherein a third party may use the trademark of another as a reference to the trademark owner’s product, or to compare it to their own.

“Our name should be descriptive enough to where somebody understands this is a reunion show,” Smith said. “We preface it not by saying ‘Earth, Wind & Fire’ first. We say ‘This is a Legacy Reunion of Earth, Wind & Fire Alumni.’ Most people understand what alumni means. Our legal position is that it is fair enough, under nominative fair use, and we should be allowed to use it.”

Smith added that a typical Legacy Reunion show attracts 600 to 800 people. “We’re not really cutting into Earth, Wind & Fire’s pie,” he said.

In an Aug. 30 court filing, Substantial Music Group counter-claimed that Earth Wind & Fire arbitrarily allowed a dozen tribute acts to “use” the name, citing “September: A Tribute to Earth, Wind & Fire,” “Let’s Groove Tonight: The Ultimate Earth, Wind & Fire Tribute Band” and even “Earth Wind & Fire Tribute Band.”

Others in operation around the country include: “Kalimba: The Spirit of Earth Wind & Fire,” “Shining Star: A Tribute to Earth, Wind & Fire” and “Hot Brass: Chicago/Earth Wind and Fire Tribute.”

“[The band] has taken no action to enforce its purported trademark rights against any of the third-party vocal and instrument groups that have been using the phrase,” Legacy Reunion lawyers wrote in the counterclaim. “The present civil action represents the first occasion on which Counter-Defendant has sought to enforce its registered trademarks against another party.”