A federal judge in Memphis has denied Anita White’s motion to dismiss the band Lady A’s declaratory judgement action against the Pacific Northwest—based blues singer.
On May 13, Judge William Campbell also denied White’s request to transfer venues from Middle Tennessee, where Lady A originally filed its suit, to Washington State. Courthouse News first reported the ruling.
The band’s suit, filed under their individual names of Hillary Scott, Charles Kelley and David Haywood, asks for a ruling confirming that the trio, formerly known as Lady Antebellum, is not violating White’s purported trademark rights by using the name Lady A.
Last June, the band announced that it would stop using the Lady Antebellum name, “in recognition of the hurtful connotations of the word ‘antebellum,’ according to the 20-page ruling, and would continue on as Lady A. The band had registered and received several trademarks for the name Lady A with the United States Patent and Trademark Office going as far back as 2010 with no opposition.
After Lady A announced the name changed, White came forward, stating she had performed under the name Lady A for decades, and cited albums released under that name going back as far as 2010. She hired a Memphis-based attorney and engaged in conversations with the band over the next several weeks. The band’s attorneys drafted a “co-existence” agreement, which White rejected.
Later in June 2020, White enlisted a new attorney who sent the band a new co-existence agreement which demanded payment of $5 million to White and another $5 million to charities selected by her. The band did not respond to that agreement.
Instead, in July, the band filed the declaratory judgment action against White. In response, White alleged she has used the name for three decades and owns common law rights on the name and sought relief for “trademark infringement and unfair competition.”
The judge dismissed the request to transfer jurisdiction based on, among other issues, that White had performed or traveled to Memphis using the name Lady A no fewer than five times over the last several years and her music is available for download in Tennessee, as well as she had hired Memphis-based course. The three members of Lady A are Tennessee residents.
On White’s second argument that the case against her be dismissed because “it is an improper ‘anticipatory’ declaratory judgment action.” Among the reasons White cites is that “the plaintiffs failed to continue negotiations after receiving her $10 million offer, and filed this suit instead. Defendant argues the plaintiff’s ‘gamesmanship’ is similar to that criticized by the courts” in other cases. The judge disagreed, writing that “there is no evidence Plaintiffs engaged in any other behavior that ‘misled’ Defendant into believing negotiations would continue. Indeed, it would not have been unreasonable for Plaintiffs to believe Defendant effectively ended negotiations by extending a revised settlement offer requiring a $10 million payment that was not a part of the earlier discussions.”
Lady A’s representative declined to comment on the ruling. White’s representative did not respond to a request for comment.
No further court date for the case has been set.
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