Cartoon characters looking to kill one another have vast animated arsenals at their disposal, but none of their weapons have as much firepower as a claim of trademark infringement. That's a hit the Madison cartoon cover band The OuttaToons got last week in the form of a certified letter from an Orlando law firm demanding the group drop its name. The claim? That it infringes upon the trademark rights of The Outer Toons, a cartoon cover band based in the Florida city that's ground zero for American animated pop culture.
"The whole thing is just crazy, I can't even believe it," says Andy Russell, bassist for The OuttaToons, as well as with the rock groups Digibot and The Shabelles. "We're complying, though."
The band now formerly known The OuttaToons was founded back in the summer of 2003. "I was working the late night third shift at my job and was listening to the soundtrack of South Park: Bigger, Longer & Uncut and started thinking that there's a lot of cool cartoon music there," explains Russell. "I'd never seen a band cover these exclusively, so I started doing a little research, hit up a few friends to gauge their interest, and got the group started." They came up with the name as a double pun, both as a nod to the source of their cover songs as well as a self-deprecating wink at their live sound.
The OuttaToons remained active over the next four years playing 37 live shows at Madison clubs, private parties, and even a pair of Madison Mallards baseball games. Their repertoire included some 60 tunes, including songs from The Simpsons, South Park, Sesame Street, Schoolhouse Rock, and a host of Disney titles, among many others ubiquitous and obscure. The group went on hiatus in the fall of 2007, though, as members turned their focus towards other musical projects. "We still all hang out, and we're still planning on recording the songs," notes Russell, "it's just that the regular grind of practice on a weekly basis was too much."
Last week, Russell received a certified letter claiming that the band's name infringed upon a trademark held by The Outer Tunes, an Orlando-based group that performs cartoon covers and original music. An octet that is garbed in attention-grabbing costumes and performs under stage names, this family-oriented band has played for years at the Universal Studios theme park and other venues around O-Town.
The letter was sent by Dicks & Nanton P.A., a boutique law firm based in the Orlando suburb of Altamonte Springs that specializes in helping its clients build their businesses through new strategies or "protective devices," including intellectual property. A scanned copy is available in the related downloads at right.
Dated March 25, it asserts The Outer Toons trademark and demands the band cease using the name "Outta Toons" and the URL outtatoons.com. It continues: "Your use of the mark in this way is prohibited by United States Federal Trademark Law because it creates a significant likelihood of confusion for The Outer Toons' current customers as well as its future customers and is causing a significant amount of harm to my client. Additionally, your use of The Outer Toons mark unfairly capitalizes on the goodwill and reputation embodied in our client's mark and the public has already mistakenly believed that your use of Outta Toons is somehow authorized or sponsored by or is somehow affiliated with our client's mark."
The letter goes on to cite multiple rulings under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy, requests transfer of the outtatunes.com domain, and further requests the groups to cease using the name "Outta Tunes" or "any mark confusingly similar to The Outer Toons" and cease "any further deceptive promotional practices" relating to content produced under the name. It's signed by Nick Nanton Esq., an entertainment lawyer and partner with the firm whose bio states he "now teaches business owners to become celebrities in their business niche to lock out their competition."
Whether or not the band formerly known as The OuttaToons caused confusion with or ever were competitors to The Outer Toons, the group is complying with the demands in the letter.
"Honestly, we had no idea The Outer Toons existed," declares Russell in a post on TDPF where he discusses the matter. "No clue. None. Zip. When we first started The OuttaToons, and throughout our run, we all did a good amount of cartoon research on the 'net. The only other cartoon cover band we ran across in the whole world was a real obscure one based in Italy. The Outers from Orlando simply never crossed our radar. To finally learn of them just now was quite the shock. And through their attorney no less!"
Russell explains that the group consulted with one of its member's parents, a lawyer, who suggested they turn over their name and domain. "I'm not willing to go to court to find out how close the names are," he says. "We have one word in ours, and they have two, but whatever, it's really not worth fighting from our point of view." He also notes that after receiving the letter, he attempted to contact the band directly through its MySpace page to work out the matter, but was referred to its lawyer.
The Outer Toons vocalist and "Maestro Klutz" multi-instrumentalist Chris Charles says the band originally coined its name 1999 before trademarking it two years later. "I love music and musicians myself, so I am quite distraught all of this is taking place," he says. "I guess this is the music business, and I live in Orlando where people are notorious for taking other peoples' ideas."
Charles would not speak any further about the issue on the record, though, and directed any further queries to the band's lawyer. Nanton was also not willing to speak about the matter.
Russell notes with irony the care the band took not to run afoul of any copyright issues in their course of covering dozens of songs from cartoons owned by some of the biggest media companies in the world. "We were always very careful about that," he says. "We never ran into a situation where it would be a legal issue, and never charged for any of our live recordings we gave away. We just wanted to do it for fun."
The band formerly known as The OuttaToons isn't done yet, though, and plans on choosing a new name and hitting the studio.
"It was both hilarious and frustrating," concludes Russell about the matter. "It was surprising to learn that The Outer Toons exist. All of us were truly surprised, and we feel bad if we've been riding their coattails or taking anything from them. We never meant to do that. They were pretty rude when I contacted them, I've got to say, but beyond that, all the power to them, and I hope they have as much fun playing cartoon songs as we did."