It is not something that any loyal music fan wants to hear, but bands, of all shapes, sizes and levels of musical talent, break-up. It is hardly the most optimistic forecast, but it’s one that, realistically, every musician needs to consider. Band break-ups, splits and band members being kicked out raise the question of ownership of the band name and have thrust trademark and good will disputes into the show business spotlight. Band members may “get no satisfaction” as disputes over who is entitled to use the band name are decided by national trademark laws.
Born in the USA: the U.S. position
Under U.S. law, the owner of a trademark may sue to prevent another from using an identical or similar trademark which is likely to confuse purchasing consumers as to the source of the goods or services offered under the mark. This includes the names of bands, under which members of that band perform, sell albums, concert tickets and merchandise. If a Van Halen fan, for instance, were to stop by a local bar and see that the night’s musical line-up included a new local band named “Van Halen,” it is easy to imagine that fan thinking, even briefly, that he had just won the live music lottery in his hometown. And if the famous foursome from Pasadena happened to find out about this new “Van Halen,” they would likely be able to sue for trademark infringement of one of their registered trademarks. The history of rock ‘n roll is littered with examples of the problems that may be encountered by a band over the future use of its name. One classic example is Bell v Streetwise Records Ltd., 640 F. Supp. 575 (D. Mass. 1986). In that case, the R&B group New Edition (now said to have been the progenitor of the “boy band” craze) sued Streetwise Records for use of the name NEW EDITION, which Streetwise had decided to use for a new group once the original members switched labels. While the members of the group had initially signed employment contracts granting Streetwise the exclusive rights to use the NEW EDITION mark, ultimately, a U.S. federal appellate court decided that these contracts contemplated only use of the NEW EDITION mark in connection with the production and sale of records. When the case came back to the lower district court, the judge held that live musical performances, in fact, were the primary “good” offered under the band’s name, and that consumers were apt to think of the band (as opposed to the record company) when they heard the name “New Edition.” Thus, the judge held, the name belonged to the band. However, as most musicians know, some of a band’s more serious disputes lie not with the record company, but between members of the band themselves. While Bell v Streetwise seems to indicate that, without an agreement expressly to the contrary and at least with regards to performances, legal rights to use a name belong to the band, rather than its record company, this provides little help in situations where one or more of the band members leaves or is kicked out of the band. For instance, in Kingsmen v K-Tel International Ltd, 557 F.Supp. 178 (S.D.N.Y. 1983), the band made famous by the song “Louie, Louie” successfully sued former lead singer Jack Ely for recording that song on an album under his former band’s name, “The Kingsmen,” which was still being used by the group’s remaining members. In another case, Grondin v Rossington, 690 F.Supp. 200 (S.D.N.Y. 1988), the widow of Lynyrd Skynyrd lead singer Ronnie Van Zant sued the group’s remaining musicians for using that band’s name on tour almost a decade after Van Zant was killed in a plane crash. The issue is often more nuanced, as some cases illustrate. For instance, some band name disputes arise when a former member of a band begins advertising his or her new performances as a former member of the band. In Scholz v Migliaccio, Fran Cosmo, the former lead singer of the band BOSTON, was sued by his former band members when he and his son started promoting Cosmo’s performances under banners such as “Fran Cosmo of BOSTON” and “BOSTON former lead singer Fran Cosmo.” A federal district court in Washington ultimately ruled that Cosmo’s use of the name BOSTON fairly described the nature of Cosmo’s performances, and thus was not infringement. Scholz v. Migliaccio, Case no. 2:13-cv-01229 Order (W.D. Wash. Aug. 20, 2013). Other bands that have run into this particular problem include Live, Stone Temple Pilots, and the 1980s band Great White.
God Save the Queen! (or indeed, God Save [the band name] Queen!): the English position
The United States is not alone when it comes to trademark disputes over band names. Indeed, the United Kingdom is equally fruitful in this regard. In 2013, Andrew Powell, the guitarist of Wishbone Ash, succeeded in a trademark infringement action against founding band member Martin Turner, who had been performing under the name “Martin Turner’s Wishbone Ash.” Powell applied to register a Community Trade Mark for the name WISHBONE ASH in 1998 when the other original band members, including Turner, had “all quit.” The mark was registered in a number of classes of goods and services including entertainment services. Trademark Reg. EU000742684. At the time, Powell and Turner also each decided to register band domain names (wishboneash.com and wishboneash.co.uk) in March and June 1998 respectively. wishboneash.com wishboneash.co.uk By 2004, Turner had formally left the band and formed the group “Martin Turner’s Wishbone Ash.” Both Turner and Powell continued to play and record the original band’s songs using the Wishbone Ash name. Powell brought a trademark infringement action challenging Turner’s use of “Martin Turner’s Wishbone Ash” and the domain name wishboneash.co.uk. He argued that the identical, or very similar use of the name, in relation to identical entertainment services, was without due cause and would likely cause confusion. Turner defended by seeking to revoke Powell’s Community Trade Mark registration on the basis of bad faith. He argued that Powell applied for the mark “without any reasonable belief that he was properly entitled to the same.” The Court held that Turner’s use of “Martin Turner’s Wishbone Ash” and the wishboneash.co.uk domain name was infringing as it contained the whole of Powell’s registered mark in recognisable form. In relation to validity, the Court held that there was no evidence to suggest the mark had been registered in bad faith. Powell applied for the mark to protect the band name against third parties. Of most relevance to the issue of shared ownership in general, the Court found that Turner and Powell had never agreed on the ownership of goodwill. As Powell was the last surviving member of the band and former members had not taken steps to prevent Powell’s use of “Wishbone Ash” when the mark was registered, the Court found that Powell was the sole owner of the goodwill relating to the name. Powell v Turner  EWHC 3242 (IPEC) (24 October 2013). The case bears the hallmarks of an earlier dispute resolved this year involving Eric Burdon and John Steel of The Animals, the 1960s rock group famed for their rendition of “The House of the Rising Sun.” In 2004, long after The Animals disbanded, the band’s original drummer, John Steel, applied to register THE ANIMALS as a trademark for use in relation to CD, musical recordings and musical live performances. The application was opposed by Steel’s bandmate Eric Burdon the following year on the basis of bad faith and use of THE ANIMALS being protectable under the English law of passing off. The UK Intellectual Property Office initially rejected Burdon’s action. It decided that goodwill accrued by the band in its name from 1963-1966 would have dissipated long before 11 February 2004, the date of Steel’s application. Burdon appealed the decision and won. The Court decided that the IPO had incorrectly assessed Burdon’s position. If a business ceased to produce goods or provide services this did not necessarily result in any accrued goodwill being lost. Even though the band’s final performance was in 1983, the “name and fame of THE ANIMALS lived on through use in commerce with protective effect.” As there was no contractual arrangements governing the relationship amongst the group members, the Court held that all the musicians were collectively entitled to the name THE ANIMALS with the acquired goodwill belonging to “the last man standing.” Although Steel was involved in a number of ‘heritage’ acts after the band’s 1983 performance, (ANIMALS II, ANIMALS AND FRIENDS, and on occasion THE ANIMALS) as they did not include the original band line-up it was thought that Steel’s use of The Animals name would create confusion and result in damage to the UK goodwill and reputation of the original band. Trademark Decision, BL Number O/369/13. See the related blog post, “Don’t Steel the name” – the importance of registering names.
I Come From a Land Down Under: the Australian position
Australia also has experience in band name trademark disputes, joining the US and the UK. Hugely successful in the 1960s, English band, Herman’s Hermits (featuring front man Peter Noone) became popular for their clean-cut, pop sound around the world. Songs like “There’s a Kind of Hush”, “Mrs. Brown, You’ve Got a Lovely Daughter” and “No Milk Today” ensured long-lasting fame. Jan Barry Whitwam joined the group in 1964, a year after its formation, and at that time the members of the band, including Whitwam, formed and became joint shareholders and directors of Frimp Limited, a private registered company in the UK (Frimp). Over the years the line-up of the band changed and by 2004, Whitwam, the remaining original member of the band, filed an application for the trademark, HERMAN’S HERMITS, in Australia. AU Trade mark 1026197. In July 2006, Frimp gave notice of its opposition to Whitwam’s Australian application for the HERMAN’S HERMITS trademark. Frimp argued that the company was formed to act as the employer of the band members, to enter into contracts, and receive royalties and payments related to performances and recordings. The opposition was examined by the Australian trademark office, which considered the question of ownership. It ultimately concluded that Frimp had not established a better claim to ownership of the mark than Whitwam. Frimp Ltd v Jan Barry Whitwam  ATMO 5 (19 January 2009). In support of this decision, the trademark office considered it relevant that there was no record of company documentation to support Frimp’s ownership rights. A settlement agreement between the band’s remaining members, dated 1975, also supported Whitwam’s claim. The agreement entitled remaining members to describe themselves as “Herman’s Hermits” and Whitwam was the sole remaining original member performing under that name. In addition, a previous action involving the band was taken in the names of individual band members, rather than Frimp; and Whitwam was able to provide evidence of trademark registrations which he held in his own right, in the United Kingdom and the European Community. The trademark office also examined whether the registration of the mark in Whitwam’s name was contrary to law, as a result of Whitwam’s alleged breach of his duties to Frimp as a director of the company. Ultimately however, it was decided that the basis of this argument, the Companies Act 1985 (UK), was inapplicable in the circumstances. Frimp also alleged that Whitwam, as a director of Frimp, had a common law fiduciary duty to the company, including a duty to:
- act in the best interests of the company;
- avoid entering arrangements that would give rise to a conflict of interest;
- further prospects of the company; and
- act in good faith.
The trademark office was ultimately not convinced that registration of the mark by Whitwam would involve a breach of his fiduciary duties as a director of Frimp. Indeed, in apparent support of this conclusion, the trademark office stated that:
the evidence suggests that the individual members of the opponent had contemplated and approved of the concept of the band continuing to perform. This approach was not inconsistent with the Company’s roles of collecting and distributing royalties.
The opposition was dismissed and Whitwam proceeded to register the trademark in his own name. In considering this decision, it must be asked whether the key question was missed by the trademark office, being whether Whitwam fulfilled his fiduciary duties as a director of Frimp in applying for the trademark in his own name. It was common ground that one of the purposes of Frimp was to collect performance and recording royalties. Even if understood to apply to the band’s public performances of its own recordings (or performance of the band’s music by others) it is reasonable to conclude that fees derived through licensing of the band’s trademark rights should, properly, also accrue to Frimp as the collector of the band’s other royalty revenue. By seeking trademark registration in his own name, to the exclusion of the other shareholders of Frimp, it appears that Whitwam was acting in his own interest to the detriment of Frimp’s shareholders and thus in breach of his fiduciary duties. The fact that Whitwam was able to achieve registration of the band’s name, to the exclusion of other claimants, reinforces the need for music groups, or any collaborators in a common project for that matter, to take steps from the outset of their joint venture to clarify ownership and future use of the trademarks associated with their venture.
Conclusion: The Final Countdown before it’s gone…gone…gone…
These cases make clear for band members the importance of formally agreeing in writing to name ownership and other intellectual property rights early on. This includes an understanding between members of the ownership of any trademark applications and registrations based on the name or other indicia, such as logos, photos, signatures and catch phrases of the collective nature. The possibility of departure of band members, dissolution of the group and assignment or licensing of trademark ownership should also be canvassed. Formal contractual agreements should be entered into to prevent costly trademark and good will disputes arising after the band breaks up or the original members have left. Like an engaged couple’s discussion of prenuptial agreements; although the conversation may be an awkward one, it is a conversation worth having before a time when band members “lose that lovin’ feeling.”
The authors include Norton Rose Fulbright lawyers: Sheri M. Hunter of the US Intellectual property group; Lâle Kemal and Jane Berry of the UK Intellectual property group; Hilary May Black and Alyson Poole (Graduate) (Australia). The editorial comments were prepared by Frances Drummond of the Australia Intellectual property group.