In 1964, a British rock band released a bluesy version of an American folk song which reportedly caused Bob Dylan to “jump out of his car seat” because he liked it so much. That song–voted no. 14 all-time favourite single in a UK television programme in 2003 and no. 123 on Rolling Stone’s Top 500 Greatest Songs of All Time–was “The House of the Rising Sun”. The men behind the magic were Eric Burdon, Alan Price, Hilton Valentine, John Steel and Chas Chandler, better known as THE ANIMALS. THE ANIMALS rendition of “The House of the Rising Sun” has been described as “revolutionary” and so influential that “the face of modern music was changed forever”. Ralph McLean, House of the Rising Sun, undated. THE ANIMALS split up in September 1966, but their legend continued. To wit, in:
- 1968 – the band reunited to play two sell out shows;
- 1975 – they recorded a new album;
- 1983 – they recorded a further album and toured internationally;
- 1994 – they were enrolled in the Rock and Roll Hall of Fame; and in
- 2001 – THE ANIMALS inducted into Hollywood’s RockWall hall of fame.
Steel applies for trade mark “THE ANIMALS”
Despite the accolades, the relationship amongst the original band members was contentious. In February 2004 John Steel applied under No. 2355587 to register ‘THE ANIMALS’ as a trade mark for use in relation to ‘CDs, musical recordings’ (Class 9) and ‘musical live performances’ (Class 41). Steel’s application was opposed by bandmate Burdon the following year. Opposition No. 93508. Burdon argued the application should be refused under s.3(6) of the Trade Marks Act 1994 (for having been made in bad faith) and under s.5(4)(a) of the Trade Marks Act 1994 (as use of THE ANIMALS would be protected through the law of passing off). However, Burdon was unsuccessful in both objections to Steel’s application. The Intellectual Property Office’s Hearing Officer stated that the ground of opposition under s.5(4)(a) failed because no goodwill existed in the mark at the date of the application:
the goodwill accrued by the band during the period 1963-1966 would have long dissipated by 11 February 2004, the date of the application, despite the minor top ups provided by half-hearted reunions, re-releasing of the same song on two occasions, featuring on an advertisement and two films and being inducted into a museum in the USA.
Burdon Appeals Decision and Wins
Burdon appealed the ruling arguing that, in mistakenly deciding no goodwill existed at the date of application, the Hearing Officer had made an incorrect assessment of Burdon’s s.5(4)(a) objection. Note, the appeal was only in respect of s.5(4)(a) – the s.3(6) objection was not pursued further. On September 9, 2013 the Court upheld Burdon’s appeal. Trade mark Decision, BL Number O/369/13. The Court decided that the Hearing Officer had assessed Burdon’s objection from an incorrect perspective having failed to appreciate that:
cessation of production of goods or provision of services does not necessarily mean that there has been a ‘cessation of business capable of sustaining goodwill, still less a destruction of the existing goodwill’ Maslyukov v Diageo Distilling Ltd & Anor  EWHC 443 (Ch) (17 March 2010)
The Court found that group’s goodwill did not cease to exist after their final 1983 performance. Instead, the “name and fame of THE ANIMALS lived on through use in commerce with protective effect.” As THE ANIMALS had formed as a unincorporated group of individuals with no contractual arrangements governing the relationship amongst group members, the Court held that all members of the group should collectively be entitled to control the use of the name THE ANIMALS with the acquired goodwill belonging to “the last man standing.” After the original group’s last live performance in 1983, Steel was involved in a number of ‘heritage’ groups which operated under various names such as ANIMALS II, ANIMALS AND FRIENDS, and on some occasions from 2001, as THE ANIMALS. These ‘heritage’ groups never included all members of the original group. The Court found that Steel’s use of THE ANIMALS would lead to the mistaken belief that Steel’s band was the full successor in title to the original group, THE ANIMALS. This would be misrepresentation as such belief would be “liable to damage the economic value of the UK goodwill and reputation of the business signified by the name THE ANIMALS.” Trade mark Decision, BL Number O/369/13.
So who is the ‘last man standing’? Of the original five, there remain four surviving members of the group. Under the Court’s decision none of these can individually lay claim to the whole of the benefit of group’s goodwill and reputation by registering THE ANIMALS as their own trademark. This decision illustrates the importance of establishing the ownership of and rights attaching to any intellectual property at the outset of any collaboration—musical or otherwise—to avoid future disputes. Greater certainty can be achieved by establishing a clear contractual basis for both the ownership of any intellectual property at its creation and also for its future exploitation.