There are few areas of activity to which the law of trade marks and trade names do not apply.
When Manchester band The Stone Roses split acrimoniously in 1996, the issue of who owned the name came up. Guitarist John Squire’s caustic suggestion – ‘You can have the vowels and I’ll have the consonants’ – didn’t advance matters. They weren’t the only artists to come to blows over ownership of a name.
The trials and tribulations of the Sugababes are another example. In 1998, the girl band was formed of three members – Siobhan Donaghy, Mutya Buena and Keisha Buchanan. Over the next 12 years the band’s membership changed so much that none of the resulting line up – Amelle Berrabah, Jade Ewen and Heidi Range – were featured in the original band.
In 2009 Ms Buena – one of the original band members – sought to register the band’s name as a trade mark, and a drawn-out dispute ensued. Who were the ‘true’ Sugababes? The EU trade marks office was faced with an almost unanswerable question (anyone who
studied philosophy at school may recall the tale of Theseus’ Ship) and responded by fudging the issue, awarding the name to Ms Buena for some activities and to the current lineup for others.
In both situations, problems could have been avoided if the band members, and their record companies, had thought a bit more about who ‘owned’ the names before problems arose, and put a written agreement into place. Of course this is hardly a ‘rock and roll’ thing to do, but then neither is having to rock up at the Intellectual Property Office for a hearing if and when everything goes awry.
One option is for the band to operate on a ‘co-operative’ basis. The members agree that everyone owns the band’s assets, including its name, jointly, but they all also possess an equal share of its liabilities. Then, if someone leaves the band, they may do so without taking any of the liabilities with them, but as a trade off, nor do they get to keep any claim to the band’s name, its recordings et cetera.
There is evidence from the Intellectual Property Office that this model can work well. In a recent case, Robert Godfrey, bandleader of 1970s’ prog-rock group ‘The Enid’, was able to show that he owned exclusive rights in the band’s name, and could therefore block record company owner and erstwhile business partner, Gerald Palmer, from seizing control of the name by registering it as a trade mark. Although Godfrey was the only remaining band member, he was able to show that, because a cooperative model had been followed, he owned all rights to the name.
By contrast, sometimes a record company ends up with ‘control’ of the artist’s name. This is most common where manufactured bands are concerned: such as where a mogul like Simon Cowell identifies ‘talent’, and gives the band members an image, songs to sing and a name. It’s hardly surprising that the young naïfs taken under their patron’s benevolent wing do not think to assert their trade mark rights.
But a sweep of the Trade Marks Register shows that things don’t always pan out like this. Teen pop favourites JLS and One Direction both have trade marks registered in the names of their own companies. Yet talent show winners Little Mix and Girls Aloud have had their names trade marked by Simon Cowell’s company Simco, and ITV, respectively.
We think these last two may have copped a bad deal. Obviously a lot turns on the contractual arrangements between the parties, which we can’t see. Nonetheless, not owning the name you use can have all sorts of bad repercussions. Most significantly, it seems that the band is effectively tied into working with the owner of the trade mark registrations forever. Of course, they may be able to get out of their
contracts, but if they want to break away, they may need to do so under a different name. Just as with any other business, this would mean starting almost from scratch in terms of building up recognition and goodwill in a new ‘brand’.
This is more than a theoretical risk. Those with longer memories will recall the artist Prince ditching his name in the early Nineties, and performing for a number of years with the substitute ‘name’ of an unpronounceable symbol. This was precisely because his record label, Sony, registered ‘Prince’ as a US trade mark, and sought to stop him using the name when the parties fell out.
New bands also need to think about whether picking a new name is likely to step on someone else’s toes. The average ‘garage band’ is hardly likely to commission a professional clearance search, but common sense dictates that they should at least verify whether anyone else is using the exact same name.
In fact, looking at things from the perspective of a trade marks lawyer, there have been some extraordinary mistakes in this area. Those of the writer’s generation will remember a pair of up-and-coming Mancunian DJs called ‘The Dust Brothers’, named by way of ‘homage’ after LA-based music producers of the same name. The UK duo was probably surprised when they were threatened with legal action – theybecame ‘The Chemical Brothers’.
Possibly even worse, the band ‘Snow Patrol’ changed their name from ‘Shrug’ to ‘Polar Bears’ having discovered a possible conflict with a US band with the former name. They then had to change again following a legal threat from the (relatively well-known) US band ‘Polar Bears’. To err once is human…
Challenges need not come from other bands. For example, X-Factor contenders ‘Rhythmix’ were forced to change their name to ‘Little Mix’ following a challenge from a Brighton-based music charity ‘Rhythmix’, which had registered its name as a trade mark.
One of the unfortunate aspects of this kind of challenge – and indeed most brand name disputes generally – is that problems are only noticed once the party at fault has built up some degree of recognition and reputation. It is one thing for an artist or artists at the very beginning of their adventure to reconsider what they want to call themselves; it’s a far bigger deal – and far more damaging – for established performers to have to manage a name change.
BWB's trade mark team's top tips for music artists
These simple steps should help artists and their advisors avoid the various pitfalls in this area. It’s worth noting that these tips represent good basic advice for any group, business or other organisation setting out under a new name.
- Before starting to operate under your preferred name, undertake checks to ensure that it does not conflict with anyone elses rights. At the very least, you should conduct basic internet checks. You should also seriously consider conducting trade mark searches. A rudimentary UK search can be carried out at www.ipo.gov.uk although you should consider contacting a lawyer if you wish to carry out comprehensive checks. Remember also that it is not only identical matches you are looking for – you will infringe another person’s rights if your name is confusingly similar to theirs.
- Apply to register your chosen name as a trade mark. This will help cement your claim to it, and will also assist should anyone else start using the same or similar name without your permission.
- When entering into agreements with record labels and other business partners, make sure the contract you are signing properly protects your interest in your name.
Posted on 29/10/2015 in BWB PublicationsBack to Knowledge