Date: 6 May 2019
The wide-ranging rights attached to the names of well-known pop groups have been illustrated in three recent EU Trade Mark cases. It's not unusual for band names to be registered as trade marks by the band's record label or producers. But without a registration, who has the rights to a band's name?
In the first case, Fifth Avenue Entertainment v EUIPO (T-459/17), the mark applied for was THE COMMODORES in respect of Class 9 goods and Class 41 services.
The Commodores were a widely known band, formed by a number of artists including Mr McClary who (along with Beryl McClary) was the joint managing member of the EUTM applicant, Fifth Avenue Entertainment LLC. The EUTM application was opposed by Commodore Entertainment Corporation, based on their unregistered earlier sign “Commodores” under the law of several Member States.
The Opposition Division rejected the opposition in its entirety, concluding that the opposing party had failed to provide information on the content of the applicable national law or the conditions to be fulfilled in order for it to be able to prohibit the use of the mark applied for under the relevant national law (that of the UK).
This decision was overturned by the Fifth Board of Appeal. The Board was persuaded that the opponent had accrued goodwill (“the attractive force which brings in custom”) in respect of the unregistered earlier sign within the meaning of that term under section 5(4)(a) of the Trade Marks Act 1994, and rejected the EUTM application under Article 8(4) EUTMR.
Given that Mr McClary felt that he had a right to THE COMMODORES trade mark as a founding member of the band, it is perhaps unsurprising that Fifth Avenue Entertainment LLC appealed to the (European) General Court. Unfortunately for the holder of the unregistered earlier sign “Commodores”, the appeal wasn’t easy like Sunday morning. The Court found that the Board had failed to properly examine whether the fourth condition set out in Article 8(4) of EUTMR was satisfied, namely whether, under the UK law relied on in the proceedings, being the proprietor of the unregistered earlier sign “Commodores” actually gave Commodore Entertainment Corporation the right to prohibit the use of THE COMMODORES mark applied for by Fifth Avenue Entertainment LLC.
On the evidence, it was clear that the Commodores were a successful and well-known band that enjoyed most of their success in the 1970s in the US and Europe, including the UK. Its most prominent member, Lionel Richie, left in 1982. The opponent’s claim that Mr McClary left the following year was disputed.
The crux of this dispute lay in the ownership of goodwill. It was not disputed that Mr McClary was a founding member of the Commodores band formed around 1968. The band was formalised on 20 March 1978, when an agreement forming a partnership under the name THE COMMODORES was signed by Walter Orange, Milan Williams, Ronald Lapread, Thomas McClary, William King, Lionel Richie and Benjamin Ashburn. The agreement stated that each member had an equal ratio of 1/7. Mr McClary argued that he could not have expressly left the band since he still received royalty payments. However, since the agreement made it clear that Mr McClary would continue to receive one seventh of the net income from all royalties regardless of whether or not he was a band member, the Board dismissed the applicant’s line of argument that he must still be a continued member of the band.
On 1 July 1981, an amendment to the agreement formalised a corporation and assigned the legal rights to the name The Commodores to Commodores Entertainment Publishing Corp.
On the evidence, the Board found that the common law ownership of the name “THE COMMODORES” resided with the opponent. The applicant argued that since the opponent, who claimed to own the goodwill in the name THE COMMODORES, was Commodore Entertainment Corporation and the evidence filed related to Commodore Entertainment Publishing Corporation they were different entities. However, as the two companies merged in May 1978, the Board dismissed this argument. The Board concluded:
However, the Board failed to take into account that the term of the general partnership agreement was limited to seven years and that the 1981 amendment had not altered the term of that agreement. The applicant argued that, when that agreement expired, the rights previously assigned to the general partnership (including the right to the name “The Commodores”) were reassigned to the founding members of the band, including Mr McClary who, it was claimed, never left the group. The Court said that “by merely concluding that the applicant could not rely on the “sole proprietary right to the mark”, the Board of Appeal omitted to examine whether the applicant was the co-owner of that right and, if that had to be the case, the impact of such co-ownership in the light of the national law relied on”.
UK national law provides that several people can simultaneously own separate goodwill in a name and, therefore, are permitted to use that name simultaneously. In such circumstances, an action for passing-off brought against a party that owns such separate goodwill by another party that also owns goodwill in that name is bound to fail. The Court concluded that the Board had failed to examine to the requisite legal standard whether the fourth condition set out in Article 8(4) of Regulation No 207/2009, namely that the national law relied on conferred on Commodore Entertainment Corporation the right to prohibit the use of THE COMMODORES mark, was satisfied.
In the second and third cases, (T-328/16 and T-344/16), Mr Ian Paice successfully blocked ex-Deep Purple founder member Mr Richard Hugh Blackmore’s registration of the band name as an EU trade mark for goods and services in Class 9 (audio/visual recordings of musical performances, etc), Class 25 (clothing, footwear, etc) and Class 41 (entertainment services), except for computers and software in Class 9.
Deep Purple was a UK rock band formed in 1968 by, amongst others, Messrs Paice and Blackmore. The grounds of opposition were based on the earlier non-registered mark Deep Purple and the UK law of passing off. EUIPO’s Opposition Division upheld the opposition in part, refusing registration in respect of some of the goods in Class 9 and all of the services in Class 41. On the other hand, it granted registration for the goods in Class 25 as well as for some of the goods in Class 9. Both men appealed.
EUIPO’s Fifth Board of Appeal allowed Mr Paice’s appeal in respect of the goods in Class 25 and for mouse mats, mobile phone accessories and sunglasses in Class 9, but dismissed it insofar as it related to computers and digital games.
Following his resignation from the group in 1993, Mr Paice and the other members had carried on performing concerts and recording new albums, accruing significant goodwill under the name Deep Purple.
On the evidence, the Board found that clothing merchandise had generated a significant revenue stream for Mr Paice over the relevant period and such merchandising was an essential part of the business of a rock band on tour. Accordingly, the sale of goods in Class 25 under the name Deep Purple could be prevented by the law of passing-off and that damage to the goodwill of Mr Paice was “plausibly foreseeable by virtue of diversion of trade”.
As it was common knowledge that many of the items in Class 9 were commonly decorated with commercial or personal imagery, the Board decided that there would be misrepresentation and damage to that goodwill if Mr Blackmore marketed “mouse mats and mouse pads; sunglasses; mobile phone accessories”. Further, the Board found that “sunglasses” in Class 9 were sufficiently accessorised with clothing so as also to be considered at risk of misrepresentation. However, the Board found that the same reasoning did not apply to goods associated with computers and digital games in Class 9 because:
Mr Paice appealed to the General Court, arguing that the Board had failed to apply the decision of the High Court in Lego Systems Aktieselskab v Lego M Lemelstrich Ltd  FSR 155 (according to which the existence or absence of a common field of activity was not the acid test for establishing the likelihood of representation), and that the Board had failed to take account of the fact that Mr Blackmore had intended to deceive the public.
The court noted that the test for passing-off was whether there was a genuine likelihood that the relevant public would be led to attribute the commercial origin of the goods and services in question to the opposing party. Although a defendant in an action for passing-off need not be engaged in a common field of activity, the Court ruled that the Board had been entitled to take the existence or absence of a common field of activity into account (Lego applied). The fact that Mr Blackmore was a former member of Deep Purple and, as such, was associated with the band in the public mind, could not alone amount to proof of a deceptive intent on his part.
Mr Blackmore appealed to the General Court. However, the Court found that, regardless of their date of publication, the press articles published in 2013 and submitted by Mr Paice did prove that Deep Purple had an active and continuous presence in the UK during the period preceding the date of Mr Blackmore’s application for registration.
On this basis, the court rejected Mr Blackmore’s unsubstantiated claim that the goods at issue were very dissimilar or that the Board wrongly decided that goodwill in the mark Deep Purple extended to the merchandising of a rock band.
The court concluded that the Board had been entitled to allow the registration of DEEP PURPLE for the following goods in Class 9: “computer hardware; computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs”.
The above decisions regarding DEEP PURPLE and THE COMMODORES should be contrasted with the decision in the UK opposition between Georg Leitner Productions GmbH (GLP) and the estate of Maurice White (O/011/18).
The UKTM applicant Georg Leitner Productions GmbH (GLP) applied to register the mark THE EARTH WIND & FIRE EXPERIENCE FEATURING THE AL McKAY ALL STARS in respect of Class 41 services.
The application was challenged by the estate of Maurice White (the founder of the world-famous American band “Earth, Wind & Fire”), on the basis of an earlier international registration designating the EU for EARTH, WIND & FIRE, covering a wide range of goods and services, including similar Class 41 services.
The opposition was upheld by the UKIPO. This, in spite of the fact that Al McKay (who had played guitar in Earth, Wind & Fire when the band topped the charts in the 1970s) had achieved public recognition in his own right, having been nominated for 6 Grammys and inducted into the Rock and Roll Hall of Fame in 2000 and a decade later into the Songwriters Hall of Fame. Unfortunately for the UKTM applicant, the Hearing Officer did not think that the average consumer would attach any particular significance to the presence of Mr McKay’s name, given that he had in fact been one of a rotating set of 45 members of the band over more than four decades of its existence, including Maurice White (deceased). Added to this was the fact that Mr McKay had left the band in 1980.
Turning to the two sets of services, the Hearing Officer found that the earlier mark’s “entertainment services rendered by a vocal and instrumental group” were identical to GLP’s “entertainment services provided by a music group”, highly similar to GLP’s “entertainment in the nature of orchestra performances” and moderately similar to GLP’s “entertainment booking services”. Overall, there was a medium degree of visual, phonetic and conceptual similarity between the marks. The opponent’s evidence confirmed the Hearing Officer’s own knowledge that EARTH, WIND & FIRE was the name of a very famous, successful and long-standing soul/funk band and, therefore, the mark had both inherent and enhanced distinctive character. The fact that the mark was highly distinctive was in the opponent’s favour, as it formed half of GLP’s mark. Given the length of GLP’s mark, the Hearing Officer said that the word EXPERIENCE, positioned as it was in the middle of a long set of words, was likely to be missed because the EARTH, WIND & FIRE element was so well-known: “the eye sees what it expects to see”.
The Hearing Officer concluded that there was a likelihood of confusion (Section 5(2)(b) ground of opposition accepted). Two examples were:
the average consumer would mistake the applicant’s mark for the earlier mark and assume that there was a collaboration with Al McKay and the All Stars;
the average consumer would assume that the additional words The…EXPERIENCE signified a tour or “extravaganza” by the famous group, in which there was a collaboration with Al McKay and the All Stars.
Turning to the ground of opposition based on EARTH, WIND & FIRE’s reputation (Section 5(3) of the 1994 Trade Marks Act), the Hearing Officer decided that the opponent’s mark EARTH, WIND & FIRE had a significant reputation for the class 41 services and, when this was combined with the finding that the two sets of services were identical, similar to a high degree, and moderately similar, and the fact that the applicant’s own evidence indicated that it was their intention that the relevant public should make a link between Al McKay and his former membership of EARTH, WIND & FIRE, a link would be made between the two marks such that sales of tickets to see THE EARTH WIND & FIRE EXPERIENCE FEATURING THE AL McKAY ALL STARS would ride on the coattails of EARTH, WIND & FIRE’s reputation. If this was not the case, the applicant would only need to register AL McKAY AND THE ALL STARS.
The UK trade mark applicant had not shown that it had due cause for its choice of mark but, even if it had, the Hearing Officer said that she would have found that it failed: “Former membership of Earth, Wind & Fire does not entitle the applicant (which appears to the promoter of the later band) to register a trade mark linking itself to Earth, Wind & Fire, the reputation of which pre-dates that of the later mark”.
Back in the hazy days of the 1960s and 1970s, performing artists were quite laidback about their IP rights, with members of bands failing to consider who might own the rights in the band’s name: an oversight that has come back to bite many current and ex-members over half a century later, regardless of the cliché that popular musicians live hard and fast, take risks and die young.
After a band’s songs and albums, which are protected under copyright law, the band’s name is arguably its next most valuable asset as it can be exploited commercially for substantial revenue from record sales and merchandising. These decisions demonstrate the need for agreements at the outset regarding the future ownership of goodwill attached to the band’s name to avoid any unnecessary disputes where multiple authors/owners are involved. In the absence of a trade mark registration or specific agreement, there are no set rules on who has the right to a band’s name but, as the decision in THE COMMODORES shows, the court is likely to find that goodwill accrues to band members collectively, as opposed to one particular individual. Also, as THE COMMODORES decision illustrates, it is important to keep contractual provisions up-to-date!
All three disputes are examples of the problems that can arise as band members leave and start performing under the same or similar names to the original band without the permission of the original band members who may or may not still be performing under the name; particularly as UK trade mark law provides that several people can simultaneously own separate goodwill in a name and, therefore, are permitted to use that name simultaneously.
As the decision in THE EARTH WIND & FIRE EXPERIENCE FEATURING THE AL McKAY ALL STARS shows, additional distinctive elements may not be sufficient to avoid confusion in cases where a later mark uses the same wording as an earlier mark.
In DEEP PURPLE, the issue became more nuanced insofar as the court considered the extent to which goodwill in the name of a band could extend to other goods and services that may or may not fall under the merchandising umbrella. The category of goods considered an essential part of the business of a touring band has become increasingly extensive and, given the advances in technology since the 1960s and 1970s, its arguable that the EUTM rights that Mr Blackmore now owns in DEEP PURPLE, albeit limited to “computer hardware; computer chips and discs, interactive software as well as computer firmware; computer games; software for interactive games for computer, mobile phones and handheld devices; digital games, mobile phone games; DVD games; computer software and computer programs”, still represent goods with particular value for some in the music industry.
It is important to remember that a band’s name is a potentially valuable asset, which can be sold, bought and commercially exploited and needs to be protected and enforced, like any other IP right. Ownership of the band’s name should be decided and agreed by the band upfront in writing, and comprehensive commercial exploitation agreements regarding the name should be concluded.