In the past, performing artists have been quite "free style" about their intellectual property ("IP") rights. Most often, well-known bands were fuelled by the high of their success, revelling in the glory of hearing thousands of fans scream their names and IP rights were not given a second thought. And even though IP issues now receive much more attention and performing artists' IP rights are far more stringently policed and enforced, every now and then a skeleton leaps out of the proverbial closet.
The latest skeleton to drop into the limelight is the disagreement between Ali Campbell, the ex-front man of the renowned British pop/reggae band, UB40, and the remaining members of the band, regarding the use of the band name. As with most good things, a band's journey of fame and fortune eventually comes to an end, often because individual band members want to pursue individual fame and fortune, but also because disagreements between band members regarding the band's direction result in the relationship deteriorating to such an extent that the members can no longer function as a group. The list of bands that has fallen from the crest of the wave of success in these circumstances is long.
In UB40's case, the band was hugely popular in the 80's and 90's and they remained together for a staggering 29 years. Ali Campbell left the band in 2008 and recruited Mickey Virtue and co-UB40 front man, Astro, to form a new band which they called "UB40 featuring Ali Campbell, Astro and Mickey Virtue". The remaining six members of UB40, including Ali's brother, Robin, took issue with this, claiming that they are the only ones who can call themselves "UB40". They started the legal battle against Ali and his crew in the British high court about 2 years ago and, most recently, applied for an injunction and damages against Ali and his band. Ali sought to block the injunction but the court found in favour of the remaining members, stating that they have a "realistically arguable basis" for their complaints. A date for the full trial is expected to be announced soon.
The name UB40 is not registered as a trade mark although the online records of the European Intellectual Property Office show that Ali Campbell filed an application to register it as a trade mark in his own name in 2013. Records show that the application was withdrawn following opposition from the remaining members of the original band and it appears that no attempts had been made to register UB40 as a trade mark prior to this.
The issue gives rise to an interesting legal debate. There are no set rules with regard to who owns a band name but, from a legal perspective, the issue usually falls under trade mark law. It is not uncommon for band names to be registered as trade marks by the band's record label or producers but in the absence of a trade mark registration, who owns the rights to a band name?
From a trade mark law perspective, it must be borne in mind that the function of a trade mark is to serve as a badge of origin – to distinguish the goods or services of one party from the same or similar goods or services sold or offered by another party. Trade marks are protectable in relation to the goods or services in relation to which they are used or intended to be used. A band name would normally be registered in respect of entertainment and related services, including live performances in class 41 of the International Classification of Goods and Services, which is followed by most jurisdictions. Registration could also be obtained in goods classes covering merchandise featuring the band's name, such as digital and other records and CD's as well as clothing and other products.
Next to the actual songs and albums produced by a band, which would be protected under copyright law, the band's name is arguably its most valuable asset and can be commercially exploited for substantial profits resulting from record sales and merchandising.
Turning to the question of who has the right to a band's name in the absence of a trade mark registration or specific agreement, as mentioned, there are no set rules and the issue must therefore be determined with regard to existing trade mark law principles.
From a South African law perspective, the person who can claim to be the bona fide proprietor of a trade mark is the person who appropriated, originated or acquired the mark. In applying this principle in the context of the band name, in most instances, it may be impossible to attribute proprietorship to a single band member, as the founding band members may be jointly responsible for conceiving the name, in which case they would jointly own the rights to the name. In the UB40 case, on the one hand, the remaining six members of the band are very much in the majority but on the other hand, as Ali Campbell argues, who is UB40 without its front men? One can see merit in both sides' arguments.
Bearing in mind that the function of a trade mark is to serve as a badge of origin there are certain criteria that may be relevant in identifying the bona fide proprietor of a band name and one may have to determine the issue by looking at it from the fans' perspective. Questions that may be relevant include1who has been with the band the longest, which group has the most of the original band members who was responsible for most of the song writing, and whose singing or playing was the most identifiable?
These factors to be taken into account are certainly not exhaustive and each case would have to be decided taking into account the particular facts and circumstances.
Like any trade mark, a band's name is an asset, and potentially a very valuable one. It can be bought, sold and commercially exploited and like other intellectual property rights it should be properly protected and enforced. The issue of ownership of the band name should be decided and agreed by the band upfront, in writing, and comprehensive agreements regarding the commercial exploitation of the name should be concluded.
Originally published May 2016
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