Wednesday, April 11, 2007

By Wim Alberts

There is, prima facie, only one King of Rock-‘n-Roll: Elvis Presley. More than twenty five years after his death, large numbers of his records are still being sold, and his distinctive voice lives on. No doubt his personal reputation is of great value in an intellectual property context, in particular insofar as musical recordings are concerned. Artists can of course also establish rights in relation to a stage name (Bob Dylan) or the name of a fictitional character such as Snoop Doggy Dogg (see also Mostert "The Right to the Advertising Image" 1982 SALJ 413). Examples of fictitious characters in a South African context are Valiant Swart and Johannes Kerkorrel. Secondly, and less personal, is the in-between situation where artists retain their names, but perform with a band to which their names are linked. Examples are Cliff Richard and the Shadows, Bob Marley and the Wailers, and Bruce Springsteen and the E-Street Band. It may well be though that the particular band is merely an extension of the artist, and that he in fact controls the artistic direction of the combination. The third situation is where a number of artists perform as a group. In certain instances, such as the Vienna Boys Choir, the Boston Pops, or the Mormon Tabernacle Choir, there is no doubt that an individual’s participation is only of a transitory nature. Individual members can however exert a very strong influence on a smaller group’s identity. Examples here are Mick Jagger (The Rolling Stones), Freddie Mercury (Queen), and Jim Morrison (The Doors). Yet in the last two examples, the groups continued to perform after the death of their front men. There is thus seemingly a certain goodwill attached to a band’s name that subsists even if the colourful personality involved is no longer performing with "his" band. An artist may not necessarily lay claim to rights in a band’s name, but what happens if he does? This issue is now considered, having regard to a number of decisions in the United States and the United Kingdom.

The role of control
In determining ownership, the courts have often looked towards the person that was controlling relevant aspects of the group’s performances (McCarthy Trademarks and Unfair Competition (2002) 16-76). In Rick v Buchansky 609 F. Supp 1522 (SDNY 1985) the plaintiff was the manager of Vito and the Salutations, and the five defendants were former members of the group, which he discovered. He also conceived of the name. Over the years the group had twenty-two different members. The manager remained closely involved in decisions relating to the band. It was decided that the manager was the only person to have controlled the quality of the group’s performances on a continuous basis, was not a mere functionary, and consequently, was the owner of the trade mark. The fact that the mark distinguished the performance, not the performers, appeared to be of relevance in Marshak v Green 505 F. Supp 1054 (SDNY 1981). The three original members of The Drifters assigned their trade mark rights to their manager after they jointly filed a trade mark application. Thereafter one of the members left and formed another group under the same name. The court held that he was estopped from challenging the validity of the mark, and the assignment was held to be valid. The manager thus retained the right to the mark. In Cesare v Work 520 NE 2d 586 (Summit County 1987) Cesare, the manager-musical director of Revolver, developed a routine based on the performance of songs of the Beatles. Three members of the band broke away, and copied central aspects of the performance style of Revolver. This included the ensemble of the instruments, the stage setting, choreography of the audience participation, and, in particular, the band member patter. All of the latter was considered to be the trade dress of the group. It was held (595) that the performance of Revolver was not personal to the performers, but identified a style and rendition of Beatles’s music, continuously controlled by Cesare, as different performers left and were replaced. Cesare was consequently entitled to protection against unfair trade practices relating to the copying of his trade dress.

Bell v Streetwise Records Ltd., 640 F. Supp 575 (D. Mass 1985) had a different outcome. Here the members of New Edition performed together under that name, and their membership was relatively constant. At a later stage they were introduced to a local impresario, Starr. Starr provided strong guidance in relation to several aspects of their performance, but, inter alia, wanted them to sound and look more like the Jackson Five. The group renounced their contract with Starr, and sought to prevent him from releasing a record under the name New Edition, whilst using a different group of singers. The approach followed by the court was to establish, firstly, the characteristic or style that the public associates with the group, and then to ascertain by whom those aspects are controlled. The plaintiffs’ averred that control over the entertainment services was relevant. The defendants adopted the view that control over the goods, (sound recordings) where they had a large measure of input, was relevant (see In re Polar Music International AB 714 F. 2d 1567 (Fed. Cir 1983) where the registration of "Abba" in relation to sound recordings was allowed). The question then arose whether New Edition was a concept group. This was described by the court (581 note 18) as follows:

"They are formed mainly by independent record companies who, perceiving a unfilled "niche" in the entertainment market, hire a group to promote their "concept" or marketing idea. The record company owns the name and controls the product."

The group was held not to be a concept group. In coming to its decision, the court stated (581) that the norm in the music industry is that a person or group owns its name, and that the case at hand did not fall into one of the exceptions to that rule. It was decided that the "magic" that sold the group’s records was the personalities of the members, and that, accordingly, the name was related to the entertainment services they provided. It was thus found that the band owned the name.

To preserve his rights to the name of a group, the person in control must actually exercise control. In Yocum v Covington 216 USPQ (BNA) 210 (TTAB 1982) a previous member of The Pied Pipers took over the management of the group. However, on two occasions he allowed third parties to use the name without placing controls over the quality of the recordings. It was held that the uncontrolled licensing negated any priority of rights he may have had, and amounted to the abandonment of the mark. The mere fact that a group is not recording or performing anymore does of course not mean that they have abandoned any rights to their name. In Kingsmen v K-Tel International Ltd 557 F. Supp 178 (SDNY 1983) the court for instance held (183) that:
"[M]oreover, the fact that these individuals continue to receive royalties for Kingsmen recordings flies in the face of any suggestion of intent to abandon use of the name Kingsmen. These plaintiffs have no more abandoned their right to protect the name of Kingsmen than have the Beatles, The Supremes or any other group that has disbanded and ceased performing and recording, but continues to collect royalties from the sale of previously recorded material."

The continued receipt of an income stream, derived from the ongoing sales of the recordings is thus what is of relevance. It is not required that actual performances take place, and the sales of the recordings would constitute valid use of the mark. The lack of actual performances does therefore not equal non-use.

Position of member that has left group
A clear illustration of the strength of the group’s rights is contained in HEC Enterprises, Limited v Deep Purple 213 USPQ (BNA) 991 (CD Cal 1980). Here a previous member of the group, that performed with them for a year, adopted the name Deep Purple for a new group that he established. The court had no hesitation in finding that such use violated HEC’s trade mark rights, and ordered treble compensatory damages to be paid. The above issue has featured in particular in the context of partnership law, and the relevant decisions indicate that there is no single approach that would deliver a satisfactory result in each instance, and specifically, that would prevent confusion amongst members of the public. Fuqua v Watson 107 USPQ 251 (NY Sup Ct 1955) relates to The Ink Spots. After one of the members died, Watson, one of the three remaining members, agreed to disclaim rights to the name. The agreement also provided that the two other members, Fuqua and Kenny, shall have the right to the name. Watson commenced use of the name, and Fuqua sought to prevent the use. The court said (252) that any cause of action relating to the name The Ink Spots resides in the joint venture and not in one of its members alone. Under the laws of the state, a partner had no personal partial right in any specific partnership property of which he is a member. It was held (252) that:

"The name was not an asset of the joint venture or partnership which, upon the death of Jones, ipso facto, passed on to the surviving members. The pecuniary value of the "trade name" derived solely as a result of the personal skills of the four original members…and, therefore, could not be truthfully used by others after this group disbanded. Thus, when plaintiffs advertise their group as the "Ink Spots" they are, in effect, perpetrating a fraud upon the public by such misrepresentation.

In view of the unclean hands of Fuqua, relief was refused. Consequently, there were two groups "entitled" to perform under the name The Ink Spots. Commenting on this decision, McCarthy 16-73 states that if both groups were perpetrating a fraud on the public, the ruling was "a strange solution to the problem." In his view the case is an example of a finding that a group’s name was personal to the original members. In the decision of Giammarese v Dolfino 197 USPQ 162 (ND Ill 1977) it was also held that the name of a group was in the nature of partnership property, and a former member thus did not have a sufficient proprietary interest so as to enable him to transfer rights therein to a third party. Ownership and goodwill in the name was held to vest in the partnership. McCarthy, in dealing with the issue of joint ownership in general, also refers (16-71) to the decision in Durango Herald, Inc., v Riddle 719 F. Supp 941 (D. Colo 1988) where the court refused to enforce an agreement in terms of which both parties to a joint venture could use the mark concerned upon dissolution. He states that in view of the parties’ reluctance to compromise, the court was forced to extinguish the trade mark rights of the joint venture.

Callmann Unfair Competition Trade Marks and Monopolies (1997) par 19.01 note 2 refers to the decision in Givens Jewelers, Inc., v Givens 211 USPQ 571 (La App 1980) where it was held that neither persons in a partnership that started separate businesses, had priority in relation to the mark. He also refers to Girard Polly-Pig, Inc., v Polly-Pig by Knapp, Inc., 217 USPQ 1338 (TTAB 1983) which is to the effect that neither member of a former joint venture can enforce the relevant mark against each other, and either can object to registration by the other. An interesting solution mentioned by McCarthy (16-70) is to permit the parties involved to bid for the mark. The partners in the South African decision of Meilandt v Bell & Guyon 1907 TS 122 were intent on doing just that. Here it was agreed that upon dissolution of the partnership, the assets of the firm, including the trade name, would be sold. Due to an administrative oversight, the name was not sold at the auction that was arranged. One of the partners nevertheless commenced use of the name. The court stated (124) that it was not prepared to hold that the name was valueless, and that the actions of the respondent shows that a value was attached to the old name. The use of the name was likely to prejudice the late partnership in the sale of its old name. An interdict was accordingly granted to prohibit the respondent from carrying on business under the name of the old firm. This approach seems to establish that the name of a partnership does not automatically devolve onto one partner. Webster and Page South Africa Law of Trade Marks (1997) 5-12 states, inter alia with reference to Palmolive Trade Mark [1932] RPC 279, that where a trade mark enjoys a reputation in relation to goods or services, to which a number of persons have contributed, none of them can lay claim to the goodwill of the mark. Joint-ownership can however be claimed if each party, in the course of a joint venture, contributes something to the goods or services in relation to which proprietorship is claimed.

In the United Kingdom, the recent case of Saxon Trade Mark [2003] FSR 704 requires consideration. Here D, O and B, performed together under the name Saxon. D and O obtained registration of the band’s name, and this registration was attacked by B. D left the group in 1985, twelve years before the application concerned was filed. O left in 1995. Both members were replaced, and B continued to perform under the name. B’s attack was based, amongst others, on section 5(4)(a) of the Trade Marks Act 1994, which allows for an opposition in cases where the opponent can prevent the use of a mark on the basis of passing-off, in other words where he has prior user rights. With regard to D, it was found (page 714 paragraph 28) that he abandoned any rights to the name, and even if he did not, he was not the owner of the name and goodwill generated by the original band. O’s position was considered to be much the same (page 715 paragraph 30). It was found that the current band could indeed bring passing proceedings, and that recent goodwill was its alone (page 716 paragraph 33). D and O’s historical conection with the band would be no defence.
If there was any residual goodwill left in the band, as D and O alleged, that was owned by the partnership, not the individual members. Any administrator appointed by the former partnership could bring passing off proceedings against D and O. The court mentioned, but did not deal with the interesting question whether such an administrator could bring passing off proceedings against B (page 716 paragraph 33). The court accordingly granted the application for a declaration of invalidity. This ruling illustrates that the actual ownership of a mark can, with time, become "lost" if the particular members of a band does not take pro-active steps to resolve the issue at the time that the split in membership occurs.

Are lead singers treated differently?
In The Kingsmen v K-Tel International Ltd., 557 F. Supp 178 (SDNY 1983) The Kingsmen recorded "Louie Louie", with Jack Ely as the lead singer. Years later Ely and another band member re-recorded the song on an album, which stated "[T]hese selections are re-recordings by the original artists." The group sought to prevent Ely from creating the impression that the album had been recorded by the original Kingsmen. They stated that although Ely was the lead singer on the original recording, no other band member took part in the recording. Ely adopted the position that he, like any other member of the group, had the right to use the group’s name. He also alleged, in particular, that he had the right to record "Louie Louie" under the band’s name as he was the lead singer. The court indicated that it would be permissible to state that Ely was "formerly of the Kingsmen", but the album was likely to mislead consumers into believing that the recording was by the original group. It was also held that the public associated The Kingsmen with a group rather than an individual, because the group performed as an ensemble. Noone v Banner Talent, Associates, Inc., 398 F. Supp 260 (SDNY 1975 ) had a different result. Noone, the lead singer of Herman’s Hermits, left the band to pursue a solo career. Noone was known as "Herman". The former group members performed under the name Herman’s Hermits, after not being successful whilst using only the title The Hermits. Noone adopted the view that the use of the name was misleading, as he was no longer a member of the group. The court accepted this argument, on the basis that members of the public will assume that the name Herman’s Hermits imply that Noone was still a member of the band. This decision would not seem to establish though that there is an exception for the lead singer, but rather that the specific association of the name Herman with the plaintiff was likely to lead to confusion.

In Grondin v Rossington 690 F. Supp 200 (SDNY 1988) the name Lynyrd Skynyrd was registered in the name of a corporation, of which the band members and the widow of one of the members, Ronnie Van Zant, were shareholders. The latter agreed amongst themselves that the name would not be used for recordings made after the death of Van Zant. The group wished to tour under the name, and wanted to bring out an album called "Lynyrd Skynyrd Live". The widow sough to prevent both from taking place. The court adopted the view that due to the publicity surrounding Van Zant’s death, people attending concerts would realise that he would not be performing, but the purchasers of albums could mistakenly assume that the album featured the original members of the band. The court accordingly ordered the record company to identify the album as a recent recording.

Following on from the above discussion, it appears from recent media reports (see that the family of Jim Morrison, the late lead singer of The Doors, has instituted trade mark infringement proceedings against the other members of The Doors (Ray Manzarek and Robbie Krieger) on the basis that they do not have the right to use the name The Doors. The other remaining member, drummer John Densmore, also instituted a claim against the other two members on the basis that the other members of the band acted in breach of an agreement that the name and logo of the band can only be used by the original members of the band. According to the above source, the remaining members have now changed the name of the band to "The Doors For the 21 st Century." It is of course not possible to speculate on these matters in view of the absence of sufficient information, but it would appear that in instances where the ex-front men of a group institutes action, it is often the element of deception, rather than the fact of ownership that forms the basis of the courts’ rulings. To take an example from another band, namely Queen, it would seem that in the absence of clear cut ownership of the name Queen by Freddy Mercury, his estate would have to rely on the possible deception that may arise through the use of the name, if it wished to oppose the use thereof. Such an objection, insofar as recordings are concerned, can be overcome by indicating clearly that it is a recording by the current band. Even consent to the use of Queen by the estate of Mercury would of course not necessarily prevent the likelihood of confusion that members of the public might experience if the nature of the new recording is not indicated. However, as per the Grondin case, live performances would seem not to be affected, as it is well-known that Freddy Mercury has passed away.

As is apposite also in relation to many other legal conflicts, the proper formalisation of the parties’ understanding of their rights can prevent, to a large extent, any conflicts that may arise. This is in particular the ideal situation as the music world is of a very dynamic nature, and success can overtake a group before they develop a realisation of the commercial value of their name. McCarthy (16-77) states that multiple ownership of a mark presents unique problems that cannot properly be resolved only in terms of corporate or partnership law. He suggests that the issue be dealt with by making due allowance for customer perception and the origin policy of trade mark law. A perceived ownership dispute may thus, perforce, be resolved on the basis of the prevention of deception of the public, an approach that is fully in line with traditional trade mark principles. The light and name under which exposure on stage takes place must thus be selected carefully (see Eastman Kodak v DB Rakow 739 F Supp (WDNY1989)).