What's in a Name? Choosing the Right Name for Your Music Band

Choosing a name for your new music band is an exciting step. Your band's name is more than just a way to identify you. It is your brand, your message, and the foundation of a connection with your fans and the music industry. However, as two important legal cases show, picking a name without considering the legal implications can lead to confusion, disputes, or even costly litigation.

This article explores the lessons from Sutherland and others v V2 Music Ltd and others [2002] EWHC 14 (Ch) and Alan Williams Entertainments Ltd and another v Clarke and others [2022] EWHC1798 (IPEC). Together, these cases highlight how the law protects your band's name and reputation, and what steps you can take if your name is misused.

What Is Passing Off?

Passing off is a legal claim used to protect the reputation you have built with your name, brand, or identity. It stops others from misleading the public into thinking their work is connected to yours. To succeed in a passing-off claim, three things must be proven:

• Goodwill: Your name must have a reputation that connects it to your work in the public's mind;
• Misrepresentation: Someone else's use of the name must misleadthe public into thinking it is connected to you; and
• Damage: Their actions must harm, or be likely to harm, your reputation or business.

The Case of Liberty: Sutherland v V2 Music

This case involved a funk band called "Liberty" (Liberty 1) that had moderate success in the 1990s. Years later, a newly formed pop group, also called "Liberty" (Liberty 2), began using the same name. Liberty 1 argued that this caused confusion and threatened their reputation.

Did Liberty 1 Still Have Goodwill?

Although Liberty 1 had not been widely active, the court found they had residual goodwill. This means their name still had recognition and a connection to their work despite their reduced activity. The court considered factors such as:

• Past Success: Liberty 1's achievements left a lasting impression on funk music fans
• Ongoing Activities: They continued recording, promoting, and staying in touch with industry contacts.
• Public Recognition: Witnesses confirmed that the name "Liberty" was still associated with the band's music.

The Outcome

The court ruled in favour of Liberty 1, finding that Liberty 2's use of the same name misled the public and harmed Liberty 1's goodwill. This decision shows that even a band with limited recent activity can protect its name if its reputation remains intact.

The Case of The Rubettes: Alan Williams Entertainments v Clarke

This case centred on a dispute over "The Rubettes," a 1970s band. The Claimants, Alan Williams Entertainments Ltd (“AWEL”) and Mr Alan Williams, who had managed and promoted the band since 1983, argued that the Defendants, who were former band members, began performing under the same name without permission and even registered a trade mark for it.

The court ruled that AWEL owned the goodwill in "The Rubettes" because goodwill is tied to the party that controls the business and takes on the financial risks. AWEL, under Mr Williams, had managed the band's bookings, arranged tours, handled promotions, and ensured the band's continued presence in the music industry. The Defendants, on the other hand, were found to be paid performers who worked under AWEL's direction and had not assumed similar responsibilities or risks.

The court also noted that the Defendants provided no evidence of trading independently or building goodwill under the name "The Rubettes" outside their role as performers. Without such evidence, their connectionto the name was limited to their hired positions within the band managedby AWEL.

Furthermore, the court invalidated the Defendants’ trade mark registration for "The Rubettes," finding it was made in bad faith to disrupt AWEL's legitimate business. This case highlights the importance of formal agreements in a band to clarify who owns the goodwill and intellectual property, as disputes over these matters can arise long after a band's heyday.

What Can You Do if Your Band's Name Is Misused?

If your band's name has been misused, you have several options:

• Bring a Passing-Off Claim:
  If someone else is using your name in a way that confuses fans and harms your reputation, you can take legal action to stop them.
• Challenge a Trade Mark:
  If your name has been registered as a trade mark without your permission, you can challenge the registration, especially if it was done in bad faith.
• Negotiate an Agreement:
  In some cases, you may be able to reach an agreement with the other party to clarify how the name is used and avoid confusion.
• Register Your Trade Mark:
  Proactively registering your band's name as a trade mark strengthens your rights and makes it easier to protect your name inthe future.
• Seek Legal Advice:
  Consulting a lawyer can help you assess your options and take the best course of action to protect your band's identity.

Conclusion

The name of your band is more than just a label, it is your identity and brand. The cases of Sutherland v V2 Music and Alan Williams Entertainments v Clarke show how the law can protect your name and goodwill, but also highlight the importance of taking proactive steps to secure your band's identity.

If you need assistance with protecting or registering your band's name, or if you believe your name has been misused, our firm is here to help. Contact us for tailored advice so you can focus on what truly matters - making great music.

‍

Disclaimer: Nothing herein shall be interpreted as legal advice to any person. Readers are encouraged to consult their legal representatives for independent advice. The information provided is based on overall observations and the experience of the practitioners of the firm at the time of writing. The content may change without prior notification depending on changes in the law. If there are two versions of the article in different languages, the English version will prevail in case of discrepancies.

‍

About Us:

Rendy Ng Law Firm is a law firm based in Hong Kong, providing a full range of commercial legal services for all sectors, with particular focus on supporting professionals and businesses in the medical and veterinary, consumer goods and retail and entertainment industries to achieve sustainable success. By combining legal guidance with understanding of business practicalities, we ensure that our clients receive support tailored to their business goals and individual needs. Please feel free to reach out to our team should you have any questions about our services.

For enquiries, please contact us at:

P | +(852) 6033-3072 E | info@rknlegal.com W | www.rknlegal.com