Battle of the b(r)and - get a well drafted band agreement or a drum machine
The curious afterlife of old bands, some of whom survive their original membership, is a little publicised niche of the IP world. Legal disputes about who owns the rights to the names of some of the world's most lauded rock bands are not uncommon. The oddest is probably Blood Sweat and Tears, which shows up with scattered members from the past but also "with Chuck Negron" who acquired rights to the group but had nothing to do with it originally. Instead he was with Three Dog Night, which tours without him.
Last year, the five members of the Angels who shot to fame in Australia in the late 1970's re-united after one such dispute. Part of the Australian citizenship test is to recite the rejoinder to the Angels' hit "Am I Ever Gonna See Your Face Again?" In another barney that ended up in court, the founding members of Australia's 'Little River Band' are unable to trade under that name because they sold it to a guitarist in the 80’s who ended up with all the shares in the company that owned the rights to the name. When they tried to tour as the ‘Original Little River Band’ a couple of years ago, he sued them and won. Now they trade as 'Birtles, Shorrock, Goble of the original Little River Band'. To someone who did not like their sound in the first place, now they sound like a law firm.
In a recent dispute over the name HERMAN'S HERMITS, Frimp Ltd v Jan Barry Whitwam [2009] ATMO 5 (19 January 2009) Jan Whitwam (the Applicant), who was not in the original 1963 line-up but was from 1964 a drummer in the famous 60's British act, applied in Australia to register the trade mark HERMAN'S HERMITS in class 16 for "Printed matter, posters, photographs, stickers" and in class 41 for "Entertainment services; live performances by a musical group including performances of recorded music by a musical group." The applicant also owns the trade mark in the United Kingdom in class 41 and for the European Community in classes 16 and 41.
The Opponent, Frimp Limited was formed in 1964 by five members of the band (including the Applicant) to act as employer of the individual band members, to enter into contracts, and to receive royalties and other payments related to performances and recordings of the band.
However, it was held in a Trade Marks Office decision, that there was no evidence the Opponent was formed to own the trade mark rights, nor that it does so. It was further held that the 1964 line-up who were also all of the directors and shareholders of the Opponent (bar one) – even though they had been in dispute – had agreed that the band name should continue to be used by which ever one or more of the 1964 line-up wished to perform as HERMAN'S HERMITS and that the Applicant (stated the Hearing Officer): "is the last remaining band member of those who formed the Opponent. He is playing in the band that bears the name HERMAN'S HERMITS and plays the songs associated with the band. The applicant has done so, along with a diminishing number of members of the original band, continuously since 1964".
In other words, the Applicant used the name pursuant to an agreement. I will spare you all the details. You can read them for yourself HERE. Clearly, an ill-conceived IP agreement is as damaging as none at all. According to Nicholas Weston, the law firm behind the Australian Trade Marks Law Blog, if a band chooses to have no band agreement (and failing to put one in place is also a choice) their recommendation is to purchase a drum machine. So, what is the difference between a drummer and a drum machine? A drum machine can keep a steady beat, you only have to punch the information into the drum machine once, it won't steal your girlfriend and cannot register a trade mark.
