Disputes between former and current members of a band over the band’s name are both frequent and difficult to resolve. Last week the High Court provided some much needed guidance in Byford v Oliver and Dawson, a decision concerning rights in the name of heavy metal band Saxon. Unfortunately the judgment raises as many difficult questions as it answers.
Graham Oliver, Steven Dawson and Peter ‘Biff’ Byford were all founder members of Saxon which was formed in the 1970s. Steven Dawson left the band in 1985. Graham Oliver left in 1995. Biff Byford continued as a member throughout its various manifestations. Subsequently Steven Dawson and Graham Oliver played in other heavy metal bands using a variety of names which included one or both of their names as well as the word ‘Saxon’. Both appeared to accept that they could not perform under the name ‘Saxon’ by itself.
In 1999 Graham Oliver and Steven Dawson registered ‘Saxon’ as a trade mark. They then maintained that they had exclusive rights in the name and tried to prevent Biff Byford and Saxon’s promoters and merchandisers from using the name.
Biff Byford applied to the Trade Mark Registry to have the trade mark declared invalid. He applied on the basis that the registration had been obtained in bad faith (section 3(6) of the Trade Marks Act 1994) and that he was entitled to prevent use of the trade mark by bringing an action for ‘passing off’, that is an action to stop others misrepresenting themselves as Saxon (section 5(4) of the Act).
Surprisingly he failed. The Registrar took the view that the goodwill of the band and the rights in the name were owned by the individual members of the band. As each member left he retained those rights. The Registrar said that Biff Byford had as much right to register ‘Saxon’ as a trade mark as Steven Dawson and Graham Oliver but they had simply ‘got there first’.
Biff Byford appealed to the High Court. There Mr Justice Laddie made short work of the Registrar’s decision and declared that the trade mark registration was invalid.
It was accepted that, like most bands, Saxon was a partnership at will, that is a partnership for as long as all the partners wanted to stay together. The judge took the view that the name and the goodwill attached to it were assets not of the individual partners but ‘of the partnership’. This is not to say that a partnership is a legal entity separate from the partners themselves like a limited company, but that the partners own the assets for their joint benefit.
The judge said that when Steven Dawson left the band in 1985 that partnership dissolved. He had no right to use the partnership’s assets on his own. He could have asked for a realisation and division of the partnership assets. He did not do so. It was clear from his subsequent conduct that he abandoned his interest in the goodwill and the Saxon name.
Graham Oliver’s position was less clear but the judge decided that having asserted no claim for three years he had also abandoned his interest in the name and goodwill.
It followed that it was Biff Byford and the current members of the band who owned the name and the fresh goodwill which they had generated themselves and were therefore in a position to prevent Graham Oliver and Steven Dawson passing themselves off as Saxon.
The judge also found that the application was made in bad faith. Graham Oliver and Steven Dawson said that they had obtained the trade mark registration for the benefit of all the original members of the group. The fact was that they had applied in their own names only.
In establishing the principle that the name and goodwill of a partnership are owned ‘by the partnership’ and not the individual partners the judge effectively changed the law as previously understood. The commonly held view had been that on the expiry of a partnership, unless there was agreement to the contrary, each partner was entitled to a share of the goodwill and thus to carry on doing business under the name.
If the name can only be used by all the partners together, when the partnership dissolves no-one can use it. This is a possible and worrying implication of the judge’s decision: upon the departure of one band member, in the absence of agreement, the remaining members cannot continue under the band name.
One can only heartily endorse the view expressed by the judge that a properly advised band could avoid the problem that this might cause by entering into a partnership agreement dealing with what is to happen to the name if a band member leaves.