Popstars lose their liberty: Sutherland v V2 Music

Judgment was given by the High Court on 22 January in a dispute involving the use of the name “Liberty” by some of the unsuccessful finalists in the televised talent competition “Popstars”.

The finalists formed their own group at the beginning of last year and were subsequently signed to the V2 label.  They released successful records under the name Liberty (“New Liberty”).

The claimants were members of a band also called Liberty (“Old Liberty”) which was formed in the late 1980s.  They were joint winners of the Young Band of the Year competition in 1993 and had toured as support act to Wet Wet Wet. The band reached the height of their public exposure between 1993 and 1996.  Although they were not recognised at a national level and had not been able to secure a deal with a major record company, they had recently recorded some new tracks with a well known rap vocalist and were playing with other musicians.

Old Liberty sued New Liberty and V2 claiming that notwithstanding Old Liberty’s decline in popularity since the mid 1990s, they still had a reputation with their fans and confusion between the two bands was inevitable.  They complained that this confusion would damage their reputation and goodwill.

New Liberty, on the other hand, argued that Old Liberty had made little impact on the industry or the public and although they may have had some reputation in the early 1990s, Old Liberty had effectively ceased trading over the past five years so that any reputation and goodwill they may have enjoyed had evaporated by 2001.

Mr Justice Laddie said that the hardest point that he had to decide in the case was whether any reputation that Old Liberty had acquired up to 1996 had survived to the spring of 2001.

He said that this was a case which was very close to the borderline.  Nevertheless, whilst Old Liberty had kept a low profile during the last five years, the fact that they continued to maintain a presence in the industry, continued to write music, distributed promotional records and were sufficiently well known and respected that they were asked to play with other artists, led the judge to the conclusion that they had a continuing if small commercial reputation.  As the judge put it, “this enthusiasm for Old Liberty does not sparkle as brightly as it did then, but it still glows”.

Since the pop music industry was prone to criticism or praise, any success or failure of New Liberty was bound to reflect on Old Liberty and its members and the continued use of the name by New Liberty would destroy the goodwill which had been acquired by them.  The judge granted an injunction restraining New Liberty from using the name in future.

It is always a question of fact and degree whether any trader who has temporarily or permanently closed down a business should be treated as no longer having any goodwill in that business and in any name attached to it.

New Liberty had learned of the existence of Old Liberty fairly early on and well before their first record was released.  They took the view that Old Liberty had no legal rights to stop them using the name.  The judge did not criticise them for coming to that conclusion, since Old Liberty’s case was not the strongest.

Nevertheless, it would be well to heed the judge’s warning that carrying on with the use of a band name once you have knowledge of the existence of a band with the same name involves taking a risk.

The problem could have been avoided if a different name or a sufficiently modified version of the word “Liberty” had been adopted at an earlier stage.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.