March 2003

Artists, Merchandising

A reunion concert featuring two original members of the Doors has prompted a law suit from original drummer John Densmore in the Los Angeles Superior Court for breach of contract and unfair competition. Original keyboardist Ray Manzarek and guitarist Robby Krieger have teamed up with vocalist Ian Astbury (formerly of the Cult) and Stuart Copeland, drummer with the Police, to play a concert in Los Angeles. Densmore claims that the band’s name is owned as a partnership by the three living members and the late Jim Morrison’s wife, Pamela Courson and that each partner has a right of veto over use of the name. He claims that the ‘new’ Doors are misusing the band’s name and logo and will confuse the general public.
Recent cases in the UK involving the use of original band names have included Sweet and Bucks Fizz.

COMMENT : This area of law has recently been explored in the UK by the High Court in the case of Byford -v- Oliver and Dawson (2003). This case involved the use of the name ‘Saxon’ by Biff Byford, the original singer with the British heavy metal band. Byford had been a band member since its formation in the late 1970s. Steven Dawson and Graham Oliver were also founder members. Dawson left the band in 1985 and Oliver left in 1995. Biff Byford continued as a member of the band through numerous new line-ups – always called ‘Saxon’. Oliver and Graham continued to perform but used a variety of names, often including their own names with a reference to Saxon. Oliver and Dawson never challenged Byford’s right to use the name ‘Saxon’ but in 1999 they registered “Saxon” as a trade mark and attempted to prevent Byford using the name.

Byford applied to the Trade Mark Registry to have the trade mark declared invalid on the basis that the registration had been obtained in bad faith (under the Trade Mark Act 1994) and that Dawson and Oliver were guilty of ‘passing off’ and misrepresenting themselves and their trade mark as ‘Saxon’ when Byford was the ‘real’ Saxon. Byford failed to have the trade mark declared invalid with the Registrar deciding that with band members (all of whom may have a claim on a band’s name) it was a ‘first come first served’ rule with regard to registration. Byford then applied to the High Court who overturned the Registrar’s decision and declared the Oliver/Dawson registration invalid.

Unlike the Doors case, there was no formal agreement between the original band members governing use of the band name. Mr Justice Laddie held that, in the circumstances, the band name must be owned by all of the original band members as ‘partners’. What this means is that if a band ‘partnership’ was split up NO member would own the name unless there was a formal agreement governing its use. However, the Judge held that, in the circumstances, both Dawson and Oliver abandoned their rights to the goodwill and ownership of the ‘Saxon’ name which was now owned by Byford and the new members of the band.

This certainly clarifies the law in the UK, although it suggests that bands must have a written agreement governing ownership of the band name – because otherwise, if the band splits, no member or group of members could use the band name without agreement of any one, or more, original members who may not wish to continue.

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