In the past performing artists have been quite laidback about their IP rights. Well-known bands focused on their success, screaming fans and fame – and IP rights were not given a second thought. Although today IP issues receive much more attention and performing artists' IP rights are far more stringently policed and enforced, occasionally a skeleton leaps out of the proverbial closet.

UB40 case

The latest of these is the disagreement between Ali Campbell, former front man of renowned British pop/reggae band, UB40, and the remaining members of the band, regarding the use of the band name. As with most good things, a band's journey to fame and fortune eventually comes to an end, often because band members want to pursue solo careers, but also because disagreements between band members regarding the band's direction can result in the relationship crumbling. The list of bands that have fallen from the top in this way is long.

UB40 was hugely popular in the 1980s and 1990s, and remained together for 29 years. Campbell left the band in 2008 and recruited Mickey Virtue and co-UB40 front man Astro to form a new band, which they called "UB40 featuring Ali Campbell, Astro and Mickey Virtue". The remaining six members of UB40, including Campbell's brother, took issue with this, claiming that they were the only ones who could call themselves UB40. They commenced a legal battle against Campbell and his band in the UK high court, most recently applying for an injunction and damages against Campbell and his band. Campbell sought to block the injunction, but the court found in favour of the remaining members, stating that they had a "realistically arguable basis" for their complaints. The date of the full trial is expected to be announced shortly.

The name UB40 is not registered as a trademark, although the European Intellectual Property Office's records show that Campbell filed an application to register it as a trademark in his own name in 2013. The application was withdrawn following opposition from the remaining members of the original band.

Band name ownership

The dispute gives rise to an interesting legal debate. From a legal perspective, the issue of who owns a band name usually falls under trademark law. It is not uncommon for band names to be registered as trademarks by the band's record label or producers but without a registration, who owns the rights?

The function of a trademark is to serve as a badge of origin – that is, to distinguish the goods or services of one party from the same or similar goods or services sold or offered by another party. Trademarks are protectable in relation to the goods or services for which they are used or intended to be used. A band name would normally be registered in respect of entertainment and related services, including live performances in Class 41. Registration could also be obtained in goods classes covering merchandise featuring the band's name (eg, digital and other records, CDs, clothing and other products).

After the songs and albums produced by a band, which are protected under copyright law, the band's name is arguably its most valuable asset and can be exploited commercially for substantial profits resulting from record sales and merchandising.

Turning to the question of who has the right to a band's name in the absence of a trademark registration or specific agreement, there are no set rules in this regard. Therefore, the issue must be determined with regard to existing trademark law principles.

From a South African law perspective, the person who can claim to be the good-faith owner of a trademark is the person who appropriated, originated or acquired the mark. In applying this principle in the context of a band name, in most cases it may be impossible to attribute ownership to a single band member, as the founding band members may be jointly responsible for conceiving the name, in which case they would jointly own the rights to the name. In the case of UB40, on the one hand the remaining six members of the band were in the majority, but on the other, as Campbell argued, what is UB40 without its frontmen? There are merits to both sides' arguments.

Bearing in mind that the function of a trademark is to serve as a badge of origin, certain criteria may be relevant in identifying the good-faith owner of a band name. The issue may have to be determined by looking at it from the fans' perspective. Relevant questions may include who has been with the band the longest, which group has the most original band members, who was responsible for most of the songwriting and whose singing or playing was the most identifiable.1

The factors to be taken into account are not exhaustive and each case must be decided based on the particular facts and circumstances.

Like any trademark, a band's name is an asset, and potentially a valuable one. It can be bought, sold and commercially exploited and like other IP rights it should be properly protected and enforced. The issue of band name ownership should be decided and agreed by the band upfront in writing, and comprehensive agreements regarding the commercial exploitation of the name should be concluded.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.