O/0441/24, Howard Bates v Wayne Barrett-McGrath, UK IPO, 15th May 2024
NO GREAT SWINDLE
IN PUNK DISPUTE
Poor behaviour wasn’t put up with, writes Robert Franks
KEY POINTS
No one original band member can claim goodwill
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Goodwill can be “re-energised” after a long period of patchy use or non-use
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Bands can set out ownership and the right to use the name with a separate partnership document, which in this case was not present
Slaughter and the Dogs (SATD) was a group formed in Wythenshawe, Manchester, in 1975 by Wayne Barrett-McGrath and was part of the first-generation UK punk scene. The band took its name from a combination of David Bowie’s Diamond Dogs and the album Slaughter on 10th Avenue by Mick Ronson of the Spiders from Mars. SATD found themselves at the epicentre of the UK punk movement when they played with the Sex Pistols on 4th June 1976 at the Lesser Free Trade Hall in Manchester. The original members were Barrett-McGrath (vocals), Mick Rossi (guitar), Howard Bates (bass guitar) and Brian Grantham (drums). Nearly 50 years later, the band members are squabbling about ownership of the band’s name.
Mark history
The UK trade mark SLAUGHTER AND THE DOGS was registered as a word mark for goods in class 9: “Musical cassettes; Musical recordings; Musical recordings in the form of discs; Musical sound recordings; Musical video recordings”. It was registered to Barrett-McGrath. The Applicant for invalidation was Bates, who claimed that the registration should be in the joint names of all band members who have continued to use the name.
Barrett-McGrath was represented by Erin Custer-McGrath, who it was established was not legally qualified, and Bates was represented by Karen Boyes of Counsel, at a hearing held by video conference in June 2023.
Evidence
Voluminous evidence was presented, not all of it admissible. The evidence submitted by Barrett-McGrath claimed that Bates was a contracted bass guitar player for three years and that Barrett-McGrath retained another bassist, John Pierre Thollet, who played with the band for over 30 years. It was also asserted that Bates had been running a bed and breakfast business for 30 years and was not involved in the music industry during that time.
The Hearing Officer made the decision on the evidence before him and disregarded numerous statements between band members that were not filed in the correct manner for evidence and were received piecemeal throughout the case. Evidence that was presented with a signed statement of truth was, however, accepted and considered. The evidence included several social media posts, which were accepted and recited in the decision.
Barrett-McGrath’s facts stated that, from the outset, all four members received an equal share of any monies paid to the band, but also that he and Rossi were the driving forces in writing the songs and lyrics. According to Barrett-McGrath, the other two members were “contracted musicians”. Barrett-McGrath claimed to have disbanded the group in 1978 and reformed it without Bates.
“This is a trade mark invalidation action, but it looks more like a copyright royalty dispute case based on some of the evidence presented”
Other evidence showed an initial recording contract, according to which the original band members – Barrett-McGrath, Bates, Grantham and Rossi – were each entitled to an equal share of any proceeds from the contract. Bates showed a recording contract with Decca Records in 2014 where his share was 25% of royalties due. Other royalty statements were provided with other record companies, each showing a 25% share of the royalties due to Bates.
In 1979, Barrett-McGrath left the band and went to live in France. The remaining members recruited a new singer and released a new album to fulfil their recording contract with DJM records, but called the band “Slaughter” for that purpose. The band without Barrett-McGrath continued with a few more gigs in 1979, and then there was little evidence of further activity after 1980. In 1991, Barrett-McGrath, Rossi and Neol Kay released an album entitled Shocking under the name Slaughter and the Dogs, without Bates.
For the period between 1980 and 2015, the Hearing Officer concluded: “The evidence simply is not sufficient to draw any firm conclusions regarding the output or line-up of band members…”.
In 2015 and 2016, the original line-up of Barrett-McGrath, Rossi, Bates and Grantham was again put together to play in Manchester and Blackpool. Then, in 2021 and 2022, an alternative “original line-up” of Bates, Rossi, Phil Rowland and Eddie Garrity appeared and played at festivals in Manchester and Blackpool. During that time Barrett-McGrath was on tour performing with a different band.
Confused dispute
This is a trade mark invalidation action, but it looks more like a copyright royalty dispute case based on some of the evidence presented – for instance, evidence of creativity relevant to ownership of artistic works but not relevant to non-figurative trade marks (ie, who came up with the name) being submitted. This is possibly due, in part, to the trade mark registrant not being represented by someone legally qualified and regulated.
The evidence reflects a situation that happens in many bands, with musicians coming and going, band members falling out with each other, band members being substituted or band-hopping, all without any written contracts or foundation agreements. In other words, the normal punk band process.
The case turned on the existence of goodwill. There was no dispute that there was goodwill in the name Slaughter and the Dogs, but the issue was who owned that goodwill. In a previous cancellation decision of the same mark, goodwill was dealt with and it was determined by a different Hearing Officer. At the time of application for registration of the trade mark, it was found that there was significant goodwill existing in the mark.
The Hearing Officer organised the early line-ups of the group as being:
1. Barrett-McGrath, Bates, Rossi, Grantham – for the Do it Dog Style album, 1978.
2. Barrett-McGrath, Bates, Rossi, Rowland – DJM record contract, 1979.
3. Bates, Rossi, Rowland, Garrity – second album, 1979 to 1980.
The law of passing off (ss47(2)(b) and 5(4)(a) of the Trade Marks Act 1994) was found to be relevant to the issue of cancellation of the registration.
“The Hearing Officer found that the trade mark owner’s conduct – while perhaps very ‘punk’ – had been unacceptable”
It was found that for the invalidation action to succeed, the use of the contested trade mark must have been capable of being restrained at the date of registration due to pre-existing goodwill. There was a clear finding of goodwill created by the band in respect of the activities of a band, namely live and recorded performances.
Group goodwill
Each line-up of the band is an unincorporated partnership-at-will without any written partnership agreement. This means that the assets of the band, including its goodwill and therefore the rights to its name, are partnership assets to which each member is normally entitled to an undivided share. Each time a band member joins or leaves the existing partnership dissolves and a new partnership is formed. The goodwill resides with each of the individual band members, there being no written partnership deed to state otherwise.
Each of the band line-up iterations was found to have acquired its own goodwill in the mark independently. With this in mind, the Hearing Officer decided that the goodwill was collectively owned by the “last men standing” in the 1980 line-up, that the evidence showed that the 1980 goodwill remained present in 2015, and that the 2015 iteration of the band with the original 1978 line-up “re-energised” the goodwill but did not change the ownership of the goodwill from the later 1980 line-up.
In the end, despite voluminous and difficult-to-follow evidence, the invalidation action was a simple decision, because one band member was trying to exclusively acquire registration of a mark in which the goodwill was also collectively owned by other band members. Therefore the registration was invalidated.
However, the matter of ownership of the name Slaughter and the Dogs does not appear to be concluded, because unless all band members who are entitled to goodwill in the band name can come to a common agreement, none of them individually should be able to register the mark.
On the matter of costs, the Hearing Officer found that the trade mark owner’s conduct – while perhaps very ‘punk’ – had been unacceptable, with accusations of “vengeance, dishonesty and malevolence”, “blabbering” and time-wasting being made. At one point, Custer-McGrath attempted to obtain a closed hearing, claiming defamation and threats from Mr Bates and his associates. No proof was provided of such threats, so the request was refused. Clearly not making any allowances for creative temperament, and noting Bates’ patience throughout the proceedings, the Hearing Officer awarded costs in total of £4,430 against the trade mark proprietor.
Robert Franks is a Chartered Trade Mark Attorney at Franks & Co Limited
robert.franks@franksco.com
ILLUSTRATION: Shutterstock.com
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