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The power of marks: Frankie goes after Hollys name

16 July 07

How failure to address issues of ownership of the band's name stored up trouble for Frankie Goes to Hollywood

by Colin Hulme, Jennifer Whitehead

A recent decision over the right to use cult 80s band name “Frankie Goes to Hollywood” has highlighted the importance of clearly defining intellectual property rights both within the music industry and otherwise. The reformed band has just successfully opposed ex-lead singer Holly Johnson’s application to trademark his former band name.

At the height of their fame the five members of the new wave band enjoyed chart success with hits such as “Relax” and “The Power of Love.” However rock n’ roll history is littered with bitter band disputes, and in 1987 Holly Johnson left to pursue a solo career and the band broke up. No contract was put in place to deal with the band’s name or any other intellectual property, such as goodwill, at that time. In 2003, following their appearance on the TV show “Bands Reunited”, three of the original members remerged for a series of concerts under the Frankie Goes to Hollywood name. Johnson did not rejoin the band and a new lead singer was used for their comeback shows.

Band names are often one of the most significant assets owned by group members and in April 2004 Holly Johnson’s company “Frankie Goes to Hollywood Limited” applied to register the trade mark “Frankie Goes to Hollywood.” If successfully trademarked, the original members’ use of this name would have constituted trade mark infringement and they would have been unable to continue their comeback using this name. Johnson applied for the trade mark on the basis that he had created the name and set up his company in order to try and retain the exclusivity of it. The remaining members challenged this application, stating that the formation of the limited company and the subsequent trade mark application was merely a tactical move to prevent them from re-forming under the name.

The UK Intellectual Property Office has ruled in favour of the re-formed band. Holly Johnson’s application was refused under the 1994 Trade Marks Act on the basis that the re-formed band had an “earlier right” in the name. Essentially the name had become synonymous with the original band as a whole and not one individual member. Each member of the band therefore had an established right to use the name when the trade mark application was filed.

While it was not disputed that Holly Johnson had devised the name, this did not entitle him to the trade mark. The originator of a name does not automatically acquire a right to the corresponding trade mark and in order to obtain this it must be shown that a degree of goodwill and reputation attaches to a particular product under a distinguishing name. In this case goodwill attached to musical recordings under the Frankie goes to Hollywood name from the date they began recording and performing. However the goodwill acquired clearly attached to the band as a whole and not just to Holly Johnson. The other members consequently acquired an equal right to use the trade mark in connection with their music.

Further, and most damning, it was held that Holly Johnson’s actions were in bad faith and that he deliberately applied for the trade mark in order to spoil the band’s comeback plans.

This is not the only example of bands falling out over the right of individual members to use their band name. In the US, the Beach Boys challenged member Alan Jardine’s attempt to use several variations of the Beach Boy name for a solo tour. Taking the opposite view, the US courts ruled that Jardine was not entitled to continue touring under the Beach Boy name. The difference with this case was that Jardine’s use of the name in conjunction with his promotional material was held to imply sponsorship by the Beach Boys, which was not the case, and both the public and promoters were confused. In contrast the re-formed 80s band was careful to state that Holly Johnson was not performing with the reunited band and that a different singer was appearing.

When things are going well it is all too easy to forget that issues over ownership may arise at a later stage. If either band had put in place contracts clarifying ownership of the band name, future difficulties might have been avoided. While band names are currently in the press, this applies to all brands and intellectual assets owned by businesses. While the Frankies can now relax and continue on the path to Hollywood, the journey would have been considerably smoother if ownership had been addressed at the outset.

Colin Hulme and Jennifer Whitehead,
IP & Technology Team at Burness LLP