• IN THE UK OFFICE

    TWO TRIBES GO TO WAR As Frankie Claims Band Name

    “Frankie says relax”…but the former members of Frankie Goes to Hollywood did anything but that recently when they went to war over ownership of the band’s name.

    The British pop band shot to international stardom in the 1980s with chart-toppers “Relax” and “Two Tribes”. The BBC’s ban on “Relax,” which it deemed obscene, helped propel the group to fame. The music suddenly stopped in 1987, however, when lead singer Holly Johnson left the band to forge a solo career, and his former band mates called it a day.

     

    BANDS REUNITED

    In 2003, the band was invited to perform in a televised “Bands Reunited” concert, and in 2005 it re-formed to perform at a concert in aid of The Prince’s Trust. Johnson declined to take part in either, and in 2005 his former band mates recruited a new lead singer to head the act, for which future concerts were also planned.

    Following the “Bands Reunited” approach, Johnson made a formal application to register the band’s name as a trade mark with the U.K. Intellectual Property Office. Success would have conferred on Johnson the exclusive right to use FRANKIE GOES TO HOLLYWOOD in respect of musical recordings and performances in the U.K. Those rights could be asserted against anyone using the name without his permission, including his former band mates.

     

    FRANKIE GOES TO LAW

    The potential impact was not lost on Johnson’s old co-stars. They launched a legal challenge, arguing that Johnson was not entitled to exclusive ownership of the band’s name. Evidence showed that fans knew the band included others, some of whom enjoyed followings of their own equal to or greater than Johnson’s. Fan mail sent to them demonstrated that Johnson’s departure was not seen as the end of the band. Some fans had asked what the band would do “now Holly had left.”

    Three years after the application was filed, Johnson’s old band mates prevailed. In a recent decision, the UK-IPO rejected Johnson’s application, holding that he had acted in bad faith in seeking rights in the band’s name to the exclusion of the other members. The UK-IPO found that the right to use the name vested in all the members. Although the partnership between them had been dissolved by Johnson’s departure, no single member could walk away and claim the band’s name as his own, to the exclusion of the others. The fact that Johnson had thought of the name himself made no difference—the name was the band’s, and was therefore owned by all the members.

     

    COMMENT

    Frankie reunited may have scored a point, but the costs will have been high. Further battles may also lurk if Johnson appeals, and a repeat performance could be necessary to secure refusal of a further application by Johnson before the European Community Trade Mark Office, in which the rights, if granted, would cover the entire E.U. The impasse is costly and damaging, and severely limits the ability of all the former members, including Johnson, to protect the band’s name and to profit from its continued notoriety.

    Planning for a future split is rarely foremost in performers’ minds. Bands commonly experience line-up changes, though, and most eventually call it quits. For successful acts, the ownership of rights in the name can then become critical, and a little legal planning at the outset can avoid needless, costly disputes later. When two tribes go to war, it can then be the band against others, not the band against itself.