Sugababes – Who are They?

This article was included in our Summer 2010 edition of Inside IP magazine.

It’s easy, when times are good and everyone is getting on, not to plan for the future.  This is a common theme with bands and the problem has been highlighted again by the recent saga over use of the band name “Sugababes”.

As is not unusual with bands, the members of the band have changed over the years.  In the case of the Sugababes, the current line up is rather different to the original and at least one of the founding members doesn’t think it right for such a line up to carry on calling itself Sugababes.  So, Mutya Buena, founding member of the Sugababes, is applying for trade mark registration of the Sugababes name, and that application is being objected to by, amongst others, Universal Island Records Limited.  This has put the issue of band name protection into the spotlight.

If a band is successful, its name will be the most valuable asset, generating goodwill and used to produce revenue from a huge variety of music and non-music related products.  Mutya Buena’s Sugababes trade mark application raises the question of what protection is available for bands, band members and recording companies in using band names and why obtaining registered trade mark protection is seemingly not high on the list of protection priorities.

Copyright, which arises automatically, does not generally apply to band names although will almost certainly apply to the artwork, designs and logos developed around the band’s album covers, advertising and merchandising.

A band which uses a name and establishes goodwill through use of the name may have grounds for a “passing-off” action against other bands using the same or a similar name and trading off the original band’s goodwill.  However, passing-off actions are expensive and hard to prove.

A band may also set up a website, register a domain name or create a registered company name using the band’s name.  However, neither a domain name registration nor a company name registration gives you the same extensive rights as a trade mark registration to prevent other people from using the band’s name.

There are also online band name registries where a band can quite cheaply register the band name and search for other acts going by the same name.  However, these registries provide no legal protection other than acting as evidence of when the name began to be used and by whom and offering some deterrent value against later would-be users.  It is not clear how widespread the use of such registries is or whether those using the registry clearly understand that registration gives them any legal protection.

The most effective way to protect a band’s name is to register it as a trade mark.  However, as shown by Mutya Buena’s application, even very successful bands and their recording companies do not always do so until problems arise. So who owns a band’s name?

It depends on the circumstances but generally all the original founding members of a band have equal “partnership” shares in the name unless there is an agreement to the contrary.  The band on signing with a record label may under the terms of the contract give that label exclusive right to use the band’s name.  Such an agreement will often also include a “group clause” that will give the label the right to continue to use the band’s name even if one or more members of the group leave.  If a band does not want all the members of the group to have equal rights in the name and to retain those rights even if that member leaves then this has to be stipulated, preferably in a written agreement.  There may be circumstances in which original members may be found to have abandoned their rights but this will be hard to prove.

Any application for a trade mark registration should therefore, in the absence of any other agreement, be made in the name of all of the original band members.  It is worth noting that, in addition to Mutya Buena’s application in her own name for SUGABABES, a further application was later filed in the name of all three founding members as owners.

A successful trade mark registration gives the owner of the registration the right to prevent other bands from using and exploiting the band name.  It can also give powerful rights to take action against counterfeit merchandise.  And, perhaps most importantly of all, the act of applying to register the mark can focus the attention on the issue of who should own it and what should happen to the name if band members change.

So why is it that bands and their recording companies do not automatically register band names as trade marks?  The answer seems to be that both legally and traditionally band names belong to the bands themselves and not to the recording companies.  This is not the case with bands that are created by record labels but these are still the minority.  Band name protection is therefore left to the band themselves to whom this would not be a priority, particularly in the early years when name changes are a usual occurrence.  Once successful, there is thought to be little to be gained by another artist calling herself Lady Gaga and trying to exploit a name which would so obviously not be hers.  The recording companies’ commercial interests lie in protecting the recordings themselves and the artwork, packaging, advertising and merchandising rights that are exploitable without recourse to the artist, who, in addition to the recording rights, gives the record label the rights to use its name and likeness on promotional material and artwork and sometimes on merchandising in return for royalty payments.

Whatever the primary commercial interests of the recording companies may be, registering a band’s name as a trade mark undoubtedly provides an extra layer of protective rights against piracy and exploitation by others.  Registration also provides evidence of ownership rights and may make it easier to pre-empt or settle arguments over the rights of members leaving or being ousted from the original band line up as it seems is the case for the Sugababes.

Julia McFarlane

Kate Széll 14 Jun 2010

Return to news list