Title: Frankie say thanks as judge rejects name claim
Author: Frances Gibb
Source: The Times
Publish date: June 7, 2007
Four former members of the Eighties band Frankie Goes To Hollywood have thwarted an attempt by the lead singer, Holly Johnson, to secure exclusive rights to the name.
The ex-partners in the group, famous for the hit Relax, which was banned by the BBC, and the spin-off “Frankie Say Relax” T-shirts, went into dispute over the name after efforts were made to revive the band.
A trademark judge has now ruled that Johnson, who did not want to take part in the revival, “acted in bad faith” in seeking to register the Frankie Goes to Hollywood name as a trademark for his exclusive use on CDs, DVDs, clothing and other merchandise.
Mike Foley, a trademark adjudicator from the UK Intellectual Property Office, supported the attempt by Peter Gill, Mark O’Toole, Paul Rutherford and Brian Nash to block the application made by Johnson’s company, Frankie Goes To Hollywood Ltd. The four argued that the rights to the name were owned by all the former band members and that they should not be blocked from using it for concerts, as long as they made clear that they had a new singer, Ryan Molloy.
Lawrence Abramson, a media lawyer with Harbottle & Lewis, said: “This kind of dispute tends to arise with bands that were successful a couple of decades ago. By the early Eighties, most big bands were closely regulated as to who owned what.”
He said that in principle anyone could register a name but that the trademarks registrar would examine who had an en-titlement to it.
Johnson claimed that he had come up with the name Frankie Goes to Hollywood after being inspired by a painting of Frank Sinatra that appeared in a book called Rock Dreams by Guy Peellaert, and that he had used it for another band before forming the one that became successful.
He argued that, having previously used the name with other musicians, it was his intellectual property, like the words and songs he had written. He also claimed that none of the musicians played on the band’s No 1 hit, Relax, and that their work was performed by session musicians or “electronic gadgetry”.
He added that, apart from some backing vocals, this was the case for 90 per cent of the album Welcome to the Pleasuredome, which also sold millions.
Johnson said that the band members signed an agreement in the Eighties recognising that he had originated the name, under which he authorised the band to use it until one of them left, after which other group members would lose their rights to use the name. After he decided to leave the band in 1987, therefore, the others had no right to use the name without his permission.
But the other band members argued that neither Johnson nor any companies controlled by him were entitled to a monopoly over the name.
Mr Foley said that after the split in 1987, the name went unused by members until 2003, when they were asked to appear on a television programme, Bands Reunited, which reforms groups for one-off concerts. But the use of a “Frankie Say Relax” T-shirt in the US sitcom Friends would have helped to keep the name in the public eye, the adjudicator added.
The television programme, in which Johnson refused to take part, was followed by a concert in November 2004 in aid of The Prince’s Trust, for which the band used its new singer, and a series of concerts across Europe. The promotion-al material for the tour made the lineup change clear.
“The opponents allege that, following Bands Reunited, Mr Johnson feared that the band would reform and perform again, and, not wishing to be part of the plans, filed the application as a ‘spoiler’,” Mr Foley said.
“Perhaps the most serious allegation is that Mr Johnson made the application without the knowledge of the other band members, and sought to monopolise the name to their exclusion merely to interfere with their activities.”
He ordered Johnson’s company to pay his ex-bandmates £3,250 towards their costs of opposing the application.
Faye Treadwell lodged a claim with the High Court that she is the legal owner of the Drifters, who sold 300 million records. She is the band manager’s widow. Three of the singers are countering her claim
Tony Hadley and two other band members tried to register Spandau Ballet as a trademark. In 2002 the High Court ruled that the name belonged to the band’s trading company, controlled by Gary Kemp
A German court ordered Maizie Williams to stop performing as Boney M as she did not sing on any of the band’s recordings