From “Signing Off” to Passing Off. UB40 and the dispute over the use of the band’s name

by cristinaberra

“Signing Off” was the debut album of UB40, a British reggae/pop band which was formed in Birmingham in 1979 and over time has sold more than 70 million records, achieving great success both nationally and internationally.

The band was originally formed by nine members and this line-up stayed unchanged for nearly thirty years until 2008, when the frontman Ali Campbell left the group and was followed shortly by the keyboard player Mickey Virtue. In 2013 Astro left the band as well and the three formed a new version of the group, calling themselves “UB40 featuring Ali Campbell, Astro and Mickey Virtue”.

These facts have led to the recent lawsuit , where the remaining six members have claimed passing off on the goodwill of the group and the use of the band’s name. In that dispute the High Court recently considered the defendant’s application for summary judgment in  Campbell v Campbell (unreported, 21 March 2016).

Here are the facts of the case.

Goodwill is a form of intangible property that has be defined as “the benefit and advantage of the good name, reputation and connection of a business”.[1] Typically, passing off actions concern the goodwill that arises in relation to the name, symbol or logo that has been employed by a trader and consequently has been associated with its business.

The members of the band as in the original complete line-up were all employed by a company, which was the sole owner of the goodwill in the band and in the band’s name. In fact, according to the contracts of employment, the band’s members had no right to use the “UB40” name, and would not have any after departing from the group. The company went into administration in 2006 and into voluntary liquidation in 2008, and the group’s members then set up a second company, which however did not acquire the business from the first one. Successively, Ali Campbell, Astro and Virtue left, founded their new band and started to perform under the name “UB40”, which was thus used by both the two groups. The claimants (the remaining members of the original line-up) then sued the members of the newly founded group, arguing passing off on the use of the band’s name. The defendants in turn applied for summary judgment to strike out the case on the basis of an alleged assignment – from the first company’s liquidators – of the first company’s business and goodwill.

On the basis of the facts, the Court essentially held that any assignment of goodwill by the liquidators was ineffective because the company – after going into administration – ceased to carry on any business and, by so doing, abandoned any goodwill, so that it could no longer be assigned. Citing Ad Lib Club v Granville Case[2], the Court specified that, if the company had merely suspended the business activities, with a clear intent to resume them at some point, the assignment might have had some efficacy. However, the facts did not prima facie show this intent, which might nevertheless be assessed in the course of the trial.

This judgment has thus opened the way for a full High Court trial and it still has to be seen if the Court will eventually find passing off in the present case. What appears certain so far is that Ali Campbell and his fellows will “vigorously defend” the claim made against them.

Cristina Berra

Assistant Editor, QMJIP

[1] IRC v Muller’s Margarine [1901] AC 217

[2] Ad Lib Club Ltd v Granville [1971] 2 All E.R. 300