Powell v Turner

Following my judgment in this matter, the Defendant now seeks permission to appeal. Ms Heal, who appears for the Defendant, has clarified that permission is sought only on the issue of validity and in particular on the issue of bad faith alone. No appeal is sought in relation to my findings in relation to the claim for an account, or the issue of infringement.

Ms Heal accepts that the proper test is set out in Part 52.3(6) and relies on both limbs thereof. In other words, first, she submits that the appeal has a real prospect of success under 52.3(6)(a); and, secondly, that there is some other compelling reason why the appeal should be heard under 52.3(6)(b).

A number of points have been made in the Defendant’s written submissions, for which I am very grateful, and which I will group into categories as follows.

First of all, it is suggested that I made an error of law by deciding the issue of bad faith without reference to actual legal ownership of goodwill in the name Wishbone Ash as at February 1998. The Defendant does not suggest that there is any case directly in point but relies on the general point that “all the relevant factors specific to the particular case which pertained at the time of filing the application for registration” are to be taken into account.

It is true that I regarded actual legal ownership and bad faith as distinct points. To my mind, the important factor so far as bad faith was concerned was the Claimant’s belief as to ownership, and not the actual legal position which was complex. The Claimant’s belief indeed formed part of my reasoning for bad faith and I will return to this in a moment.

Although I believe that my approach is correct, I accept that it is arguable that it is not. However, since I found that the Claimant was indeed the actual legal owner of that goodwill as at the relevant date, this alleged error of law makes no difference to the result. I would have reached the same conclusion on bad faith if I had taken the issue of actual legal ownership into account.

Secondly, it is suggested that my finding that the Claimant’s belief that he was the sole owner of that goodwill in February 1998, in the context of the facts and matters set out in my judgment, was both honestly and reasonably held is an unsupported conclusion given my other findings. I heard the Claimant’s oral evidence in the witness box and I have no doubt that he honestly held that view. I also remind myself that, as I pointed out to the Defendant’s counsel during closing submissions, she did not put it to the Claimant during his cross-examination that his conduct in making his application was dishonest, even though dishonesty had been raised in the pleadings and the allegation of dishonesty had been given as a reason as to why so many of the Claimant’s witnesses needed to be cross-examined. Given that the Claimant’s honesty was not even challenged, it is difficult to see why my finding that his belief was honest can be said to be unsupported. Moreover since the Claimant’s view is also my own view, for the reasons I have set out in my judgment, I consider that his belief was reasonably held.

Accordingly, even if my actual finding was wrong, which I do not accept, there was certainly material on which I could properly make that finding. Moreover even if I were wrong on that point I gave six reasons for accepting Mr Powell’s evidence on bad faith. This was only one of them and the application for permission to appeal does not deal with the other five.

Thirdly, it is suggested that my analysis of ownership was wrong and, in particular, that I should have accepted the Defendant’s analysis. I have rejected that approach for the reasons set out in my judgment. The Defendant has not given any specific reasons for supposing that my reasons as set out therein are wrong, other than to make the same points again. This ground of appeal, therefore, appears to me to be a straightforward attempt to argue the same points again.

Fourthly, it is suggested that I have failed to give weight to various matters of fact such as the Distillations album, the Defendant’s work on the back catalogue and the registration of the Defendant’s domain name three months after the application applied for. I do not regard any of these facts as having any relevance to my findings as to bad faith or indeed ownership or goodwill in the name Wishbone Ash as at February 1998. Indeed I am still unclear as to why they are said to be relevant. The Defendant also refers to the fact that the Claimant did not tell the Defendant of his trademark application but, as I explained in the judgment, the reasons for his failure to do so were not even explored in cross-examination.

So far as the second limb of Part 52.3(6) is concerned, it is suggested that the compelling reason why the appeal should be heard is that this will be the first case of its type (i.e., one involving band names) to go to the Court of Appeal; that there are two streams of authority, depending on whether the band is a partnership at will or an unincorporated association; and that the issue of ownership of goodwill is an important question for the music industry. It is said that there is one stream of authority as represented by Byford v Oliver and another stream as represented by Club Sail and Burden v Steel. None of these cases was appealed to the Court of Appeal and of course the latter pair, as Appointed Person decisions, could not be.

It does seem to me that there is some force in the point that there may be two streams of authority but, on reflection, it seems to me that there is no conflict of law as such. It is simply that all of these band cases turn on their own complicated facts, and whereas one type of analysis may be appropriate in one case a different type of analysis may be appropriate in another case. There are merely different factual scenarios and different cases which fit into different scenarios. Indeed the Defendant expressly invited me to distinguish the Club Sail line of cases on the facts and I did so.

Moreover, it was common ground in this case that the two original line-ups were partnerships at will and it was also common ground that the approach in Byford v Oliver was correct and applicable. Therefore the case law about unincorporated associations does not arise in this case.

Finally, I have no material on which to assess whether this really is a concern to the music industry. One always has to be cautious about accepting unsupported assertions by one side that its appeal is of general significance to the industry as a whole. This is particularly so when the same sort of point has already been before the Court in a number of different cases (each involving different members of the same band), and there has been no appeal in any of these cases, nor any apparent demand from the industry for clarity following these cases. In any event, clarity will be difficult to provide given the fact-sensitive nature of each case.

I also note that the present case is unusually limited with respect to the other band cases, since in other band cases both bad faith and prior rights (eg under the law of passing off) have been an issue whereas in this case it was only bad faith. As I pointed out in the judgment, there never was any case on validity based on prior rights under the law of, for instance, passing off. If passing off had been an issue in this case, then actual legal ownership of goodwill would automatically and inevitably have arisen.

Hence even if ownership of band names is a matter of general importance to the music industry, going beyond a mere question of fact, it does not follow that the present case is the best one in which to investigate it.

For all of these reasons, I therefore refuse permission to appeal.