Sunday, September 17, 2006

An amusing email exchange...

Not 12 hours after I set up a myspace homepage for mine and Jeremy's embyonic bluegrass project, I recieved the following email from some band in the uk:

Hello,

it seems your using our band name...

We registered the band name 'Paper Tigers' with the international band registry in 2003. This is a legal and binding claim to the name and exclusive use of it. Authentication of this is posted in World Wide Band and Artist Directory' Annual Trade Publication as well as on a global scale on the online registry & worldwide database of band and artist name activity. Our registration of the name is also lodged with the Library of Congress in Washington D.C. and the British Reference Library in London in the Annual Artist & Band Directory.

If you require any further information on this please go to

www.bandname.com and search for us or contact Crystal @ bandname

Please cease using the name immediatley to avoid legal action being taken against you. This is a polite but official warning on behalf of us and our record company.

Thankyou

pAPeR TigERs


Being by nature a pigheaded individual, I responded:


Er... when your far-reaching fame extends to Christchurch, NZ, or our plans for world conquest come to fruition, we'll think about it.

Cheers,
Greg


To which our new friends rather got their knickers in a knot:

Seems like a a perfectly flawed plan....why start out using a name that you know your going to have to change? hey why not call yourselves the rolling stones...that's a cool name too!.....great sense of seeing the bigger picture, and thinking about changing your name just doesn't cut it, you are falsely advertising your band & causing damage to us in the process ...anyway, we tried to be polite but that obviously has no affect.

Our first full international E.P is scheduled for release in Australia / NZ in December 2006.
We'll be passing this matter on to our label / management and lawyers. I hope you've got deep pockets

cheers

pAPeR TigERs


So I thought I'd ask a couple of questions just to see exactly what we were up against:

What exactly do you mean, 'release'? That it'll be available here via your site, or actually in the record stores? In other words, just how big are you guys? Be honest please...
I have no intention of getting into any strife, legally or otherwise- but if we're just playing around Christchurch and you're puddling away in Wolverhampton, I think we can stay out of each other's hair, no?

Cheers,
Greg


They came back a little more amicably, but no less emphatically:

Unfortunately 'release' means, in record stores, on itunes & via other authorised internet stores. The fact that you are using our name causes problem for our record sales and as such means you are liable to prosecution...merely search on myspace for paper tigers and the fact you come up is a problem to us.

we are a signed band, contracted to Broken Bottle Music, a UK independent label - soon to be part of the Polydor group....yes we are from Wolverhampton UK, but that is far from the point...I'm sorry about this Greg, its a real pain for you cus it's such a good name and you obviously have great taste in choosing it, but you just can't use it...regardless of whether you are in NZ or not....we have already had legal wranglings with a US artist signed to a major US label who was trying to use the name....and we won...its a black and white case for us...the crazy thing is you can call yourself 'Christchurch Paper Tigers' and that's fine....just not 'paper Tigers'....

Please make your desicion quickly as I am on the phone to our management company as we speak, and need to clarify if you wish to carry on using the name and face the consequences of that action.

cheers


All this talk of management, lawyers and labels from a band with only 400-odd myspace friends- not to mention the fact that they apparently considered themselves in the same league as the Rolling Stones- had me smelling a rat (or at least a bluff) and so I responded:

Dear Wolverhampton Paper Tigers,

Having consulted my lawyer, I would like to invite you to consider the following points.

1) In order for one legal entity to prevent another from using their name, it needs to be proven that the prior has obtained 'good will' with the public and that that the latter is unfairly profiting from that good will. Given the respective status and popularity of our respective bands, I do not believe this to be the case.

2) It's also possible to get off if the secondary party can prove that they came up with the name independently, with no knowledge of prior's existence. Again given the above point, I think this is a reasonable claim. We actually got the name from a Thrice song (as, I suspect, did you) but that's beside the point.

3) We, as a legal entity, do not in fact exist outside of Myspace. Notwithstanding the now blurry line between social networking sites and reality, this poses a slight problem for you and your litigious intentions... who exactly are you going to sue? Tom?


Given these points, I can only conclude that your blusterous threats of legal action are nothing but an ambitious bluff; a 'Paper Tiger', if you will. With that in mind we have decided to continue using the name 'Paper Tigers' until such time as we can think of something better. If this still rankles your panties, we would respectfully invite you to change YOUR band name, as suggested above.

Furthermore, I see that our Myspace Friend Count now exceeds yours by a factor of some 80,000 to 1. Dare you argue with figures like that?

Warm regards and best wishes,
Paper Tigers


... to which I'm yet to recieve a reply. Watch this space!

11 comments:

michael said...

but this doesn't hide the fact that Paper Tigers is a dumb name...

Sounds kind of 80's hair metal

michael said...

Actualy the other Paper Tigers sound like an 80's hair metal band, have you listened to the crap on their site...YUUUUUCCCCCK

"back stabbing claw, grabbing whore, you talk to me." what drivel....

Greg said...

Hey, I thought Paper Tigers was quite a good band name... agreed that the other Paper Tigers are full of drivel though!

Any better ideas, for a name? We probably should change it I guess...

Brehaut said...

How about 'Acoustic Goths' thats a top name for a band :P

michael said...

We copyrighted Acoustic Goth's in the 80's sorry that one is taken, as is Death in Venice....
how about Paper, Scissors, Rock....

Rosie said...

Hey, who did you get to advise you on the legal issues? Looks like a fun intellectual property exam question. Ive got some good cases you can spit out them. Ahhh I love IP. :)I'm serious

Greg said...

Haha... actually I consulted the highly experienced professional lawyer who happens to live in my flat... :)
I don't think we really have a legal leg to stand on though, in reality...

Rosie said...

Ok, I can't help myself. I really do like IP law and its much more interesting than the work I'm supposed to be doing, so here's what I think. (In all my authority which stems from having done a one semester beginner's overview of IP law...)

Admittedly I have never heard of this "International Band Registry", but I visited the website listed, and as far as I can tell, registering a band name on this website has hardly any legal implications whatsoever. The idea that one can simply unquestionably guarantee legal rights to a name simply by registering it online without being required to prove one's rights to it seems ridiculous. This is quite unlike the process for registering a trademark which is quite a thorough process and includes an opportunity for any other party to challenge it's registration.

It appears that registration does not entitle the user to "a legal and binding claim to the name and exclusive use of it" as your friend claims, but is simply a means of avoiding passing off claims by making people aware of names that are in use. I.e. its just a means of helping people avoid legal conflict, rather than being the basis to a legal claim. (This role is actually noted on the website under FAQ.)

Aside from this, any claim that this dude has would be an ordinary passing off claim. Assumingly, a court would find a band name analogous to a company name. In which case, this guy would be able to protect himself against improper interference with another's use of his name.

However, in order to be entitled to this protection, he needs to be able to show goodwill linked to HIS use in the name as you said. As well as this, he needs to be able to show a misrepresentation and likely damage flowing from this misrepresentation.

Even if this guy does have some goodwill built up somewhere for his name, he would need to show that people in Christchurch or whoever is going to come across your use of the name would believe that you are them. I.e. that when a member of the public hears or sees the name "the Paper Tigers" they instantly believe it to be describing his band. It seems that, despite all his admirable "Pinky and the Brainlike" intentions to take over the world, he does not quite have that kind of goodwill yet.

As well as this, if you have built up goodwill in Christchurch for the name as your trade name and he tries to enter this market, you would be able to stop him from doing so. (Taylors Bros v Taylors Group Ltd, Anheuser Busch v Bujovicky Budvar).

Btw, the point you made about coming up with the name independantly actually belongs in copyright law and (as far as my understanding goes) does not apply to the law of passing off. Intention is not a necessary element in passing off.

However, the only problem in your defense is if he can show that people have inadvertently been directed to your myspace when searching for his. However, assuming that your music is quite different from his, and the fact that the details on the page show that you are from Christchurch, it can be argued that really, there is hardly any potential for the public to be confused and believe you are one and the same. This would mean that the claim would fail. (Neutrogena v Neutralia) Besides, the fact that you have more friends than him could indicate that the goodwill belongs to you and not him. Either way, he wouldn't be able to restrain your use of the name, but, maybe perhaps alter your myspace page name. But even that is unlikely.

To be honest, I think any judge would struggle to find reasons to uphold this guy's claim.

hehe thanks for the practise Greg. Ask Ollie what he thinks of my analysis. I'm surprised at how much I remembered. Actually I possibly rememebered it all wrong. But meh.

Greg said...

Hey Rosie, thanks for the info... we've changed the name to 'The Paper Tigers' now, which seems to have satisfied them. By the way, we don't actually have 68 billion myspace friends... that was a little web trickery on my part...

rosie said...

yea...i noticed. sneaky.
- your local law nerd

Andy Moore said...

hillarious!