It’s a long-standing legal tradition amongst England’s biggest musical exports. It happened to Fleetwood Mac in the 1970s, Pink Floyd in the 1980s and now Black Sabbath is now facing a battle over exactly who has the right to use their name after original vocalist and music icon Ozzy Osbourne announced his intention to sue founding guitarist Tony Iommi over ownership of the Black Sabbath brand.
The hugely influential and immensely successful band has had a long and complicated history and is well-known in the music community for having a revolving-door lineup after Osbourne was fired in 1979. Subsequent lineups have met with varying degrees of success, leading to a lucrative reunion tour featuring the original lineup in 1997 and persistent rumours of a new album.
However, in the intervening years Osbourne became a star in his own right, with combined record sales and concert income which easily eclipsed those of his former band, who carried on with different frontmen (including Ronnie James Dio of Rainbow and Ian Gillan of Deep Purple) until bassist Geezer Butler and drummer Bill Ward also quit the band in the mid 1980s, leaving Iommi to carry on under the “Black Sabbath” name (sometimes due to the demand of his Record Label) with a largely anonymous cast of session musicians and other temporary replacements until the “Reunion” tour, which led to the band being inducted into the UK and US Rock & Roll Hall of Fame in 2006 and saw Osbourne and Iommi performing “Paranoid” at the Queen’s “Party At The Palace” concert to celebrate her Golden Jubilee.
Mainly due to Osbourne’s solo recording commitments, the original lineup of Black Sabbath has not been able to finish work on a new album or organise another tour since 2004, leading Iommi to reconvene one of the many lineups of Black Sabbath since 1980 as “Heaven and Hell” and release new album “The Devil You Know” earlier this year.
Iommi himself sued concert promoter Live Nation in December 2008, claiming that the music conglomerate sold merchandise which used Black Sabbath’s logo after the expiration of an agreement between them in 2006, and shortly afterwards took action to reclaim Black Sabbath’s trade mark. Most of the music press believe that it was Iommi’s claim which ultimately led to Osbourne taking action against him.
This kind of dispute is getting more and more common among the elder statesmen of the UK music industry, especially where they’ve been able to reform after long periods apart and extend their lifespan way beyond what they originally expected. Pink Floyd, one of the most successful groups the UK has ever produced, had a very similar dispute in the 80’s when frontman and songwriter Roger Waters left and tried to put a stop to the rest of the Band carrying on without him under the same name.
This however, is a little bit different. Black Sabbath made their name based on the original line-up, which was hugely successful. In the case of Pink Floyd, the band carried on after Waters left to the same kind of success that they’d enjoyed previously, whereas Tony Iommi’s various incarnations of Black Sabbath have become progressively less successful over the years as the original members left, with the band’s name being used for every album he made with whatever backing musicians he chose to employ.
All this changed, however in 1997, when Ozzy Osbourne, Bill Ward and Geezer Butler rejoined the band and completely revitalised their fortunes, selling out arenas all over the world, releasing a platinum-selling and Grammy ward-winning live album. The band was as big as they had ever been, and many claim, with some justification, that this would never have happened if the original line-up had never reformed.
It is Iommi’s opinion that he is Black Sabbath that’s at the heart of this case, which doesn’t sit easily with the fact that he’s called his latest project “Heaven and Hell” despite the fact that all of the members were in one of the later lineups of Black Sabbath. After his action against Live Nation got underway, Iommi claimed sole ownership of the band’s name as a Trademark at the US Patent and Trade Mark Office, which Osbourne claims is illegal.
Osbourne is suing for a 50% interest in the band’s name, as well as royalties for merchandise sold since their mid-90s reunion, noting that the only reason the brand is worth so much now is because he and his team were heavily involved in revitalising it and for “quality control” over a campaign which included licensed merchandise, album reissues and touring income, mainly generated through Sabbath’s appearance on Osbourne’s own “Ozzfest” tours. Osbourne claims that he eventually hopes that all four of the original members will ultimately end up owning the rights to the name.
The legal issues behind all of this are, by turns, really simple and really complicated. Black Sabbath are no strangers to litigation, having sued their management in the mid ‘70s and being injuncted from performing until that claim was settled. Entering into a Band is entering into a “Partnership at Will” under English law, and if there is no agreement between the partners as to how profits and goodwill in the band’s name should be split, then the default provisions of the Partnership Act 1890 will apply. It’s always better to draw up your own bespoke Agreement, however, as the 1890 Act is in dire need of an overhaul. Ownership of the name stems from this theory.
Even though the Band’s name came from an obscure ‘30s horror film, the fact that the name has become associated with them enough to act as a “badge of origin” means that it can, and has, been registered as a Trade Mark.
The Courts gave valuable advice on this area of law in the 2003 case of Byford v Oliver and Dawson, which coincidentally involved the remaining members of 80’s British Heavy Metal band Saxon registering their name as a Trade Mark without the involvement of original frontman “Biff” Byford, who claimed that the Trade Mark should not have been granted on the basis that he owned a percentage of the goodwill in the Saxon name.
In this case, Oliver and Dawson had actually tried to prevent Byford from using the name and although at first instance the Trade Mark Registry ruled in their favour on the basis that each band member owned goodwill in its name and that it was simply a matter of whoever registered the name first would own the Trade Mark, Biff Byford had the last laugh.
Byford took his case to the Court of Appeal and the late Judge Laddie found in his favour, ruling that a band was a partnership at will (i.e. one which exists as long as the members want it to) and that any goodwill attached to its name belonged to the partnership jointly rather than to one individual.
So, if the Black Sabbath dispute were to be tried in the UK, Osbourne’s claim would probably succeed following the Saxon case, which saw a change in the law up to that point. Essentially, if a band dissolves, then that original Partnership at Will comes to an end unless there is some kind of agreement to the contrary, meaning that no-one can use the name without the permission of the original members.
There would be differences here, as Iommi has been using the name for years, however the likely outcome would probably be that the original line-up of Black Sabbath owns the right to its name on an equal basis, rather than Osbourne and Iommi in a 50/50 split.
Musicians everywhere should always look into getting a Partnership Agreement drafted to deal with what happens to the band name if they split and if not, it’s clear that any remaining members will not be able to register a trade mark against the name and carry on regardless with a monopoly to stop anyone else from using it. In Sabbath’s own words, the new band may end up “Killing Itself To Live”.