English judge rejects passing off claim in dispute between half-brothers who formed Jamaican sound system

About this case:

• Citation:
  [2022] EWHC 964 (IPEC)
• Judgment:
  External link
• Court:
  England and Wales High Court
• Judge:
  Deputy Judge Caddick

Ian Thomas, who performed under the name “Luv Injection” alongside his half-brother Winston Thomas, argued that his half-brother was attempting to pass off his group as connected to their original group through use of the name as well as elements of their performances alluding to the original group members.

The case was heard by Deputy High Court Judge Nicholas Caddick QC. Aaron Wood appeared for the claimant and Michael Hicks for the defendant.

Personal goodwill

The parties, alongside other group members, formed Luv Injection in 1986. The claimant acted as the group’s mic-man while the defendant was more involved on the managerial side but occasionally performed in front-of-house roles. The group broke up after the half-brothers fell out at an event in Oxford in 2016 and never performed together again.

After the split, the defendant formed a new group and played with them under the name Luv Injection starting from October 2016. He successfully filed an application to register “Luv Injection” as a trade mark in February 2017. The claimant also started to perform under that name with a new group, which included some of the other members of the original group, starting in August 2017.

On 21 October 2019, the claimant initiated passing off proceedings. In earlier proceedings, it was determined by the Court of Appeal that the defendant was entitled to rely on alternative defences to the claim to personal goodwill, including an argument that, as the goodwill for the name was a partnership asset owned by the members of the original Luv Injection as a whole, only the partners as a whole could sue him for passing off.

It was the claimant’s position that the goodwill of the partnership had now passed entirely to his new group, which contained the majority of the founder members and all of the musical members. Additionally, the defendant had been using customised lyrics or “dub plates” toasting Luv Injection that referred to the claimant and other founding group members in his performances with his new group, which constituted passing off.

Some form of transfer

In his judgment, Deputy Judge Caddick said of the use of the Luv Injection name: “The evidence shows that, after the split, Luv Injection 3 (Winston’s new group) was the first group to start performing using the Luv Injection name. As a result, it was vulnerable to being sued by the partners of Luv Injection 1. However, it was not vulnerable to being sued by the partners of Luv Injection 2 (Ian’s new group) for the simple reason that Luv Injection 2 was not then in existence.”

He continued: “Where property is owned by someone, another person cannot generally acquire title to that property simply by appropriating it. Generally, there would have to be some form of transfer by the owner to that other person either by way of an agreement or by operation of law. The position is no different where the property is goodwill and where the owner is a partnership and the other person is one of the partners.”

On whether the defendant had abandoned any interest he had in the name, the judge said: “In the present case, Winston had continued using the name after the split and without any break. Indeed, before the Court of Appeal handed down its judgment, it was Winston’s case that he was the sole owner of the name. He may have been wrong in that, but it makes it difficult to argue that he intended to abandon such rights as he did have in the name. I was not taken to any evidence that Winston had ever said or done anything to suggest that he intended such an abandonment.”

Finally, addressing whether the use of the dub plates constituted passing off, Deputy Judge Caddick concluded: “In these circumstances, I am unable to make a finding that there has been any act of passing off or that there is a threat of passing off and I reject Ian’s passing off claim insofar as it is based on the use of dub plates recorded before the split. I should note that I make no findings as to the ownership of the various dub plates. As Mr Wood submitted, the issue of ownership of the dub plates is largely irrelevant to the passing off issue before me, although it is likely to arise in relation to Winston’s counterclaim.”

The claimant’s claim was therefore dismissed. A counterclaim by the defendant ordering the original Luv Injection partnership be wound up was adjourned to allow the parties to propose directions for its future resolution.