Alan Williams Entertainment Ltd. & Anor v Hurd & Ors [2006] EWHC 81 (Ch)

Neutral Citation Number: [2006] EWHC Ch (81)Case No HC04C02938
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 02/02/2006
Before
MR JUSTICE DAVID RICHARDS
Between
(1) Alan Williams Entertainment LimitedClaimants(2) Alan WilliamsClaimant(1) William HurdDefendants(2) Alex BinesDefendant(3) Paul Prewer (also known as Paul da Vinci)Defendant
Denise McFarland (instructed by Barrett & Thomson) for ClaimantsRebecca Page (instructed by The Simkins Partnership) for DefendantsHearing Hearing dates: 4, 5, 6, 7 and 10 October 2005
Judgment
[1]This is a claim for damages for breach of a compromise agreement. The defendants’ cross-claim for damages for breach of the same agreement and for an injunction to restrain further breaches.[2]The litigation settled by the compromise agreement arose out of the split of a pop band called “The Rubettes”. The band’s heyday was in the 1970’s, starting in 1974 with a number one hit single “Sugar Baby Love” and continuing with a number of hits over the next four or five years. It continued to perform, tour and make records after 1979 but never enjoyed the same level of success. It effectively traded on the success, music and image of the band in the 1970’s. There were numerous changes in the membership of the band in the 1970’s and later. Differences between band members led to the split in 1999.[3]The background to the formation of the band was that in 1973 two songwriters, Wayne Bickerton and Tony Waddington, wrote “Sugar Baby Love”. They produced a demonstration version of the song for Polydor, recorded over a number of sessions. The Rubettes did not then exist and a number of session musicians for both instrumental playing and backing vocals were used. There is disagreement between the second claimant Alan Williams and the first defendant William Hurd as to whether the other was involved in any of these sessions, but it is irrelevant to the issues in this case. It is, however, relevant that the lead vocalist on the recording was the third defendant Paul Prewer, professionally known as Paul da Vinci. The parties are agreed that his voice gave the recording a particularly distinctive sound. Polydor was not going to release the record until a band was established to perform it (or appear to perform it). The Rubettes was formed for that purpose and its members included Mr Williams and Mr Hurd. Mr Prewer could not join it because of existing contractual commitments, and he was not at any time a member of the Rubettes.[4]“Sugar Baby Love” was released under the name of The Rubettes but was in fact the recording featuring Mr Prewer’s voice. It became a hit after The Rubettes appeared on Top of the Pops but in that and other television programmes they mimed to the record. It proved to be the single biggest hit released under the Rubettes’ name and is the song for which they are best known. Total sales for all records of The Rubettes are about 30 million worldwide. Most were made in the 1970’s and Sugar Baby Love accounts for about 8 million sales. A recording with Mr Williams as the lead singer was not made until 1985.[5]Mr Williams was the lead vocalist of the band and he sang on all the records released under its name after Sugar Baby Love. He was a member of the band throughout its existence. Mr Hurd was a member from 1974 to 1976 and re-joined when the band was re-formed in 1982. The second defendant Alex Bines was not a member in the 1970’s but joined in 1982. Like Mr Williams, both Mr Hurd and Mr Bines remained in the band until the split in 1999.[6]In 2000 the present claimants issued proceedings in the High Court against the present defendants and two other parties. The first claimant Alan Williams Entertainments Limited is a company owned and controlled by Mr Williams. They alleged that they alone were entitled to use the name “Rubettes” or “The Rubettes” in the course of trade. They sought an injunction to restrain the defendants from passing off their business or services as those of the claimants by use of the word “Rubettes”. They also sought a declaration that the registration by the first defendant of a trademark relating to “Rubettes” in a distinctive stylised form was invalid. The claim was defended and there was a cross-claim for a declaration that the first defendant was entitled to use and exploit the name “The Rubettes”. The defendants accepted that the second claimant was entitled to do the same.[7]The proceedings were compromised as between the present parties on terms which were scheduled to a consent order made on 30 October 2002. It was in the usual Tomlin order form, providing that the proceedings be stayed on the terms set out in the schedule, save for the purposes of enforcement of those terms with liberty to apply for that purpose. The two other defendants in those proceedings were not parties to the compromise agreement and the claim against them was dismissed.[8]It is a short agreement and the principal provisions set out in clauses 1 to 10 are as follows: Band Names 1. There be two Rubettes bands with immediate effect and named as follows: 1.1 “The Rubettes featuring Alan Williams [and other band members]” 2.2 “The Rubettes featuring Bill Hurd [and other band members]” except that Mr Williams' band is to perform as ‘The Rubettes’ up to and including 31 December 2002. Existing Stock & Merchandise 2. Provided Alan Williams supplies to the Defendants within 14 days a full stock list of all existing product and merchandise and memorabilia, he be permitted to sell the same notwithstanding the terms of this Agreement. New Logo & Trade Marks 3. Each Party to produce and use “new” Rubettes logo and Trade Marks and neither party to use the current Rubettes logo or Trade Marks. 4. Mutual non-objection to registration of the new Trade Marks by other party. 5. Neither band will trade as “Rubettes” or “The Rubettes” as from 1 January 2003. 6. All future merchandise to have new logo on. Press Release 7. The parties will be entitled to put out their own Press Release regarding the settlement of the case. Alan William’s Present Website 8. Alan Williams to change his website to reflect the terms of this Agreement by 1 January 2003. Mutual Undertakings: Non-disparagement and Peaceful co-existence 9. Mutual undertakings by all parties not to disparage the others to third parties nor to threaten the others, but to peacefully co-exist in fair competition with each other. Paul Prewer 10. Paul Prewer (professionally known as Paul Da Vinci) agrees not to refer to himself as former lead singer of the Rubettes and to use his reasonable endeavours to prevent others from so doing. Band Names 1.1 “The Rubettes featuring Alan Williams [and other band members]” 2.2 “The Rubettes featuring Bill Hurd [and other band members]” Existing Stock & Merchandise New Logo & Trade Marks Press Release Alan William’s Present Website Mutual Undertakings: Non-disparagement and Peaceful co-existence

Paul Prewer

[9]Since early 2003, Mr Williams has run a band called “The Rubettes featuring Alan Williams”. Another band called “The Rubettes featuring Bill Hurd” has included the three defendants among its members. The defendants were agreed in their evidence that Mr Hurd dealt with most of the band’s business matters on their behalf. For the purposes of the matters raised in this action (other than under clause 10) he can, in my judgment, properly be regarded as the agent of Mr Bines and Mr Prewer.[10]In the present action, commenced on 17 September 2004, the claimants allege that the defendants have committed a series of breaches of clauses 1, 5 and 9 of the compromise agreement. They also allege that Mr Prewer has committed breaches of clause 10. As originally pleaded, these related to statements on various websites, and in advertisements and other promotional material issued by promoters for events at which the defendants’ band was to appear. The introduction of the band by the presenter of a German television show was also alleged to be in breach of the agreement. Mr Williams’ witness statement, not exchanged until 16 September 2005 because of delays by the defendants, alleged a number of further breaches occurring between October 2003 and August 2005. Mr Hurd prepared a further witness statement in relation to these allegations and, by consent, I gave permission to the claimants to amend their particulars of claim to include some of these further allegations. I also gave permission, again by consent, to add an allegation that the defendants are in breach of the agreement by using the domain names www.rubettes.co.uk and www.rubettes21stcentury.co.uk.[11]The defendants have counterclaimed that the claimants are in breach of clauses 3,5 and 9 of the agreement. These allegations also relate statements on websites and in promotional material and the use of the Rubettes logo. Counsel for the defendants applied at the start of her closing speech to add a further allegation of breach based on evidence given by Mr Hurd in the course of cross-examination. This application was opposed. All the material on which the new allegations were based had been known to the defendants since before the start of the proceedings in September 2004. The claimants could not be expected to deal with the new allegations without re-opening their case and adducing further evidence, including quite possibly evidence from new witnesses, which would have required an adjournment of the trial. Counsel for the defendants made clear that she did not press her application if the amendments would necessitate an adjournment. I refused the application.[12]Before dealing with the detail of the allegations, I should say that in much of the documentary and other material in evidence both bands are correctly described. That is, for example, true of the contracts made by both bands for engagements. It is also true of much of the promotional material. Both sides agree that promoters and others will commonly describe them simply as The Rubettes, and this in turn has led to argument as to the obligations, if any, of the parties under the agreement as regards material put out by third parties. In view of the reputation of the original Rubettes, there is an obvious incentive to promoters of concerts and other events to publicise either band as The Rubettes, rather than using their correct names.[13]Two issues of construction of the compromise agreement have arisen, both in relation to clause 5. The first is the meaning of the expression “trade as”. The second is whether clause 5, combined with clause 1, imposes any and, if so, what obligations on the parties as regards third party material.[14]There was no dispute between the parties as to the principles to be applied in the construction of the agreement. These are as set out by Lord Hoffmann in Investors Compensation Scheme Ltd v West Bromwich Building Society [1998] 1 WLR 896 at 912-913: see also Bank of Credit and Commercial International SA v Ali [2002] 1 AC 251 at paras 8 (per Lord Bingham) and 39 (Lord Hoffman). It was not suggested that any special principles applied to the construction of a compromise; the contract in question in BCCI v Ali was a compromise of claims. Miss Page for the defendants referred to the following passage in para 5-18 of Foskett: The Law and Practice of Compromise:
“The propositions of particular relevance when considering a compromise have usually been the following: (a) words are to be given their plain and literal meaning unless the result is absurd or the agreement is inconsistent within itself; (b) words are to be interrupted in such a way as to effectuate the agreement rather than to invalidate it; (c) the agreement should be considered as a whole, the meaning of the words to be taken from their context with a view, if possible, to giving effect to the whole of it.”
I would only comment that paragraph (a) is to be applied in the light of paragraph (c) and in the light of the relevant circumstances of the agreement and that against that background words are to be given their natural and ordinary meaning, rather than a “plain and literal meaning”.[15]The relevant background includes the fact that both sides had not only been trading off associations with the “original” Rubettes, but each had asserted the right to use that name. It is clear from clause 1 that neither side was to use the Rubettes alone as their band’s name, but each side could incorporate it into their name so as to continue to trade off the reputation of the original band.[16]Miss Page for the defendants submitted against this background that the words “trade as” in clause 5 had what she said was a very narrow meaning, restricted to the official name under which each band traded, for example in contracts, tax returns and so on. It did not require each band to qualify their name as “the Rubettes featuring…” on every occasion. I agree with Miss McFarland that this is too narrow a reading of the prohibition in clause 5. It would add nothing to clause 1 which is a permission to each side to use “The Rubettes” in their name provided it is always coupled with “featuring Alan Williams” or, as the case may be, “featuring Bill Hurd”.[17]Alternatively, Miss Page submitted that the prohibition in clause 5 extends to the parties referring to themselves as The Rubettes, but goes no further.[18]Miss McFarland argued for a much wider meaning of “trade as”, extending to any use in the course of trade, particularly any use which seeks to trade off the reputation and goodwill of the original Rubettes. As the original action included relief in respect of a trademark for the Rubettes in a stylised form, she referred by way of relevant background to section 10 of the Trade Marks Act 1994. Section 10 provides that a person infringes a registered trade mark “if he uses in the course of trade a sign which is identical with the trade mark…” and sets out in sub-section (4) examples of the use of a sign for these purposes. However, she accepted that fair and legitimate references to the original band could be made.[19]I do not think that guidance is to be gained from a different expression used in the Trade Marks Act. Given in particular that the original action included a claim for cancellation of the registration of a trade mark, the parties could be expected to have used the phrase “use in the course of trade” if that was the intended meaning. Instead the words “trade as”, an ordinary phrase with no statutory or technical meaning, is used.[20]In my view the ordinary meaning of “trade as” in this context extends beyond the use of “The Rubettes” as the name of the band to any promotion of the band as “The Rubettes”. This could be done by the impression, objectively ascertained, given by an advertisement, website entry or other material. Miss McFarland accepts that fair and legitimate references to the original band are acceptable, but it is impossible to cut that off from use of the name which seeks to trade off the reputation of the original band. The purpose of clause 1 in entitling each side to use “The Rubettes” in their name is to allow some trading off that reputation. What is not permitted is trading in such a way as to present or promote themselves as “Rubettes” or “The Rubettes” thereby suggesting that they are the original Rubettes.[21]The other issue of construction relates to the extent, if any, to which the parties must seek to control the activities of third parties. It is common ground that terms of the agreement apply to the actions of the parties’ agents as well as themselves, but they disagree as to whether any obligation is imposed as regards third parties. This issue is important because many of the alleged breaches relate to the use by third parties, particularly promoters, of “Rubettes” or “The Rubettes” to describe the present bands. The claimants submit that the parties are obliged to use reasonable endeavours to prevent the use by third parties of these names to describe them, either by prior action such as warnings to promoters and others with whom they deal or and, where they have contracts with those persons, by clauses in the contracts, and, in any case, by seeking to correct any such descriptions. The defendants submit that no such obligation exists, although they pleaded, and they submit that on the evidence it is shown, that they have used reasonable endeavours to prevent and correct any use of those names. Miss Page pointed out that clause 10 contains an express obligation on Mr Prewer to use reasonable endeavours to prevent others from referring to him as former lead singer of the Rubettes. This showed that the parties had this type of obligation in mind and its absence from clause 5 was significant.[22]In my judgment, this issue also turns on an understanding of the obligation in clause 5 not to “trade as” the Rubettes. Promotion of a band, like any entertainer, is an essential part of its trading activities. This may be done directly, as on a website or by material issued by the band, or indirectly, as by a promoter of an event or an interview with a magazine. The billing given to a band on advertisements for a forthcoming event cannot sensibly be regarded as unconnected with the band’s trading. By contracting with a promoter to appear at an event or with a television company to appear on a show, a band knows (and, doubtless, hopes) that their appearance will be promoted. This promotion is an aspect of the band’s trading. Both sides agreed that promoters have a financial interest in advertising either band in this case as the Rubettes, because of the continuing popularity of the original band. A construction of clause 5 which will allow the parties to stand by while promoters and others advertise either band as the Rubettes would deprive it of much of its intended purpose. Of course the parties are not directly responsible for the actions of third parties and the agreement could not be construed as imposing an absolute obligation on the parties to prevent third parties from describing either band as the Rubettes. Miss McFarland did not suggest that there was an absolute obligation, but in my view she was right to submit that clause 5 necessarily involves an obligation on the parties to use reasonable endeavours to ensure that third parties with whom they deal from do not describe or promote their bands as the Rubettes. This obligation encompasses both reasonable steps in advance of any promotion, advertisement or announcement to prevent their description or promotion as the Rubettes and, where they are being wrongfully described or promoted in that way, reasonable steps to correct it.[23]Although the defendants’ submission was that no such obligation arose under the agreement, their evidence suggested that they recognised the practical force of the arguments in favour of the claimants’ case. Mr Hurd’s written evidence recognised the strong temptation on the part of promoters and others to describe the band as the Rubettes and stated that he had informed all his contacts that they should be billed in their correct name. In his oral evidence he accepted that there existed a high obligation on the parties to do everything reasonable to prevent use of the name Rubettes by promoters and others and stated that he went out of his way to do so. He said that he expected the band’s agents to check promoters’ publicity to make sure that it was correct. In his written statement, Mr Bines stated that the defendants had always recognised their responsibilities under the agreement and done their best to ensure that others acting on their behalf such as agents and promoters were aware that they must refer to the band by its full and correct name.[24]A particular aspect of this obligation is whether it requires the parties to include, in any contract with a promoter or other party, an express term that the band is not to be promoted or described as the Rubettes. This suggestion was first made in the cross-examination of Mr Hurd. Not only had it not been pleaded, but in his witness statement Mr Williams suggested only that the parties had to “make it clear” to every promoter and agent that their bands were to be known and publicised by their correct names. The claimants put to Mr Hurd three contracts booking Mr Williams’ band which included such a term. The defendants called Barry Collings, a booking agent with 30 years experience, who has acted for both parties’ bands. He gave unchallenged evidence that when he acts for Mr Hurd’s band on a booking, he not only ensures that the band is booked in its correct name, but also makes clear to promoters and venue owners that they must not bill the band as the Rubettes. If the band is then wrongly billed in that way, he said in cross-examination that he would try to get it corrected. He explained that it is common for bands to include words such as “featuring” a particular individual and this usually signals a previous split and the need to refer to the band in its correct name. He agreed that an express clause would take away any doubt and he would seek to include it, if so requested by the band.[25]An express provision in a contract will no doubt strengthen the band’s ability to ensure that it is correctly promoted but the inclusion of such a provision cannot in my judgment be regarded as a necessary and invariable aspect of the obligation to use reasonable endeavours to prevent promotion as the Rubettes. There might be circumstances in which it was required in order to comply with the obligation, for example if the previous experience with a promoter demonstrated that he disregarded warnings against promotion as the Rubettes.[26]I turn now to deal with the individual allegations of breach of the compromise agreement, starting with those made by the claimants.

International Artists Website

[27]International Artists Deutschland GmbH is one of the agents for Mr Hurd’s band in Germany. The claimants allege that the entry for the band on the website at various dates (June 2003, February 2004, June 2004 and October 2004) breached clauses 1.2, 5, 9 and 10 of the compromise agreement. I will deal under a separate heading with all the alleged breaches of clause 10.[28]Each of the relevant entries is headed “Rubettes feat Bill Hurd” or “Rubettes feat Bill Hurd, Alex Bines and Paul da Vinci”. The main complaint, other than under clause 10, was that the entries involved a breach of clause 5. It follows from what I have said earlier that there is a difference between trading off the historical association with the defunct band, the Rubettes, and trading as the Rubettes. The text of the entry in June 2003 blurs the distinction between the old band and Mr Hurd’s band to a point which in my view involved a breach of clause 5. In particular, I refer to the last paragraph, starting “Having sold in excess of 30 Million records to date they are regularly sought after to appear on TV…”, followed by a list of “Hits from the Rubettes”.[29]Equally, the entry in February 2004 breached clause 5, and clause 1.2. I refer in particular to the last two paragraphs, which includes not only the paragraph quoted above, but also the following:
“With three of the original members of The Rubettes still in attendance, namely Alan Williams, Guitar (lead vocals, Mick Clarke, bass/vocals and Bill Hurd keyboard/vocals, plus Alex Bines on drums, who has been with them since they reformed, The Rubettes are as popular as ever.”
Even without the extraordinary reference to Alan Williams, this entry would breach clauses 1.2 and 5 of the agreement.[30]By June 2004, the entry had been reformulated to remove the parts to which I have specifically referred above. Nonetheless the entry read as a whole continued to blur the distinction between the original band and Mr Hurd’s band, and suggested that Mr Hurd’s band were the new line-up of the Rubettes and as such, in my view, involved trading as the Rubettes. This would be true of the entry, even without the statement that “With an entertaining and dynamic stage act this is arguably the Rubettes line-up…”, which involved a clear breach of clause 5.[31]The defendants accept that they are clients of International Artists and, although their evidence was that the website was not under their direct control, the actions of their agents such as International Artists are attributable to them.[32]The claimants also relied in the particulars of claim on an entry on a website called Gala-Star, but it was provided only in German with no translation and it was not put to Mr Hurd. Insofar as any reliance was still placed by the claimants on it, I reject the claim.

Advertising by promoters

[33]A number of the alleged breaches relate to advertisements for events by promoters. A promoter is not an agent of the band but a party with whom the band contracts to appear at the relevant event.[34]Mr Hurd’s band was referred to as “The Rubettes” in promotional materials for an event on 9 May 2003 at a venue called Mr Kyps at Poole, Dorset. The defendants accepted that this was the case as regards all the material in evidence except the document at bundle 2/4/21. In my judgment, the description in that document was also incorrect, because “Featuring Paul Da Vinci and Bill Hurd” is not shown as part of the band’s name. The contract with Mr Kyps, the owner of the venue, produced by the defendants correctly names Mr Hurd’s band. Mr Hurd’s evidence was that his agent for this event, Peter Barton, should have checked the publicity. He also gave evidence that Mr Barton, who was fully aware of the earlier legal proceedings and their settlement, informed Mr Kyps that the band must be referred to by its correct name. Mr Barton did not himself give evidence, nor did Mr Kyps, and neither was asked to do so. I am not prepared to accept this hearsay evidence. The defendants are responsible for the actions of their agent, Mr Barton, and I find that reasonable steps were not taken to ensure that the band was correctly described, either by a proper warning or by checking the publicity and endeavouring to have it corrected. I therefore hold that the defendants were in breach of clause 5 of the agreement as regards the event at Mr Kyps.[35]A newspaper advertisement for an “Oldie Night” event in Essen, Germany on 13 December 2003 featured Mr Hurd’s band as “Rubettes” alongside a photograph of the Rubettes before the split, including Mr Williams. They were also billed as the Rubettes on a website. Their agent for this event was International Artists and Mr Hurd’s unchallenged evidence was that International Artists always ensure that the band contracts in its correct name. Although the contract for this event was not in evidence, a significant number of contracts for other events were in evidence, including some for which International Artists acted as agent. The band was correctly named in all these contracts and I find that the same was the case for the contract for the event in Essen. This evidence was supported by a witness statement of Wim van den Munckhof, of International Artists. Mr van den Munckhof went further and stated that “our contract…also contains a provision that the promoters of the show can only advertise the show as ‘Rubettes featuring Bill Hurd’”. I am not prepared to accept this latter evidence, as(a) no copies of any such contracts were produced,(b) none of the contracts in evidence negotiated by International Artists contained such a clause,(c) Mr van den Munckhof did not give oral evidence and(d) the Essen event was in fact incorrectly advertised. There is no evidence which I can accept of warnings or other reasonable steps being taken by International Artists to ensure that the band was correctly advertised. I therefore hold that the defendants were in breach of clause 5 of the agreement as regards the Essen event.[36]Another event in Germany, at a venue called the Beat Club on 5/6 December 2003, was also advertised with Mr Hurd’s band as the Rubettes. There is no evidence of any steps being taken to prevent such advertising and I hold that the defendants were in breach of clause 5 of the agreement as regards this event.[37]A complaint is also made about a website advertisement for another concert at Trier on 18 October 2003. The band is correctly described, but a photograph of Mr Williams, probably taken in the 1990’s, is used. There is no evidence as to why this photograph was used and no suggestion that it was provided by the defendants. The most likely explanation is that the promoter mistakenly used the wrong archive photograph. The claimants suggest that this involved a failure by the defendants to supervise the concert’s promotion. In my view, the defendants had no duty to the claimants to “supervise” the promotion.[38]The claimants rely in the particulars of claim on “the Yesterday Once More” event at Pontins, Brean Sands referred to in an e-mail dated 19 November 2003 to Mr Williams’ band from a fan, Dave Hutson, in which he stated:
“Recently I went to a 70’s weekend at Pontins, Brean Sands organised by Yesterday Once More. There I saw the other “Rubettes” and I have to say they were not a patch on yourselves. I find it strange that there are two bands calling themselves the Rubettes…Bill Hurd and some guy by the name of Paul D’Vinci forming another version of the Rubettes is surely a rip off.”
None of the advertising material for this event is in evidence. The claimants have not established that for this event in 2003 the defendants were billed or advertised as the Rubettes. An advertisement for the same event in 2004 is in evidence and does show them billed as The Rubettes. I am not prepared to infer that they were so described in the advertisements for the 2003 event and there is no pleaded case as regards the 2004 event. I therefore reject this allegation.[39]The poster and tickets for an event at Little Easton Manor, Dunmow, Essex on 17 July 2004 described Mr Hurd’s band as “The 1970’s Hit Band the Rubettes”. Their contract for this event correctly named them. The event was booked by Barry Collings as agent for the band and in July 2003 he had sent a letter to the promoters and venues with which he dealt, referring to the consent order in the earlier litigation and stating that the two new bands had to be billed with their correct names. Mr Collings was called by the defendants and gave evidence that he always emphasises to promoters and venue owners that they must bill Mr Hurd’s band as the Rubettes featuring Bill Hurd, not as the Rubettes. I accept this evidence. Miss McFarland, for the claimants, described him as a careful, fair witness. When Mr Williams complained about this publicity, Mr Hurd asked Mr Collings to stress to the promoter the importance of using the correct name. In my judgment, the defendants took reasonable steps to ensure that they were correctly described in the publicity for this event and I reject the allegation of breach of the agreement.[40]The defendants were booked to appear at the Barking and Dagenham Town Show on 17 July 2005. The publicity put out by the local authority wrongfully described the band as the “70’s chart-toppers The Rubettes, who will be performing their classic ‘Sugar Baby Love’.” Mr Williams complained to the local authority which replied that the booking was made by Barry Collings and that:
“Once the booking was confirmed we were advised that in the billing it must be stated ‘featuring Bill Hurd and Paul Da Vinci’. This information was then passed on the Council’s Corporate Communications who manage the marketing and publicity for the Dagenham Town Show.”
It is apparent that proper warnings were given to the local authority, which failed to abide by them. In my view, the defendants took reasonable steps to ensure that they were correctly billed and I reject the allegation of breach of the agreement in relation to this event.

Television shows

[41]On 19 August 2004 ZDF, a German television company, broadcast a show in Germany which included Mr Hurd’s band miming to the original recording of Sugar Baby Love. A DVD recording of the relevant part of the show is in evidence. Although in correspondence shortly before the trial the defendants’ solicitors refused to accept it as genuine, there was no challenge to it at the trial and I accept it as a genuine recording of the relevant parts of the broadcast. The show had been recorded in Berlin in June 2004. The presenter Dieter Thomas Heck, who was also the producer, introduced the band as “die originale Rubettes featuring Bill Hurd” and referred to them at the end of their act as “die originale Rubettes”. Both these references breached clauses 1.2 and 5 of the agreement, to the extent that the defendants were responsible for them.[42]Two issues arise. First, did the defendants take any steps to prevent any wrong billing or announcement. Secondly, should they have taken any steps to correct the announcements.[43]As to the first issue, the contract issued by International Artists correctly named the band. In his second witness statement, Mr Hurd stated that the production company “was made completely aware of the situation”, without any further details. In his oral evidence, Mr Hurd said that he had dinner with Mr Heck the night before the recording, and a representative of International Artists explained the situation in German and told him that the band should be introduced as the Rubettes featuring Bill Hurd. I do not accept this evidence. It was not corroborated by evidence from Mr Heck or anyone else, and it seems unlikely that Mr Heck would have got the announcement so wrong if he had been given correct instructions only the night before. As explained below, I do not regard Mr Hurd as an entirely reliable witness.[44]I find that the defendants took no steps to ensure that they were correctly announced on the show and that they were therefore in breach of clause 5 of the agreement.[45]As regards the second issue, the claimants say that, as the show was pre-recorded, the offending references could have been edited from it before it was broadcast. ZDF in fact agreed to do so, as regards any repeats, after Mr Williams complained to them following the broadcast on 18 August 2004.[46]In his second witness statement, Mr Hurd stated he did not know what Mr Heck had said until after the recording was complete. In his oral evidence, Mr Hurd said that he learnt what was said only when he received a DVD or video recording of the show from a fan. He went on to say that the band’s act and Mr Heck’s remarks were recorded at different times. He was not in the studio for Mr Heck’s part and so did not know what he had said. It is clear from the DVD that this is untrue. This section of the show starts with the camera on Mr Heck who makes his introductory comments and, as he finishes, there is a single panning shot from him to the band on the stage to his right. There are three frames which include both Mr Heck’s shoulder and arm and Mr Hurd at the keyboard. The two other defendants, who are members of the band and played on the show, did not support Mr Hurd’s evidence, and could not remember whether they had been in the studio during Mr Heck’s comments. In my judgment, Mr Hurd’s evidence on this was a last-minute attempt to explain why he had done nothing to get the incorrect description changed or edited, despite his evidence that he had warned Mr Heck at dinner the night before, and I find that he knew it was untrue.[47]I find that Mr Hurd knew that the band had been incorrectly described and chose to do nothing about it. His failure was a breach of clauses 1.2 and 5 of the agreement.[48]On 16 May 2005 Mr Hurd’s band appeared as one of the acts on a live German television show called “Hit Giants”. The show was in a “then and now” format which involves cutting between the live performance of a band and a film of the band as it was at the height of its success. Mr Hurd’s band mimed the original recording of Sugar Baby Love and their performance was interspersed with film of the original Rubettes. No distinction was made between the two bands and, although Mr Hurd’s band was introduced by its correct name, any reasonable viewer of the show, without detailed knowledge of the band’s split and later developments, would assume that they were watching the same band. In my judgment, this programme went beyond Mr Hurd’s band trading off the association with the original band and involved a presentation of his band as the original band. In my view, it therefore involved the defendants trading as the Rubettes in breach of clause 5 of the agreement. The defendants knew that the programme was to be a “then and now” show and that it would involve this sort of intercutting, unless they took steps to prevent it (as one of the other performers on the show did) : see paragraph 41 of Mr Hurd’s second witness statement. In his oral evidence, Mr Hurd said that it was only when they got to the studio and started rehearsing, that they realised the show was to be in a “then and now” format. He called International Artists who told him that it was the same for everyone and that it was not a problem as they had been sold under their correct name and would be introduced as such. The defendants could have found out the format of the show in advance and in any case should take reasonable steps to prevent themselves being presented as the original Rubettes.

Miscellaneous allegations

[49]The claimants rely on some e-mails from fans, pleaded at paragraph 13(c) of the particulars of claim, as evidence of unfair competition by the defendants contrary to clause 9 of the agreement. I reject this allegation. The e-mail dated 14 August 2003 demonstrates that Mr Hurd’s band was correctly billed for the relevant event, and it was the fan who did not understand the significance of the words “featuring Bill Hurd”. I have already commented on the e-mail dated 19 November 2003 from Dave Hutson, which shows that he clearly understood the difference between the two bands. An e-mail dated 14 December 2003 concerning an event in Leipzig does not establish any misdescription or unfair competition: the claimant has adduced no direct or clear evidence of the advertising for this event. Likewise, an e-mail dated 18 July 2004 from John Richardson provides no evidence of how Mr Hurd’s band was billed for the relevant event. An e-mail dated 19 October 2003 from Gottfried Pretsch refers to the event in Trier the previous day. The publicity for this event in evidence correctly named Mr Hurd’s band and I am not prepared to give weight to this e-mail as evidence that they were incorrectly announced at the event. As with other e-mails relied on by the claimants it is not entirely helpful to them: it begins “Hello Rubettes”, indicating confusion as to the identity of Mr Williams’ band.[50]The claimants allege that at an awards ceremony at Regenbogen, Germany in June 2004, organised and broadcast by Radio Regenbogen, Mr Hurd’s band was announced as the Rubettes, and that Radio Regenbogen was misled into believing they were the original Rubettes. The only evidence adduced by the claimants is Mr Williams’ account of what he was told by a German promoter, Rainer Hans. Mr Hurd’s written evidence, on which he was not cross-examined, is that the radio station was fully aware that it was the defendants’ band. On two out of three pages from the station’s website, the band is correctly named, which supports Mr Hurd’s evidence, although on the third it is described only as the Rubettes. It seems likely to me that this was simply a mistake and there is insufficient evidence of what was said on the broadcast to support the allegation of breach in this instance.[51]The claimants allege that at events in Lens and Harnes in France on 13 July and 14 July 2004, Mr Hurd’s band appeared as a backing group for a singer, Claudine Fischer. Mr Hurd’s evidence, which was not challenged, was that the band played at Harnes, but not at Lens, and not as a backing group for Claudine Fischer who did not appear. The band is named as the Rubettes in a newspaper article about the event and in listings on a website run by the same newspaper. The defendants cannot in my judgment be held responsible for the actions of third parties with whom they had no dealings or contact. There is no evidence that the defendants were aware of these descriptions and there is in my view no obligation under the agreement to search the media for possible misdescriptions. I reject these allegations of breach.[52]I reach the same conclusion in relation to an entry on a website called www.ischok.de which describes Mr Hurd’s band as the Rubettes in connection with its appearance at an Oldie Night in 2005. There is no evidence as to how this occurred and no evidence that the defendants were aware of it. None of them was cross-examined about it.[53]Mr Hurd’s band appeared at a concert at Hosingen, Luxembourg on 7 August 2004. The claimants allege that at this concert they presented themselves as the Rubettes in breach of clause 5 of the agreement in a number of ways. First, the presenter referred to them as the Rubettes without qualification on a number of occasions before and after their act. Secondly, the intro tape continually repeated “Rubettes” while they took the stage at the start of their act and left it at the end. Thirdly, Mr Hurd referred to “our second album We Can Do It” and “our very first album, the album was called Wear It’s At”. Both were albums of the original Rubettes, released in 1975 and 1974. In addition, a breach of clause 10 is alleged, in that at one point Mr Hurd announced “On lead vocals the original singer from the Rubettes Mr Paul Da Vinci”.[54]As evidence in support of these allegations, the claimants rely on a CD containing segments of an audio recording of the band’s act at this event. Mr Williams gave evidence that the CD was given to him by his band’s sound engineer Wolfgang Olund, who had also been sound engineer for the Rubettes for many years. In a witness statement, Mr Olund states that someone unknown to him handed the CD to him and obviously knew he was associated with the Rubettes.[55]In his witness statement, dealing with this event, Mr Hurd stated (para 38 of his second statement):
“The voice on the recording does sound like mine although I have no recollection of ever making such an intro and all I can say is that nowadays I always try to refer to The Rubettes in announcements, rather than “We” or “Ours”
. However, bearing in mind that I was involved and played on all the songs the claimant refers to here, it is not surprising that I sometimes say “Ours” and it is arguably not incorrect for me to do so.” He repeated in cross-examination that it sounded like his voice on the CD, except for the statement about Paul Da Vinci, and he said that the tape heard at the beginning and end of the tape was the introduction used by his band, which was devised in the days of the original Rubettes.[56]The CD was included in the claimants’ original disclosure in February 2005 and supplied to them in March 2005 but was not challenged by the defendants until their solicitors’ letter dated 23 September 2005 (assuming that the reference to DVDs is intended to include this CD). Miss Page invited me to attach little or no weight to the CD as evidence of the performance at Hosingen.[57]In the light of Mr Hurd’s evidence, and the absence of any evidence to suggest that it is not a genuine recording, I find that the CD is a genuine recoding of the parts of the performance by Mr Hurd’s band at Hosingen on 7 August 2004.[58]I hold that the defendants were presenting themselves as the Rubettes at that concert and were therefore trading as the Rubettes in breach of clause 5 of the agreement, by reason of each of the matters relied on by the claimants. I also find that the reference to Paul Da Vinci as the original singer from the Rubettes was made by Mr Hurd. Clause 10 applies only to Mr Prewer, who is obliged to use his reasonable endeavours to prevent others from referring to him in that way. I am not prepared to find him in breach of this obligation. He was not cross-examined as to what steps he had taken and it is only one of two instances in evidence in which he has been referred to in that way, the other being a page on the defendants’ website added on 12 September 2005 where he is described as “the original chosen singer of the Rubettes”.

Defendants’ domain name and website

[59]Since early 2005, the defendants have used two domain names, www.rubettes.co.uk and www.rubettes21century.co.uk, both of which lead to the same website. The claimants allege that the use of the domain names and the contents of the website involve breaches of clause 5 of the agreement.[60]As to the use of the domain names, I agree that it breaches clause 5. The website is part of the defendants’ trading activities and one of the means by which they present or promote themselves to the public. The domain names, which Miss McFarland reasonably likened to signs outside a shop, form part of their presentation to the public and involve in my view trading as the Rubettes. Miss Page relied on clause 8 of the agreement as showing that the parties had given thought to websites and represented the extent of the obligations imposed by the agreement in that respect. In my judgment, clause 8 does not qualify clause 5 in this way, but supports the claimants’ contentions. It required Mr Williams “to change his website to reflect the terms of this Agreement”. It demonstrates the parties’ understanding that a website could breach the agreement and, because Mr Williams had at that time a website which would do so, he was required to change it, It cannot be understood as giving carte blanche to the parties to operate in the future any website they liked.[61]As to the contents of the website, I accept the submissions of the claimants. Just as with the International Artists website, parts of it blur the distinction between the original band and Mr Hurd’s band to the point where the latter is presented as the Rubettes or the line-up of the Rubettes. Although the homepage is headed “Welcome to the official website for The Rubettes featuring Bill Hurd”, the page as a whole, including in particular the final words “the Rubettes of the 21st Century”, will convey to the uninformed reader that this is the successor to the original Rubettes. “The Band” section more strongly suggests that Mr Hurd’s band are the Rubettes by describing the history of the original Rubettes and the formation of Mr Hurd’s band as one narrative against the heading “The Band”. No such complaint can be made about the History page, and Mr Williams accepted in his evidence that it was in accordance with the agreement.

Clause 10 of the compromise agreement

[62]By clause 10, Mr Prewer agreed not to refer to himself as “former lead singer of the Rubettes” and to use his reasonable endeavours to prevent others from doing so. The claimants allege that references on websites and in promotional material to Mr Prewer as “the amazing and unmistakeable voice of ‘Sugar Baby Love’” and “the original voice of Sugar Baby Love” are in breach of clause 10. In my view, there is no basis for this allegation. Mr Prewer was the lead singer, with a very distinctive voice, on the original hit record Sugar Baby Love. Clause 10 clearly does not prevent him from saying so. There is an obvious difference between saying that he was the original voice or singer of Sugar Baby Love, which is true, and that he was the lead singer of the Rubettes, which is untrue and prohibited by clause 10. I reject the pleaded allegation that the International Artists website involved any breach of clause 10. However, the website has more recently described Mr Prewer as “the original chosen singer of the Rubettes”. This was a breach of clause 10, but it appears that Mr Hurd took steps to have it changed.

Counterclaim

[63]The defendants allege a number of breaches of the agreement.[64]First, Mr Williams’ band played at a series of concerts entitled “70er Show” at different venues in Germany during 2004. In promotional material, his band was billed as Rubettes. Mr Williams accepted in his defence to counterclaim and in his witness statement that this was wrong but said that, as soon as he became aware of it, he contacted the promoters and arranged for it to be corrected. However, the corrected versions on which he relied referred to “Rubettes feat. The Originals: Alan Williams, John Richardson, Mick Clarke.” The reference to “The Originals” clearly does not comply with clause 1.1 or, in my view, with clause 5. Moreover, some of the new material puts the “featuring…” qualification in such small print compared with “Rubettes” as to be virtually illegible. In cross-examination, Mr Williams said that he requested these “corrected” versions to be changed, but the promoter refused. This evidence is inconsistent with the account given in his witness statement. For reasons given below, I did not find Mr Williams an entirely satisfactory witness. I do not accept his evidence that he asked for further corrections. In my judgment, neither the original nor the revised material complied with clause 1.1 or 5 of the agreement, and the claimants failed to take reasonable steps to prevent incorrect descriptions by the promoters of these concerts. A linked allegation is that the use in an advertisement for a concert at Brilon on 13 November 2004 of a photograph of a line-up of the original Rubettes, which included Mr Hurd and Mr Bines, involved unfair competition contrary to clause 9 of the agreement. I am satisfied by Mr Williams’ evidence that this was a mistake by the promoters and that the picture was removed after he became aware of it and contacted the promoters. There was therefore no breach of clause 9.[65]Secondly, Mr Williams’ band was described as the Rubettes on the websites of two agencies, Gordon Poole Entertainment Agency and BCM Productions Limited. Mr Williams’ evidence, which was not challenged, was that he never had any relationship with the Gordon Poole agency and was unaware of the existence of the website. This was a third party website, not under the control of the claimants, and in my judgment there was no breach of the agreement by Mr Williams as regards this website. Mr Williams was also unaware of the BCM Productions website, but when he became aware of it, he contacted them. He was told by Mr Ray Martin that the entry on the website had been made in 2000 and not since updated. It has now been corrected. Mr Williams’ evidence was that his band had been working for BCM Productions since 2000. This allegation was not put against the claimants on the basis that BCM Productions was their agent, making them liable for its actions, but on the basis that it was a third party. I reject the allegation that there was a failure to use reasonable efforts in relation to this website.[66]Thirdly, Mr Williams performed a series of concerts in France during 2004. A poster for one of them, at Petite-Forest on 14 July 2004, carried a large photograph of Mr Williams with silhouetted figures behind him which looked similar to the original Rubettes in the 1970’s and with the words “Retrouvez sur scene en live tous les tubes [hits] des” and then on a separate line in large distinctive print very similar to the original Rubettes logo “Rubettes”. It continues “Sugar Baby Love”, “I Can Do It”, “To Night”, “Juke Box Jive” … interpretées par son auteur, compositeur et chanseur original Alan Williams” [his name being in large letters on a separate line]. This was an appearance by Mr Williams as a solo artist, without a band. Although a careful reading of the poster may inform the reader of the true nature of the act, the overall impression given by the picture, distinctive Rubettes lettering and the words Alan Williams is that this will be a performance by a band featuring Alan Williams called the Rubettes. In my view, it breached clause 5 of the agreement. Contrary to the statement on the poster, Mr Williams was not the original singer of Sugar Baby Love, nor its author or composer. As Mr Prewer was the original singer and is a prominent member of Mr Hurd’s band, the untrue statement that Mr Williams was the original singer is in my view unfair competition contrary to clause 9, as alleged by the defendants. Mr Williams accepted in evidence that when he became aware of the poster he took no steps to have it corrected, because he did not consider it necessary to do so.[67]Fourthly, the defendants allege that the claimants have continued to use the Rubettes logo in breach of clauses 3, 5 and 9 of the agreement, on websites with the addresses www.rubettes.com and www.rubettes-dutch.com. Clause 3 of the agreement prohibits all parties from using “the current Rubettes logo”. The claimants put forward two answers to this allegation. First, the logo used on those websites is not the logo referred to in clause 3. Secondly, they do not own or control the websites.[68]The current Rubettes logo to which clause 3 refers was not annexed to the agreement or order and has not been proved in these proceedings. This allegation must therefore fail on that ground.[69]As to the ownership of the websites, the claimants pleaded in their reply that the website www.rubettes.com was owned by “an independent third party Creative License Incorporated” (CLI). This issue was explored in the cross-examination of Mr Williams, Mr Hurd and Mr Prewer. It was the defendants’ contention that CLI was a sham, although when documentary evidence of its incorporation in Illinois was produced during Mr Hurd’s cross-examination he accepted that it appeared to exist as an entity. Nonetheless, it was said that in reality it had no independent existence but was a front for Mr Williams. I have to say that the evidence disclosed many suspicious features as to the involvement of CLI. However, it was not possible for the issue to be fully explored, with proper disclosure and the evidence which the claimants would have been entitled to call if the defendants had, in good time before the trial, pleaded this allegation. As it is, the defendants do not on the evidence in this case establish that the claimants own or control this website or have been responsible for the use of the Rubettes logo on it. I reach the same conclusion with respect to the other website, www.rubettes-dutch.com. There is no evidence that it is under Mr Williams’ control.[70]Finally, the defendants allege that the claimants have made disparaging remarks about the defendants or permitted them to be made in breach of clause 9 of the agreement. Two out of the three pleaded remarks appeared on a website, www.therubettes.de. In his witness statement, Mr Williams said that the website is not his and that he was not responsible for its contents, but as soon as its contents were brought to his attention he requested that appropriate changes be made. In cross-examination, he said that, while the website was owned by a German fan, it was run on behalf of his band and that he authorised it. He also accepted that he had written the remarks pleaded at paragraph 16(b) of the defence and counterclaim but denied that he had written the remarks at paragraph 16(a). Whether or not he wrote them, I find that he knew they were on the website and that he had control of the website’s content. He is therefore responsible for them. He refused to accept that the remarks pleaded at paragraph 16(b) and 16(c) were intended to refer to Mr Hurd but I am satisfied that this was untruthful evidence and that he knew and intended the remarks to apply to Mr Hurd.[71]I am satisfied that the remarks pleaded at paragraph 16(b) are and were intended to be disparaging of Mr Hurd, and were in breach of clause 9 of the agreement. The first comment in paragraph 16(a), that bands other than Mr Williams’ band “can only be classes as ‘copies’ or tributes and rightly so with little connection to the original band or the records they produced” was plainly aimed at Mr Hurd’s band and is untrue, given that Mr Hurd was a member of the original band and that Mr Prewer was the lead vocalist on “Sugar Baby Love”. It is a disparaging remark, in breach of clause 9. I do not, however, consider the other remark to be disparaging for these purposes.[72]There is pleaded in paragraph 16(c) a comment which was attributed to Mr Williams on a website, rubettesfans-france, in what was said to be an interview with him. In his witness statement, Mr Williams says that it has nothing whatsoever to do with him. The website was not his and he had no control over its content, and he did not remember making the remark which could apply to any number of people. In his oral evidence he repeated that he could not remember the interview, although the comment was one he might have made, and if the interview did take place he did not know that it would be published. I do not accept this evidence. The remark was obviously aimed at Mr Hurd, and it obviously was made by Mr Williams in the course of an interview. He had every reason to suppose that his remarks would be made public. It was, and was intended to be, a disparaging reference to Mr Hurd and in my view it was made in breach of clause 9.

Remedies

[73]I have held that some of the breaches of the compromise agreement alleged by the claimants and by the defendants respectively are established. As to remedies, Miss McFarland opened the case on the basis that neither party was requiring any issue of quantum of damages to be tried but both were seeking an inquiry as to damages. Miss Page objected that there was no order for the issues of liability and quantum to be split, and the claimants’ case failed because they had not proved their loss. While it is correct that there was no order for a split trial, the claimants reserved their right to seek an inquiry as to damages (para 14 of the particulars of claim) and the defendants went further and in terms sought an inquiry as to damages in their defence and part 20 claim. The witness statements produced by both sides contained no evidence quantifying any loss. In oral examination in chief, Miss Page asked some questions to establish loss by the defendants. At the start of her closing speech she sought permission to amend the defence and part 20 claim to plead loss. I refused the application.[74]Although never formally agreed or ordered, it is clear to me that the parties were proceeding to trial on the basis that it would not deal with issues of quantum. This was the formal position of the defendants on their counterclaim. In the circumstances, it would be quite wrong to do other than order an inquiry as to the damages suffered by each side as a result of the breaches of the compromise agreement which I have held to be established.[75]In opening the claimants’ case, Miss McFarland suggested that, if the breaches were established, an application would be made to lift the stay on the earlier proceedings, so that the claimants could prosecute that action. The effect of the Tomlin order is to stay the action save for the purposes of enforcing the compromise agreement. While I did not hear full argument on this point and made clear that I was not reaching a conclusion on it, I indicated to Miss McFarland that I doubted that this was a course which would be open to the claimants. This view is supported by the authorities cited to me by Miss Page: Hollingsworth v Humphrey (C.A. 21 December 1987, unreported) and Gibb v Pubmaster Ltd (Rimer J 7 October 2002, unreported), as well as passages in Foskett: The Law and Practice of Compromise.