FROM THE SOURCE TO THE MINT
On the 19th March 2004 lawyers representing BBH (Bartle
Bogle Hegarty) a global advertising agency (Levis/Lynx adverts etc.),
wrote to us demanding that we refrain from further use of the name
MINT SOURCE failing which they would commence legal proceedings against
us. The lawyers threatened us with what is called “summary
judgment”. So why did they do this?
Well, the story starts (at least for us) in early 2003 in a letter
that we wrote to BBH on 23rd April (St
George’s Day). It had
come to our Mint Source’s attention that BBH had already registered
a trade mark (Mint Source) in categories that might have put Mint
Source
Recordings in a potential trade mark infringement. In our letter
to BBH we asked (as we have repeatedly asked subsequently) if we
could meet with them to discuss a way that both Mint Source Recordings
Limited and BBH might be able to work together. All of us at Mint
Source wanted to avoid being placed in a possible trademark infringement
situation.
Unbeknownst to Mint Source when it set up in September 2002, it appears
that BBH has operated an internal video directorial show reel tape/program
entitled “Mint
Source”. By their own admissions, BBH describe their Mint Source
as, “…[a means] …to dig down and find new directorial
talent as the same old list of directors was being wheeled out on
every production”. See http://www.boardsmag.com/articles/magazine/20011101/mint.html?word=mint&word=source
BBH’s Mint Source has not, to the best of our knowledge and
belief, produced or released recorded music or promoted music events
bearing the name
Mint Source
to date,
which
are the fields we are operating in with the name Mint Source Recordings.
In fact according to press reports, http://www.shots.net/news.asp?id=1790&src=true a
gentleman called “Toby Clifton” claims that he started
Mint Source at BBH and now wants to develop the idea further at Saatchi’s.
BBH do have their own music department called “Leap Music”,
which they set up in April 2003.
So where does that leave us? Trademark categorisation is unfortunately
very wide. Each category of registration protects an enormously wide
range of goods and services. This is an inherent problem in using
the English language to attempt to define definitive classes of rights.
Class 9, for example, protects, at the last look, some 12,242 categories
of registration; from Sound and Video Recordings and Data Storage,
through
Data Presentation
Materials and telecommunications and world wide web content delivery
etc. Trade Mark law does not currently provide for situations whereby
companies
operating
in wholly different fields (yet sharing the same class) can be other
than in potential infringement with each other. Case law, certainly
in the UK, is arguably in our favour. Case law in Europe, where this
matter would have to be adjudicated, appears silent on the matter.
Justice Laddie in the Mercury Communications Case (1995 FSR850) indicated
that trade mark registrations can be regarded as too wide in their
description when he stated:
“In my view it is thoroughly undesirable that a trader
who is in one limited area of computer software should, by registration,
obtain a statutory monopoly
of indefinite duration covering all types of software, including those far removed
from his own area of interest.”
We agree with this reasoning. We think it
is also undesirable that, say, advertising agencies, offering, say, directors’ show
reels of their work, effectively create a monopoly against others releasing,
say, records.
Many of you might also be aware of the successful range
of
Mint
Source
shampoo and beauty products – see www.originalsource.co.uk.
There are also
a few other Mint Source’s out there, if you look good and hard! Including
a church group for young Christians!
So that’s where we are. BBH are a multinational multi-million pound concern.
Mint Source Recordings is a small wholly independent record label. And remember,
we didn’t do this deliberately. I am more than happy to swear this on
oath, and for us, the whole matter has just become one of those
strange
and
unintentional
coincidences
that
occurs
from time to time. For the record, we were originally going to call ourselves
Mint Records until we discovered another record label called Mint in Canada;
www.mintrecs.com. So instead
we came up with Mint Source, registered it with the official music industry bodies,
BPI,
MCPS
etc., and as no-one else was operating in the
fields of recorded music production and promotion worldwide, we assumed we were
alright. In hindsight I should have done a trademark search (though that in itself
is no guarantee of having the rights). So if anybody should be suing anyone here,
it should be me suing myself for negligence!
Discussions between BBH and Mint Source Recordings to see if this matter could
be amicably resolved appear
to
have
now broken down. Pure
Mint
Recordings
Limited
is
the sister
label of Mint Source Recordings and a wholly new entity. It is not just
a
re-brand or a re-name. We took steps to set up Pure Mint Recordings last year
to protect ourselves and also to
make the point that, at the end of the day, “It
is not about the name, it was only about the music!” We would love
to keep putting tunes out on Mint Source, but until this is resolved we think
it legally appropriate
and fairer
that neither they nor we use the name in the field of music event promotion and
recorded music production and release.
Pure Mint Recordings operates under exactly the same principles as Mint Source
Recordings; the same fair deal structure with its artists and the same principles
of Equitable Trading (ET) underlying the company structure. The tunes are of
the same superlative quality and the ethos is identical. Even the logo is virtually
the same!
Until such time that this matter is amicably or otherwise resolved, we have given
assurances to BBH that we will not, as from 1st May 2004, release or promote
any new product or services bearing the Mint Source brand. All new record company
matters are now being put through Pure Mint Recordings. In addition, which we
regard as only fair and reasonable, we have said that we do not think that it
is appropriate for BBH to release music records or promote music events bearing
the mark “Mint Source” (although we do not mind if they continue
to work with their “show-reels” and directors), as to do so would
infringe the goodwill we have established in the name in the relevant fields,
and that
this
may give
rise to us having a lawful case against them under the tort of “passing
off” in English Law. Some of that goodwill is encompassed by the many
licences and deals we have done with Mint Source Recordings during the last 18
months, which include inter alia, licensing records to Norman Jay MBE, Carl Cox,
Junior Vasquez and the Mastercuts compilation series, as well as releasing over
ten 12” records and having 160,000 page impressions to the website from
over 56 countries. We cannot really imagine that BBH will
actually want to be “second to market” with the name Mint Source
in the recording industry but we shall see what their plans are and we have reserved
our rights with them generally.
So I would like to welcome you all to Pure Mint Recordings. We hope you enjoy
the music, the design, the ethos and the general vibe. And myself, I take comfort
from the words of Tom Waits who, in an interview he gave to the Onion magazine,
(http://www.theonionavclub.com/avclu...ature_3820.html) said:
| |
The Onion: It used to be that, like you, a lot of musicians
took a hard-line stance against having their music used in advertising.
That seems to have shifted.
Why do you think that is?
Tom Waits: I don't know. They're all high on crack. Let's just say it's a sore
subject with me. I went to court over it, you know... You know, you see a bathroom-tissue
commercial, and you start hearing "Let The Good Times Roll," and the
paper thing's rolling down the stairs. Why would anybody want to mortify and
humiliate themselves? Well, it's just business, you know? The memory that you
have and the association you have with that song can be co-opted. And a lot of
people are really in it for the money. Period. A lot of people don't have any
control over it. I don't own the copyrights to my early tunes. So it is unfortunate,
but there are a lot of people that consciously want their songs exploited in
that way, which I think is demeaning. I hate it when I hear songs that I already
have a connection with, used in a way that's humiliating.”
© The Onion – reprinted under fair use copyright provisions. |
By the way does anyone remember a band called "Stiltskin"?
These shenanigans have of course upset us, but we persevere and
are in fact stronger for it in a stange sort of way. Who would have
thought it was so difficult in the current market to just set up
a record company and put out great music? For after all, that is
all that we want to do. Release, support and promote great music!
For the record, we also stress that neither Mint Source Recordings
nor Pure Mint Recordings are
interested in (or have any intention of) making adverts! At least
not with those names!!
Anthony Hall_20.5.04 |