Estta1009490 10/17/2019 in the United States Patent And

Home , Dino Danelli, Eddie Brigati, Felix Cavaliere, Gene Cornish, The Rascals

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1009490 Filing date: 10/17/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91249965 Party Defendant Beata Music LLC Correspondence ERIC BJORGUM Address KARISH & BJORGUM PC 119 E UNION STREET, SUITE B PASADENA, CA 91103 UNITED STATES [email protected], [email protected], [email protected] 213-785-8070

Submission Motion to Suspend for Civil Action Filer's Name A. Eric Bjorgum Filer's email [email protected], [email protected], [email protected] Signature /A. Eric Bjorgum/ Date 10/17/2019 Attachments 20191017 Applicants Motion to Suspend.pdf(38743 bytes ) Exh A -- D.N. 9 -- BEATA -- Amended Complaint.pdf(184964 bytes ) Exh B -- D.N. 23-1 -- COURT -- Order Granting Motion to Transfer.pdf(50763 bytes ) Exh C -- D.N. 30 -- DEFENDANTS -- Answer with Counterclaims.pdf(245248 bytes )

UNITED STATES PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD

In The Matter Of Trademark Application No. 87/803,534 Filed on February 20, 2018; Published: February 5, 2019 Mark: THE RASCALS

) Dino Danelli and Edward Brigati, ) ) Opposition No. 91249965 Opposer, ) ) v. ) ) ) Beata Music LLC, ) ) Applicant. ) )

APPLICANT’S MOTION TO SUSPEND PROCEEDINGS PENDING OUTCOME OF PENDING CIVIL ACTION

Applicant, Beata Music LLC (“Beata”), hereby moves the Trademark Trial and Appeals Board (“Board”) to suspend proceedings pending the outcome of a pending civil action. Specifically, on March 30, 2018, Beata Music LLC filed its first Amended Complaint in Case No. 2:18-cv-01536-R-SK, titled Beata Music, LLC v. Dino Danelli and Eddie Brigati, in the United States District Court for the Central District of California (“the Civil Action”). A copy of the First Amended Complaint is attached as Exhibit A. The Complaint alleges that Applicant Beata Music, LLC has the right to use the name THE RASCALS in connection with live performances and merchandise sold at such live performances.

Upon the motion of Dino Danelli and Eddie Brigati, the Court transferred the case to the Southern District of New York. A copy of the Court’s Order transferring the case is attached as Exhibit B. Opposers Dino Danelli and Eddie Brigati filed counterclaims arguing that Beata has no rights to register or use the name THE RASCALS. A copy of the Answer and Counterclaims are attached as Exhibit C. The counterclaims seek remedies including injunctive relief prohibiting Beata from attempting to register THE RASCALS Mark and from using, printing, distributing, selling, offering for sale, possessing, advertising, performing under, promoting or displaying in any way the THE RASCALS Mark without the express permission of either Danelli or Brigati. (Exhibit C, pp. 21-22.) Where a party to a case pending before the Board is also involved in a civil action that may have a bearing on the T.T.A.B. matter, the Board may suspend the proceeding until the final determination of the civil action. 37 CFR § 2.117(a); TBMP § 510.02(a). This is because “a decision by the United States District Court would be binding on the United States Patent and Trademark Office whereas a determination by the Patent Office as to the respondent’s right to retain its registration would not be binding nor would res judicata automatically attach based on a determination by the USPTO with respect to a subsequent or contemporaneous proceeding before the federal district court.” Whopper-Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971). A court’s decision regarding the right to registration is binding on the T.T.A.B. The Seven- Up Cp. V. Bubble Up Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd., 224 U.S.P.Q. 501, 503 (T.T.A.B. 1984); J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 32:94 (4th ed. 2006) (hereinafter “McCarthy”).

2 Opposers Dino Danelli and Edward Brigati and Applicant Beata Music LLC are both parties to the Civil Action, with Beata Music LLC as Plaintiff and Counter-defendant, and with Dino Danelli Edward Brigati as Defendants and Counter-claimants. The Civil Action is a live and ongoing controversy currently pending before the U.S. District Court for the Southern District of New York. Generally speaking, a final determination by a District Court in trademark infringement litigation can take a matter of months and, in some cases, a matter of years. Both the present proceeding and the matter before the District Court exhaust state and federal monetary resources, not to mention the man-hours of government employees involved in both proceedings. To minimize the time, money and resources expended by both parties as well as the overseeing governmental agencies, the Board may find it expedient to suspend the present proceeding until the District Court renders a final judgment or sends instructions for the Board to proceed in the present matter. The Opposition and the Civil Action share the same ultimate issue, i.e. which party has valid and superior trademark rights in THE RASCALS mark. The posture of the parties is the same in both disputes. As the civil trademark infringement allegations necessitate a determination of ownership rights, the Opposition and Civil Action involve identical and nearly identical allegations and rules of law. The allegations will be adjudicated based on a formal examination of the same or an even more expansive set of relevant facts. Further, the same federal trademark law will be relied on by the District Court and by the Board, as both assess the claims and evidence in order to arrive at a final judgment. If the District Court were to rule in favor of either party, the Board would be bound to reflect such a ruling when moving to issue a final judgment in the present Opposition proceeding.

3 As the Plaintiff and Defendants have alleged a variety of causes and requested, among other things, relief in the form of injunctive relief, damages, and attorney’s fees, it is not possible for the issues now present in the Civil Action to be adjudicated by the Board. Further, it is clear that any continued involvement by the parties in the present Opposition would be redundant and would also be wasteful of the limited resources currently afforded to the USPTO for opposition and cancellation proceedings. As such, and considering the binding effect of any determination made by the District Court in the Civil Action, judicial efficiency would be best served by allowing the Civil Action to proceed while the present proceeding is suspended pending the outcome of the Civil Action. Once there is a final ruling or a final resolution in some other form is reached, the parties or the Court itself will inform the Board of the District Court’s decision, and the Board can then decide what is the appropriate manner with which to proceed at that time. See The Other Tel. Co. v. Conn. Nat’l Tel. Co., Inc., 181 U.S.P.Q. 125, 126-7 (T.T.A.B. 1974).

4 CONCLUSION Based on the foregoing, Beata respectfully requests that this action be suspended pending the final outcome of the District Court litigation, which will occur when a decision on the merits of the case (i.e., a dispositive ruling that ends litigation on the merits) has been rendered, and no appeal has been filed therefrom, or all appeals filed have been decided. See TBMP § 510.02(b).

Date: October 17, 2019 By: /Eric Bjorgum/ [electronic signature] Eric Bjorgum Attorney for Applicant Beata Music LLC

Karish & Bjorgum, PC 119 E. Union St., Suite B Pasadena, CA 91103 (213) 785-8070 [email protected]

5 CERTIFICATE OF SERVICE

The undersigned hereby certifies that an image of this paper is being served electronically upon all parties to this proceeding at the addresses recorded in the following manner on this day, October 17, 2019.

By Email To: MICHAEL B. KRAMER & ASSOCIATES 488 MADISON AVENUE, STE 1120 NEW YORK, NY 10022 UNITED STATES [email protected], [email protected] Phone: 212-319-0304

/Eric Bjorgum/ Eric Bjorgum Attorney for Applicant Beata Music LLC

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1 A. Eric Bjorgum (State Bar No. 198392) Marc A. Karish (State Bar No. 205440) 2 KARISH & BJORGUM, PC 3 119 E. Union St., Suite B 4 Pasadena, California 91103 Telephone: (213) 785-8070 5 Facsimile: (213) 995-5010 6 E-Mail: [email protected]

7 BEATA MUSIC, LLC, Plaintiff,

8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 WESTERN DIVISION 11 BEATA MUISC, LLC Case No. 2:18-cv-01536 R (SKx) 12 Plaintiffs 13 FIRST AMENDED COMPLAINT vs. FOR: 14 1. DECLARATORY JUDGMENT RE 15 DINO DANELLI, EDDIE BRIGATI and DOES 2-10, inclusive PLAINTIFFS’ OWNERSHIP OF 16 TRADEMARK Defendants. 17 2. DECLARATORY JUDGMENT RE DEFENDANTS’ OWNERSHIP OF 18 TRADEMARK 19 3. DECLARATORY JUDGMENT RE NON-INFRINGEMENT OF 20 SERVICE MARK 21 4. DECLARATORY JUDGMENT RE FALSE DESIGNATION OF ORIGIN 22 5. TRADEMARK DILUTION 23 24 REQUEST FOR JURY TRIAL

25 26 27

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1 Plaintiff BEATA MUSIC, LLC, (“Plaintiff” or “BEATA MUSIC”), by its 2 attorneys, Karish & Bjorgum, PC, respectfully submit this Complaint and aver as 3 follows: 4 5 JURISDICTION AND VENUE 6 1. This is a request for declaratory judgment for trademark 7 ownership/permitted use, under 15 U.S.C. Section 1114 (United States Trademark 8 Act), Title 15, U.S.C. Sections 1051 et seq., as amended (hereinafter the “Lanham 9 Act”). 10 2. This Court has subject matter jurisdiction pursuant to 28 U.S.C. 11 §§1331, 1338, 1367, 2201, 2202 and the U.S. Constitution because this Complaint 12 raises Federal questions. 13 3. Plaintiff and Defendants DANELLI and BRIGATI have transacted 14 business via record sales in California and live performances in California, and 15 Plaintiffs intend to transact further business, in the Central District of California, 16 and are therefore subject to the personal jurisdiction of this Court. 17 4. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391 and 18 1400(b). 19 5. An actual case or controversy has arisen between the parties. 20 DANELLI’s and BRIGATI’s attorney has threatened litigation against Plaintiff’s 21 predecessors CAVALIERE and CORNISH and has asserted rights in trademark, 22 adverse to Plaintiff’s. These statements threaten injury to CAVALIERE, 23 CORNISH and Plaintiff BEATA MUSIC, LLC. 24 THE PARTIES 25 6. FELIX CAVALIERE is an individual residing in the state of 26 Tennessee. FELIX CAVALIERE is a founding member of a musical performing 27 group, called “The Rascals” (hereinafter the “RASCALS”). CAVALIERE is the 28 keyboard player, lead vocalist and principal songwriter of the RASCALS and has

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1 never stopped performing as the RASCALS in various incarnations to the present 2 day. 3 7. GENE CORNISH is an individual residing in the state of New Jersey. 4 GENE CORNISH is a founding member of the RASCALS. CORNISH was the 5 guitar player, harmonica player, sometimes studio bass player and backing vocalist 6 of the RASCALS until his departure from the group in 1971. 7 8. The RASCALS are members of the Rock and Roll Hall of Fame and 8 the Vocal Group Hall of Fame. The RASCALS placed nine single records in the 9 Billboard Top 20 between 1965 and 1968, six of which reached the top ten and 10 three reached number one on the Billboard chart. The RASCALS have sold over 11 20 million records, and have numerous platinum and gold records to their credit. 12 All four original members, including parties CAVALIERE, CORNISH and 13 DANELLI reunited in 2012 and performed together as the RASCALS in 2012- 14 2013, including live performances at the Grammy Museum in Los Angeles, the 15 Greek Theater in Los Angeles, and other venues in California. 16 9. Plaintiff BEATA MUSIC LLC (“BEATA MUSIC”) is the assignee of 17 CAVALIERE’s and CORNISH’s trademark rights to THE RASCALS for 18 performance of live music and sale of related merchandise. 19 10. Defendant DINO DANELLI (“DANELLI”), also known as “Robert 20 Daniels,” is an individual living in New York, New York. DANELLI was a 21 founding member of the RASCALS and the drummer for the group until its 22 breakup in approximately 1972. 23 11. Defendant EDDIE BRIGATI (“BRIGATI”), is an individual living in 24 New Jersey. BRIGATI was a founding member of the RASCALS and was the 25 vocalist and percussionist for the group until BRIGATI left the group in 1970. 26 After this matter was filed, Defendant BRIGATI’s attorneys threatened Plaintiff, 27 so that he is now substituted in as a “DOE” Defendant. 28

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1 12. CAVALIERE and CORNISH sue defendants identified as Doe 1 2 through Doe 10, inclusive, on the grounds that CAVALIERE and CORNISH do 3 not know the true names and capacities of those fictitiously named defendants. 4 CAVALIERE and CORNISH will seek leave to amend this complaint when they 5 ascertain the true names and capacities of those defendants. 6 7 GENERAL ALLEGATIONS 8 The Origins and Disposition of the RASCALS Mark 9 13. CAVALIERE, CORNISH, DANELLI and BRIGATI formed the 10 RASCALS in 1965. The RASCALS have sold millions of records. 11 14. BRIGATI left the RASCALS in 1970. He signed a release to his 12 rights in the RASCALS name and corporation. 13 15. GENE CORNISH first left the RASCALS in 1971. 14 16. CAVALIERE and DANELLI continued the RASCALS with other 15 musicians until 1972. 16 17. DANELLI left the RASCALS in 1972 and also signed a release of his 17 rights in the RASCALS name and corporation to CAVALIERE. 18 THE RASCALS REUNIONS 19 18. In 1988, CAVALIERE, CORNISH and DANELLI reunited for a tour 20 as the “RASCALS;” however, BRIGATI did not participate in the 1988 tour. 21 19. In 2012, CAVALIERE, CORNISH, DANELLI and BRIGATI 22 reunited as the RASCALS for a series of shows on Broadway entitled “Once Upon 23 a Dream.” The four founding members continued to play live performances of the 24 “Once Upon a Dream” show on tour across the United States and Canada during 25 2012 and 2013. 26 20. Since 2013, the RASCALS name has not been used for a performing 27 musical group and was only used in the context of the larger “Once Upon a 28 Dream” show, and prior to that had not been used since 1989. CAVALIERE is the

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1 only founding member who has continued touring the world, using the RASCALS 2 name as “FELIX CAVALIERE’S RASCALS” since approximately 1990 through 3 the present. He is known throughout the music industry as the RASCALS, an 4 inductee in the Rock & Roll Hall of Fame, Grammy Hall of Fame, Songwriters’ 5 Hall of Fame. Gene Cornish continues doing shows, interviews and personal 6 appearances. 7 21. CAVALIERE and CORNISH have also been involved in reissues and 8 greatest hits packages for the RASCALS material, for which DANELLI did not 9 chose to participate. 10 11 THE 1989 LITIGATION AND 1990 SETTLEMENT 12 22. In 1989, DANELLI and CORNISH sued CAVALIERE which 13 resulted in a stipulation of settlement in 1990 (hereinafter the “1990 Settlement”). 14 23. The 1990 Settlement permitted CAVALIERE to perform concerts 15 billed as “Felix Cavaliere’s Rascals.” 16 24. The 1990 Settlement permitted CORNISH to perform concerts with 17 DANELLI billed as “The New Rascals,” but only when the two played together. 18 25. DANELLI’s 1989 deposition in that case stated that he believed 19 CAVALIERE should not be allowed to use the RASCALS name by himself, but 20 that two founding members could use the name. DANELLI and CAVALIERE did 21 in fact tour as the RASCALS in the early 1970’s. 22 26. The 1990 Settlement is silent as to use of the name RASCALS by 23 CAVALIERE and CORNISH together. 24 27. BRIGATI has performed solo concerts and continues to do so, but 25 does not bill his concerts using the word “Rascals” to describe his performing 26 ensemble, except “Eddie Brigati of the Rascals” or “formerly of the Rascals.” 27 However, recently, BRIGATI has performed a show entitled “Eddie Brigati: After 28 the Rascals.”

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1 28. DANELLI has not performed any concerts on his own since the 1990 2 Settlement. 3 4 5 THE PRESENT DISPUTE 6 29. CAVALIERE and CORNISH are in their seventies. CAVALIERE 7 and CORNISH wish to tour as the RASCALS, and they intend to use the name 8 “The Rascals.” 9 30. CAVALIERE and CORNISH approached DANELLI about joining 10 them on tour. BRIGATI did not wish to participate. 11 31. However, BRIGATI currently advertises the following in connection 12 with his solo live performances: “He is currently reunited with his band-mates. 13 The Rascals appeared at the Capital Theater in Porchester (sic), NY for six shows 14 in December 2012 and for fifteen dates at the Richard Rogers Theatre on 15 Broadway (April 15th-May5th, 2013). Their current production is entitled “Once 16 Upon A Dream.” This is false and misleading information. 17 32. When the RASCALS toured in 2012-2013 with DANELLI playing 18 drums, CAVALIERE and CORNISH were concerned for DANELLI’s health. 19 33. On information and belief, DANELLI has not played the drums in a 20 concert setting since the last RASCALS show in 2013. 21 34. When CAVALIERE and CORNISH invited DANELLI to participate 22 in the contemplated tour, they made trips to New York to visit with DANELLI. 23 After months of meetings, calls and emails, with CAVALIERE and CORNISH 24 agreeing to almost all of DANELLI’s demands, DANELLI declined to participate. 25 He even refused to participate in some calls and demanded trips be made by 26 CAVALIERE AND CORNISH to New York. 27 35. On November 20, 2017, DANELLI’S attorney stated in an email to 28 CAVALIERE’s and CORNISH’s manager: “Mr. Cavaliere’s and Mr. Cornish’s

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1 use of “The Rascals featuring Felix Cavaliere and Gene Cornish” without either 2 the consent or participation of Mr. Danelli (and possibly also Mr. Brigati for that 3 matter) is a breach of the settlement agreement and infringes Mr. Danelli’s rights 4 in “The Rascals” name.” He continued, “If Mr. Cornish and Mr. Cavaliere insist 5 on using the name “The Rascals featuring Felix Cavaliere and Gene Cornish” Mr. 6 Danelli will have no recourse but to pursue all of his legal remedies including but 7 not limited to his share of all revenue earned from the use of “The Rascals” name.” 8 36. CAVALIERE and CORNISH through management wrote to 9 DANELLI’s attorney. He again refused to let CAVALIERE and CORNISH use 10 “The Rascals” for touring. 11 37. DANELLI’s attorney demanded a percentage of gross revenues from 12 any concerts to allow CAVALIERE and CORNISH to use the name the 13 RASCALS, even though DANELLI was not going to perform at any of those 14 concerts. 15 38. CAVALIERE and CORNISH do not get paid on the gross revenue, 16 but on the net revenue. DANELLI refused any offer based on net revenue. 17 39. CAVALIERE and CORNISH contend that DANELLI’s consent for 18 the use of the name is unnecessary and that they have the right to use the name. 19 40. DANELLI claims, without any documents proffered to support his 20 claim, that the 1990 Settlement provides that the “Rascals” name could only be 21 used when, at minimum, three members of the Rascals perform together. 22 41. The 1990 Settlement makes no provision for what should happened 23 when two founding members are using the name “RASCALS,” or when 24 CAVALIERE is using the name with another founding member. 25 42. BRIGATI’s and DANELLI’s attorney sent a letter to CAVALIERE’s 26 and CORNISH’s attorney on March, 27, 2018, stating, inter alia, “[T]here is no 27 reading of that [1990 Settlement] agreement that could possibly permit anyone 28 other than all four members (or at least three, i.e., Cavaliere, Brigati and Danelli)

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1 from performing as the Rascals.” On the contrary, a letter written by the same firm 2 in 1990 states that “The settlement does not provide, nor did Mr. Cavaliere in any 3 fashion purport to agree, that the mark The Rascals shall be ‘a common law mark 4 owned jointly by all four Rascals . . . .” Further, Defendant BRIGATI’s purported 5 manager has, on information and belief, been contacting promoters urging them 6 not to hire Plaintiff’s RASCALS. 7 43. There is a justiciable controversy regarding CAVALIERE’S and 8 CORNISH’S rights to use the name the “RASCALS” in connection with their live 9 performance and merchandise sold at such live performances, free of any 10 allegation of trademark infringement or Lanham Act violation by DANELLI and 11 BRIGATI, to the extent DANELLI and BRIGATI have any rights at all. There is 12 also a justiciable controversy as to the interpretation of the 1990 Settlement and 13 whether CAVALIERE and CORNISH playing together can use the RASCALS 14 name. 15 44. CAVALIERE and CORNISH are being denied possibly their final 16 chance to play together as the RASCALS and also the substantial revenue that 17 would flow from the use of the band name in a concert tour. DANELLI is making 18 no use of the name for touring purposes. BRIGATI also is not using the name for 19 touring purposes, although he is using the name as part of the title for his live 20 performances. 21 45. If CAVALIERE and CORNISH do not use the service mark “The 22 Rascals” for touring purposes, the service mark will lay dormant because 23 BRIGATI and DANELLI have no current plans to tour using that service mark. 24 46. Plaintiff BEATA MUSIC, as the successor to CAVALIERE and 25 CORNISH, has filed an application for the service mark “The Rascals” with the 26 United States Trademark office, for goods and services in International Classes 25 27 and 41. 28

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1 47. Pursuant to 28 U.S.C Sections 2201 and 2202, a real controversy 2 exists between CAVALIERE and CORNISH on one side, and DANELLI and 3 BRIGATI on the other side as to ownership of the RASCALS name and service 4 mark. CAVALIERE and CORNISH assert that they may use the RASCALS 5 service mark and apply for service mark protection under Federal law. DANELLI 6 and BRIGATI apparently believe they have some rights in the name the 7 RASCALS for the purposes of live performances and selling merchandise (other 8 than sound recordings). 9 10 11 FIRST CLAIM FOR RELIEF 12 (For Declaratory Judgment regarding Trademark/Service Mark of the RASCALS 13 pursuant to 15 U.S.C. Section 1051, 28 U.S.C. 2201 and 2202 against all 14 Defendants) 15 48. Plaintiff repeats, realleges and incorporates by reference in this 16 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 17 fully set forth herein. 18 49. The Complaint alleges that CAVALIERE is the actual owner of the 19 RASCALS Mark pursuant to assignments made to him between 1970 and 1972. 20 Defendants DANELLI and BRIGATI claim some nebulous right to use the 21 RASCALS name, which would potentially cause confusion in the marketplace or 22 profiting from a false or misleading designation. 23 50. CAVALIERE and CORNISH together should be permitted to use the 24 name RASCALS for their tour because no written document prohibits them from 25 doing so. In any event, DANELLI could not use the RASCALS on his own. 26 Because DANELLI has not played drums in public since 2013, it is unlikely that 27 he could use the Mark at all. BRIGATI also could not use the RASCALS name on 28 his own and in his solo performances, he has not billed himself as the RASCALS,

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1 and instead has used the phrases “of the RASCALS” or “After the RASCALS” 2 after his own name. 3 51. Plaintiff intends to perform live concerts using the RASCALS Mark 4 and the RASCALS name in connection with merchandise sales at such concerts. 5 DANELLI and BRIGATI have stated that they will pursue any remedies they may 6 have and asserted some rights in the name. Plaintiff does not believe DANELLI or 7 BRIGATI have any rights in the name at this time because no documents convey 8 any rights in the Mark or the name to DANELLI, BRIGATI signed a release of his 9 rights in the name, nor does anything in any document signed by the parties 10 prohibit CAVALIERE and CORNISH from performing as the RASCALS. 11 52. Because a justiciable controversy exists in the form of the credible 12 threat of immediate litigation from DANELLI’s attorney in e-mail, Plaintiff seeks 13 declaratory judgment from this court. 14 53. For these reasons, Plaintiff requests and it is appropriate that the court 15 to enter an order declaring that BEATA MUSIC LLC is the owner of the 16 RASCALS mark pursuant to 15 U.S.C. Section 1501 for concert tours and 17 merchandise sales at such concerts. Declaratory Judgment is appropriate pursuant 18 to 28 U.S.C. Sections 2201 and 2202. 19 20 SECOND CLAIM FOR RELIEF 21 (For Declaratory Judgment regarding Defendants DANELLI’s and 22 BRIGATI’s Unenforceable Claims regarding the RASCALS 23 Trademark/Service Mark) 24 54. Plaintiff repeats, reallege and incorporate by reference in this 25 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 26 fully set forth herein. 27 55. DANELLI and BRIGATI were never participants in any 28 trademark/service mark registration of the RASCALS, thus DANELLI and

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1 BRIGATI have no federal trademark rights to enforce in the trademark/service 2 mark the RASCALS. 3 56. An actual justiciable controversy between the parties concerning use 4 of the service mark RASCALS for concerts has arisen, as demonstrated in George 5 Gilbert’s emailed threat of litigation on behalf of DANELLI, and Phillip 6 Hoffman’s threat of litigation on behalf of both DANELLI and BRIGATI on 7 March 27, 2018. 8 57. Consequently, Plaintiff asks the court for an order declaring that 9 Defendants DANELLI and BRIGATI lack standing to enforce any such claimed 10 rights and lack any enforceable rights. 11 58. Declaratory Judgment is appropriate pursuant to 28 U.S.C. Sections 12 2201 and 2202. 13 THIRD CLAIM FOR RELIEF 14 (Non-Infringement of Trademark/Service Mark by Plaintiffs 15 U.S.C. 15 §1114) 16 59. Plaintiff repeats, realleges and incorporates by reference in this 17 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 18 fully set forth herein. 19 60. This is a declaratory judgment action under the Trademark Laws of 20 the United States, 15 U.S.C. Section 1051, et seq. and the Declaratory Judgment 21 Act, 28 U.S.C. Sections 2201 and 2202. Because an actual justiciable controversy 22 exists because of the credible threat of imminent litigation and Defendants 23 DANELLI’s and BRIGATI’s likely demand that Plaintiff cease and desist the use 24 and exploitation of RASCALS, Plaintiff seeks relief from this court. 25 61. Plaintiff is entitled to declaratory judgment from this court that 26 Plaintiff, either directly or by inducing others to infringe or by contributing to the 27 infringement of others, through Plaintiff’s use of the RASCALS, are not 28 infringing, have not infringed, and are not liable for any infringement of any

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1 enforceable rights DANELLI or BRIGATI has or may have relating the Mark the 2 RASCALS. 3 FOURTH CLAIM FOR RELIEF 4 (Declaratory Judgment of no False Designation of Origin 15 U.S.C. 1125(a)) 5 62. Plaintiff repeats, realleges and incorporates by reference in this 6 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 7 fully set forth herein. 8 63. Plaintiff does not intend to use any images of DANELLI or 9 BRIGATI, nor their names and thus there shall be no false designation because 10 CAVALIERE and CORNISH were members of the RASCALS. 11 64. Plaintiff seeks declaratory judgment from this court that use of the 12 RASCALS for live concert performances and the sale of merchandise at such live 13 concert performances does not constitute false designation of origin. 14 FIFTH CLAIM FOR RELIEF 15 (For Trademark Dilution, 15 U.S.C. § 1125(c)(1)(B) – Against All Defendants) 16 65. Plaintiff repeats, realleges and incorporates by reference in this 17 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 18 fully set forth herein. 19 66. With over 20 million records sold, the RASCALS mark in connection 20 with musical services and products has become distinctive. 21 67. If CAVALIERE and CORNISH are blocked from performing as the 22 RASCALS, the service mark will lay dormant. Consequently, the lack of 23 performances will cause dilution of the RASCALS mark because of their complete 24 absence from the concert touring market. 25 68. Plaintiff has no adequate remedy at law to redress the possible 26 trademark dilution. 27 69. Dilution of the RASCALS mark will irreparably harm Plaintiff’s 28 business interests, as well as their good name and goodwill, unless enjoined.

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1 70. Because of DANELLI’s and BRIGATI’s threats and representations, 2 Plaintiff did not move forward as fully as it could have, and Plaintiff has now lost 3 valuable opportunities because many concert venues are already booked until the 4 fall, therefore Plaintiff is missing prime dates in the valuable summer touring 5 season. 6 71. DANELLI and BRIGATI seek to profit directly from their wrongful 7 exercise of dominion and control over the Mark for the RASCALS. Plaintiff is 8 informed and believes and based thereon alleges that DANELLI’s and BRIGATI’s 9 acts alleged herein have been undertaken with full knowledge of Plaintiff’s rights 10 and with the willful and deliberate intent to impede Plaintiff’s rights, and to 11 squander the goodwill associated with Plaintiff’s RASCALS mark unless 12 DANELLI’s and BRIGATI’s demands are met. 13 14 SIXTH CLAIM FOR RELIEF 15 PRAYER FOR RELIEF 16 (For A Declaration of Rights Under the 1990 Settlement Agreement) 17 72. Plaintiff repeats, realleges and incorporates by reference in this 18 paragraph the allegations contained in paragraphs 1 to 47 of this Complaint as if 19 fully set forth herein. 20 73. The 1990 Settlement makes no provision for what should happen 21 when two founding members (aside from CORNISH and DANELLI) perform 22 together. It also makes no provision for what should happen when CAVALIERE 23 plays with another founding member. 24 74. DANELLI and BRIGATI have threatened CAVALIERE and 25 CORNISH with legal action if they play together under the RASCALS name, and 26 DANELLI has claimed that the 1990 Settlement Agreement gives him rights to 27 stop CORNISH and CAVALIERE. BRIGATI has made other claims, which his 28 attorney asserts gives him rights to stop CORNISH and CAVALIERE.

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1 75. There is a justiciable controversy as to CAVALIERE’S and 2 CORNISH’S rights to use the name the “RASCALS” in connection with their live 3 performances and merchandise sold at such live performances. 4 76. Consequently, Plaintiff asks the court for an order declaring and 5 adjudging the rights of the parties when CAVALIERE and CORNISH play under 6 the name “The Rascals,” vis-à-vis DANELLI’s claimed rights in under the 1990 7 Settlement Agreement and BRIGATI’s claimed rights. 8 77. Declaratory Judgment is appropriate pursuant to 28 U.S.C. Sections 9 2201 and 2202 10 11 WHEREFORE, Plaintiff prays for judgment as follows: 12 1. An order declaring that Defendants DANELLI and/or BRIGATI have 13 no enforceable rights in the Mark the “RASCALS” with respect to live musical 14 performances and the sale of merchandise at such performances. 15 2. An order declaring that Plaintiff has not infringed any valid, 16 distinctive or enforceable rights belonging to DANELLI and/or BRIGATI relating 17 to live musical performances or the sale of merchandise at such performances. 18 3. An order that Plaintiff does not infringe any right of Defendants by 19 performing live concerts and using the Mark RASCALS for live performances and 20 merchandise to be sold at live performances. 21 4. An order that that use of the RASCALS for live concert performances 22 and the sale of merchandise at such live concert performances does not constitute 23 false designation of origin. 24 5. For an order permanently and preliminarily enjoining the Defendants, 25 their officers, agents, employees, and those acting in concert or conspiracy with 26 them from: 27 a. Directly or indirectly using, printing, distributing, selling, 28 offering for sale, possessing, advertising, performing under, promoting or

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1 displaying in any way the RASCALS mark or any simulation, reproduction, copy 2 or colorable imitation of the RASCALS mark, except in the form of “Dino Danelli, 3 formerly of the Rascals” and/or “Eddie Brigati, formerly of the Rascals” (with the 4 “Rascals” to appear in a font no larger than 75% the type size of DANELLI’s 5 and/or BRIGATI’s name, and the words “formerly of the” must appear in the same 6 type size and font as the “Rascals”) to promote any personal appearance by 7 DANELLI and/or BRIGATI; 8 b. Making any unauthorized use of the RASCALS mark in such a 9 way as to cause confusion, mistake or deception as to the affiliation, connection or 10 association of the Defendants as to the origin, sponsorship or approval of 11 Plaintiff’s products or services; 12 c. Otherwise infringing Plaintiff’s rights in and to the RASCALS 13 mark. 14 6. DANELLI and BRIGATI should be enjoined from any conduct which 15 would irreparably damage Plaintiff’s market reputation, and goodwill, and which 16 could discourage current and potential promoters from dealing with Plaintiff. Such 17 conduct could create irreparable harm to Plaintiff unless Defendants’ actions are 18 enjoined during the pendency of this action, and thereafter. 19 7. For an order restraining Defendants’ further dilution of the RASCALS 20 mark. 21 8. For a finding that the Defendants’ acts were undertaken, intentionally, 22 maliciously and/or with a reckless and wanton disregard of the Plaintiff’s common 23 law trademark rights and for an award of exemplary damages pursuant to 24 California Civil Code section 3295 in an amount sufficient to punish, deter, and 25 make an example of Defendants for the acts complained of herein. 26 9. For an award of costs, fees and expenses incurred in this action. 27 10. That Plaintiff be awarded such further legal and equitable relief as the 28 Court deems proper.

FIRST AMENDED COMPLAINT OF BEATA MUSIC LLC Case 2:18-cv-01536-R-SK Document 9 Filed 03/30/18 Page 16 of 17 Page ID #:46

1 KARISH & BJORGUM, PC 2 Dated: March 29, 2018 3 4 5 ______6 By: A. Eric Bjorgum 7 Attorneys for Plaintiff BEATA MUSIC, 8 LLC 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

FIRST AMENDED COMPLAINT OF BEATA MUSIC LLC Case 2:18-cv-01536-R-SK Document 9 Filed 03/30/18 Page 17 of 17 Page ID #:47

1 REQUEST FOR JURY TRIAL 2 Pursuant to Fed.R.Civ.P. 38(b), Plaintiffs hereby request a trial by jury of all 3 issues raised by the Complaint which are properly triable to a jury. 4 Dated: March 30, 2018 KARISH & BJORGUM, PC 5 6 7 8 By: ______9 A. Eric Bjorgum Attorneys for Plaintiff BEATA MUSIC, LLC 10

11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

FIRST AMENDED COMPLAINT OF BEATA MUSIC LLC Case 2:18-cv-01536-R-SK Document 23-1 Filed 07/11/18 Page 1 of 4 Page ID #:166

1 JS-6 2

3 4

5 6

8 9 UNITED STATES DISTRICT COURT 10

CENTRAL DISTRICT OF CALIFORNIA 11

12 BEATA MUSIC, LLC, ) CASE NO. 18-1536-R 13 ) Plaintiff, ) ORDER GRANTING DEFENDANTS’ 14 ) MOTION TO TRANSFER TO THE v. ) UNITED STATES DISTRICT COURT 15 ) FOR THE SOUTHERN DISTRICT OF DINO DANELLI; EDDIE BRIGATI; and ) NEW YORK 16 DOES 2 to 10, inclusive, ) 17 ) Defendants. ) 18 19 Before the Court is Defendants’ Motion to Dismiss for Lack of Jurisdiction and Improper 20 Venue, or, Alternatively, to Transfer, filed on May 8, 2018. (Dkt. 16). Having been thoroughly 21 briefed by the parties, this Court took the matter under submission on June 14, 2018. 22 This case arises from a dispute over the terms of a 1990 settlement agreement (“SA”) 23 between Felix Cavaliere, Gene Cornish, Defendant Dino Danelli, and Defendant Eddie Brigati, 24 four members of the now-defunct 1960s musical group “The Rascals.” The SA assigned each 25 member certain rights to use various permutations of the trademark “The Rascals” for live 26 performances. In 2018, Defendants discovered that three different California entities had 27 contracted with Plaintiff to host concerts promoting Cavaliere and Cornish as “The Rascals.” 28 Defendants contend that this is a violation of the SA. On April 9, 2018, Defendants sent cease and

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1 desist letters to the California entities alleging violations of federal and California law. 2 In the instant lawsuit, Plaintiff Beata Music, the assignee of Cavaliere and Cornish’s rights, 3 sues for declaratory judgment regarding the use of “The Rascals” trademark. Defendants move to 4 dismiss the Complaint on the grounds that this Court lacks personal jurisdiction over Defendants 5 and that the Complaint was filed in an improper venue. Defendant Danelli is a New York 6 resident, and Defendant Brigati is a New Jersey resident. The parties agree that Defendants are 7 not subject to general jurisdiction in California. Plaintiff contends that Defendants are subject to 8 specific jurisdiction in California. 9 The Ninth Circuit applies a three-prong test to determine whether a defendant has 10 sufficient contacts to be subject to specific personal jurisdiction in a particular state: “(1) The non-

11 resident defendant must purposefully direct his activities or consummate some transaction with the 12 forum or resident thereof; or perform some act by which he purposefully avails himself of the 13 privilege of conducting activities in the forum, thereby invoking the benefits and protections of its 14 laws; (2) the claim must be one which arises out of or relates to the defendant’s forum-related 15 activities; and (3) the exercise of jurisdiction must comport with fair play and substantial justice, 16 i.e. it must be reasonable.” Morrill v. Scott Fin. Corp., 873 F.3d 1136, 1142 (9th Cir. 2017). The 17 plaintiff has the burden of proving the first two prongs. Id. If the plaintiff satisfies the first two 18 prongs, the burden then shifts to the defendant to prove that exercising jurisdiction would not be 19 reasonable. Id. 20 Under the first prong, Plaintiff must show that Defendants purposefully directed their 21 activities toward California or purposefully availed themselves of the privilege of conducting 22 activities there. Because Plaintiff’s underlying trademark claims arise in tort, this Court applies 23 the purposeful direction analysis. See, e.g., Adidas Am., Inc. v. Cougar Sport, Inc., 169 F. Supp. 24 3d 1079, 1087 (D. Or. 2016). 25 “Purposeful direction requires that the defendant have (1) committed an intentional act, (2) 26 expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be 27 suffered in the forum state.” Morrill, 873 F.3d at 1142. Courts consider two factors to determine 28 whether an action is “expressly aimed” at the forum state. “First, the relationship must arise out of

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1 contacts that the defendant himself creates with the forum State. Put simply, however significant 2 the plaintiff’s contact with the forum may be, those contacts cannot be decisive in determining 3 whether the defendant’s due process rights are violated…. Second, our ‘minimum contacts’ 4 analysis looks to the defendant’s contacts with the forum State itself, not the defendant’s contacts 5 with the persons who reside there.” Morrill, 873 F.3d at 1143. 6 “A cease and desist letter is not in and of itself sufficient to establish personal jurisdiction 7 over the sender of the letter.” Yahoo! Inc. v. La Ligue Contre Le Racisme et L’antisemitisme, 433 8 F.3d 1199, 1208 (9th Cir. 2006). However, a cease and desist letter may be the basis for personal 9 jurisdiction if it is “abusive, tortious, or otherwise wrongful.” Id. at 1209; see Bancroft & 10 Masters, Inc. v. Augusta Nat’l Inc., 223 F.3d 1082 (9th Cir. 2000).

11 In this case, Defendants’ alleged contacts with California are the April 9, 2018, cease and 12 desist letters they sent to three California entities. Defendants only sent these letters to California 13 entities because Plaintiff had contracted for Cavaliere and Cornish to perform concerts using the 14 name “The Rascals” in California. Plaintiff’s unilateral decision to schedule and promote concerts 15 in California cannot be decisive in determining purposeful direction. See Morrill, 873 F.3d at 16 1142. Plaintiff also alleges that Defendant has created contacts with California via record sales, 17 but the instant lawsuit does not arise from these alleged contacts. Therefore, these contacts do not 18 justify the exercise of specific jurisdiction. See id. 19 It is well-established that a cease and desist letter, on its own, is not sufficient to establish 20 minimum contacts. See Yahoo! Inc., 433 F.3d at 1208. Defendants’ letters simply stated that 21 Defendants intended to pursue legal action if the three California entities continued engaging in 22 conduct that Defendants believed infringed on their SA rights. The letters were not “abusive, 23 tortious, or otherwise wrongful.” Therefore, the letters do not constitute sufficient contacts to 24 demonstrate purposeful direction. See id. Accordingly, Plaintiff does not satisfy the first prong of 25 the test for specific jurisdiction. This Court may not exercise personal jurisdiction over 26 Defendants. 27 Where a civil action is filed in a court that lacks jurisdiction, the court may, in the interest 28 of justice, transfer the action to any other court where the plaintiff may have originally filed the

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1 action. 28 U.S.C. § 1631. In this case, venue is proper in the Southern District of New York 2 because a substantial part of the events giving rise to Plaintiff’s claim occurred in that district. See 3 28 U.S.C. § 1391(b). Transfer in this case would serve the interests of justice because it does not 4 require Plaintiff to refile its Complaint, thereby preventing unnecessary delay. See Cruz-Aguilera 5 v. INS, 245 F.3d 1070, 1074 (9th Cir. 2001). Therefore, this Court will transfer the matter to the 6 United States District Court for the Southern District of New York. 7 IT IS HEREBY ORDERED that Defendants’ Motion to Transfer this Action to the 8 United States District Court for the Southern District of New York is GRANTED. (Dkt. 16). 9 10 Dated: July 9, 2018

11 ______12 MANUEL L. REAL 13 UNITED STATES DISTRICT JUDGE 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Case 1:18-cv-06354-JGK Document 30 Filed 08/23/18 Page 1 of 22

Michael B. Kramer (MK 7071) Peter T. Salzler (PS 2610) MICHAEL B. KRAMER & ASSOCIATES 150 East 58th Street New York, New York 10155 (212) 319-0304 [email protected] [email protected]

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ------x BEATA MUSIC LLC,

Plaintiff, Index No.: 18-cv-6354 (JGK)

v. ANSWER WITH COUNTERCLAIMS

DINO DANELLI, EDDIE BRIGATI, JURY TRIAL DEMANDED and DOES 2-10, inclusive,

Defendants. ------x

Defendants DINO DANELLI (“Danelli”) and EDDIE BRIGATI (“Brigati”) (Danelli and

Brigati sometimes collectively “Defendants”),1 by their attorneys, MICHAEL B. KRAMER &

ASSOCIATES, for their Answer to Plaintiff’s First Amended Complaint (the “Complaint”), state as follows:

JURISDICTION AND VENUE

1. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 1 of the Complaint. To the extent the allegations in Paragraph 1 of the Complaint state legal conclusions, no responsive pleading is required.

1 All terms of art used herein shall have the same meaning as set-forth in the First Amended Complaint (ECF Doc. No. 9) unless otherwise defined. 1

Case 1:18-cv-06354-JGK Document 30 Filed 08/23/18 Page 2 of 22

2. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 2 of the Complaint. To the extent the allegations in Paragraph 2 of the Complaint state legal conclusions, no responsive pleading is required.

3. Defendants deny the allegations contained in Paragraph 3 of the Complaint. To the extent the allegations in Paragraph 3 of the Complaint state legal conclusions, no responsive pleading is required.

4. Defendants deny the allegations contained in Paragraph 4 of the Complaint. To the extent the allegations in Paragraph 4 of the Complaint state legal conclusions, no responsive pleading is required. Defendants respectfully refer the Court to the Order dated July 9, 2018 of

Hon. Manuel L. Real of the United States District Court for the Central District of California, which transferred the instant action to the United States District Court for the Southern District of New York.

5. Defendants deny the allegations contained in Paragraph 5 of the Complaint except admit that an actual case and controversy has arisen between the parties. To the extent the allegations in Paragraph 5 of the Complaint state legal conclusions, no responsive pleading is required.

THE PARTIES

6. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in the first sentence of Paragraph 6 of the Complaint.

Defendants deny the remainder of the allegations of Paragraph 6 of the Complaint, except admit that Cavaliere is a founding member of the musical performing group, called “The Rascals.”

Case 1:18-cv-06354-JGK Document 30 Filed 08/23/18 Page 3 of 22

7. Defendants deny having knowledge or information sufficient to form a belief as to the allegations contained in the first sentence of Paragraph 7. Defendants admit that Cornish is a founding member of the RASCALS and deny the remainder of the allegations contained in

Paragraph 7 of the Complaint.

8. Defendants admit the allegations contained in Paragraph 8 of the Complaint, except deny that Cavaliere and Cornish are parties to this action.

9. Defendants deny the allegations contained in Paragraph 9 of the Complaint.

10. Defendants admit the allegations contained in Paragraph 10 of the Complaint.

11. Defendants deny the allegations contained in Paragraph 11 of the Complaint except admit that Brigati is an individual residing in New Jersey and was a founding member of the RASCALS.

12. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 12 of the Complaint.

GENERAL ALLEGATIONS

The Origins and Disposition of the RASCALS Mark

13. Defendants admit the allegations contained in Paragraph 13 of the Complaint.

14. Defendants deny the allegations contained in Paragraph 14 of the Complaint.

15. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 15 of the Complaint.

16. Defendants deny the allegations contained in Paragraph 16 of the Complaint.

17. Defendants deny the allegations contained in Paragraph 17 of the Complaint.

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THE RASCALS REUNIONS

18. Defendants deny the allegations contained in Paragraph 18 of the Complaint, except admit that in 1988, Cavaliere, Cornish, and Danelli toured as the RASCALS.

19. Defendants deny the allegations contained in the first sentence of Paragraph 19 of the Complaint, except admit that Cavaliere, Cornish, Danelli, and Brigati performed a series of shows as the RASCALS on Broadway entitled “Once Upon a Dream.” Defendants deny the the allegations contained in the second sentence of Paragraph 19 of the Complaint, except admit that the four members played live performances of the “Once Upon A Dream” show on tour across the United States and Canada.

20. Defendants deny the allegations contained in the first and second sentence of

Paragraph 20 of the Complaint. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the remainder of the allegations contained in Paragraph 20 of the

Complaint, except expressly deny that Cavaliere is known throughout the music industry as the

RASCALS.

21. Defendants deny the allegations contained in Paragraph 21 of the Complaint.

THE 1989 LITIGATION AND 1990 SETTLEMENT

22. Defendants admit the allegations contained in Paragraph 22 of the Complaint.

23. Defendants deny the allegations contained in Paragraph 23 of the Complaint and respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

24. Defendants deny the allegations contained in Paragraph 24 of the Complaint and respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

Case 1:18-cv-06354-JGK Document 30 Filed 08/23/18 Page 5 of 22

25. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 25 of the Complaint, except admit that Danelli and Cavaliere toured as the RASCALS in the early 1970s.

26. Defendants deny the allegations contained in Paragraph 26 of the Complaint and respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

27. Brigati admits the allegations contained in Paragraph 27 of the Complaint.

Danelli denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 27 of the Complaint

28. Defendants admit the allegations contained in Paragraph 28 of the Complaint.

THE PRESENT DISPUTE

29. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 29 of the Complaint.

30. Defendants admit the allegations contained in Paragraph 30 of the Complaint.

31. Danelli denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 31of the Complaint. Brigati denies the allegations contained in Paragraph 31 of the Complaint.

32. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 32 of the Complaint.

33. Danelli admits the allegations contained in Paragraph 33 of the Complaint.

Brigati denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 33 of the Complaint.

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34. Danelli admits that Cavaliere and Cornish invited him to participate in the contemplated tour, that Cavaliere and Cornish made trips to New York to visit Danelli, and that

Danelli declined to participate in the tour. Danelli denies the remainder of the allegations in

Paragraph 34 of the Complaint. Brigati denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 34 of the Complaint.

35. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 35 of the Complaint.

36. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 36 of the Complaint.

37. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 37 of the Complaint.

38. Defendants deny having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 38 of the Complaint.

39. Defendants deny the allegations contained in Paragraph 39 of the Complaint.

40. Danelli denies the allegations contained in Paragraph 40 of the Complaint, except admits that the 1990 Settlement provides that the “Rascals” could only be used when, at minimum, three members of the Rascals perform together. Brigati denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 40 of the Complaint. Defendants respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

41. Defendants deny the allegations contained in Paragraph 41 of the Complaint.

Defendants respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

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42. Danelli denies having knowledge or information sufficient to form a belief as to the truth of the allegations contained in Paragraph 42 of the Complaint. Brigati denies the last sentence of Paragraph 42 of the Complaint and denies having knowledge or information sufficient to form a belief as to the truth of the remainder of the allegations contained in

Paragraph 42 of the Complaint

43. To the extent the allegations in Paragraph 43 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 43 of the Complaint.

44. Defendants deny the allegations in Paragraph 44 of the Complaint.

45. Defendants deny the allegations in Paragraph 45 of the Complaint.

46. Defendants deny the allegations contained in Paragraph 46 of the Complaint, except admit that Beata Music has filed an application for the service mark “The Rascals”.

47. To the extent the allegations in Paragraph 47 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 47 of the Complain, except admit that Danelli and Brigati have rights in the name the

RASCALS.

FIRST CLAIM FOR RELIEF (For Declaratory Judgment regarding Trademark/Service Mark of the RASCALS pursuant to 15 U.S.C. §1051, 28 U.S.C. §2201 and 2202 against all Defendants)

48. Regarding the allegations contained in Paragraph 48 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “47” as if fully set forth herein.

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49. To the extent the allegations in Paragraph 49 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 49 of the Complaint.

50. To the extent the allegations in Paragraph 50 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 50 of the Complaint.

51. To the extent the allegations in Paragraph 51 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 51 of the Complaint except admit that Danelli and Brigati have asserted rights in the

RASCALS name and will pursue any remedies they may have.

52. To the extent the allegations in Paragraph 52 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 52 of the Complaint.

53. To the extent the allegations in Paragraph 53 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 53 of the Complaint.

SECOND CLAIM FOR RELIEF (For Declaratory Judgment regarding Defendants Danelli’s and Brigati’s Unenforceable Claims regarding the RASCALS Trademark/Service Mark)

54. Regarding the allegations contained in Paragraph 54 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “53” as if fully set forth herein.

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55. To the extent the allegations in Paragraph 55 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 55 of the Complaint.

56. To the extent the allegations in Paragraph 56 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 56 of the Complaint.

57. To the extent the allegations in Paragraph 57 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 57 of the Complaint.

58. To the extent the allegations in Paragraph 58 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 58 of the Complaint.

THIRD CLAIM FOR RELIEF (Non-Infringement of Trademark/Service Mark by Plaintiffs 15 U.S.C. §114)

59. Regarding the allegations contained in Paragraph 59 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “58” as if fully set forth herein.

60. To the extent the allegations in Paragraph 60 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 60 of the Complaint.

61. To the extent the allegations in Paragraph 61 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 61 of the Complaint.

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FOURTH CLAIM OF RELIEF (Declaratory Judgment of No False Designation of Origin 15 U.S.C. §1125(a))

62. Regarding the allegations contained in Paragraph 62 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “61” as if fully set forth herein.

63. To the extent the allegations in Paragraph 63 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 63 of the Complaint.

64. To the extent the allegations in Paragraph 64 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny knowledge or information sufficient to form a belief as to the allegations in Paragraph 64 of the Complaint.

FIFTH CLAIM OF RELIEF (For Trademark Dilution, 15 U.S.C. §1125(c)(1)(B) – Against all Defendants)

65. Regarding the allegations contained in Paragraph 65 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “64” as if fully set forth herein.

66. Defendants admit the allegations in Paragraph 66 of the Complaint.

67. To the extent the allegations in Paragraph 67 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 67 of the Complaint.

68. To the extent the allegations in Paragraph 68 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 68 of the Complaint.

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69. To the extent the allegations in Paragraph 69 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 69 of the Complaint.

70. Defendants deny the allegations in Paragraph 70 of the Complaint.

71. Defendants deny the allegations in Paragraph 71 of the Complaint.

SIXTH CLAIM FOR RELIEF (For a Declaration of Rights Under the 1990 Settlement)

72. Regarding the allegations contained in Paragraph 72 of the Complaint,

Defendants repeat and reallege each and every response set forth in paragraphs “1” through “71” as if fully set forth herein.

73. To the extent the allegations in Paragraph 73 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 33 of the Complaint and respectfully refer the Court to the 1990 Settlement for a complete and accurate statement of its contents.

74. Defendants deny the allegations in Paragraph 74 of the Complaint.

75. To the extent the allegations in Paragraph 75 of the Complaint state legal conclusions, no responsive pleading is required. Otherwise, Defendants deny the allegations in

Paragraph 75 of the Complaint

76. To the extent the allegations in Paragraph 76 of the Complaint state legal conclusions, no responsive pleading is required.

77. To the extent the allegations in Paragraph 77 of the Complaint state legal conclusions, no responsive pleading is required.

* * * * * * * *

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The recitations, allegations, assertions, and conclusions contained beneath the

“WHEREFORE” text are not substantive allegations that require a response. To the extent such content is intended to be substantive allegations, Defendants deny those allegations.

AFFIRMATIVE DEFENSES

FIRST AFFIRMATIVE DEFENSE

78. The Complaint fails to state a claim for relief upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

79. Plaintiff lacks standing to maintain this action.

THIRD AFFIRMATIVE DEFENSE

80. Plaintiff has failed to name necessary parties.

FOURTH AFFIRMATIVE DEFENSE

81. Plaintiff’s claims are barred, in whole or in part, by the equitable doctrines of release, waiver, and/or estoppel.

FIFTH AFFIRMATIVE DEFENSE

82. Plaintiff’s claims are barred by the doctrine of laches.

SIXTH AFFIRMATIVE DEFENSE

83. Plaintiff’s claims are barred, in whole or in part, by applicable law, rule, statute, or regulation.

SEVENTH AFFIRMATIVE DEFENSE

84. Plaintiff’s claims are barred, in whole or in part, by documentary evidence including, but not limited to, the 1990 Settlement and the Settlement Agreement, dated April 21,

1992 between Cavaliere, Cornish, Brigati, and Danelli.

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EIGHTH AFFIRMATIVE DEFENSE

85. Plaintiff’s claims are barred by the equitable doctrines of unclean hands and unjust enrichment.

NINTH AFFIRMATIVE DEFENSE

86. If Plaintiff sustained any damages, which Defendants deny, the damages were caused by Plaintiff’s sole intentional acts or willful misconduct, and Plaintiff is barred from recovery.

TENTH AFFIRMATIVE DEFENSE

87. Plaintiff’s Complaint is barred by the doctrines of res judicata and collateral estoppel.

ELEVENTH AFFIRMATIVE DEFENSE

88. Plaintiff’s claims are barred by its failure to mitigate damages.

JURY DEMAND

Defendants hereby demand a jury for all issues triable by jury.

COUNTERCLAIMS

PARTIES, JURISDICTION, AND VENUE

1. Defendant-Counterclaimant Danelli is an individual residing in New York.

2. Defendant-Counterclaimant Brigati is an individual residing in New Jersey.

3. Upon information and belief, Plaintiff-Counterclaim Defendant Beata Music LLC

(“Beata”) is a California limited liability company formed in January 2018. Upon information and belief, Beata is the purported assignee of Felix Cavaliere (“Cavaliere”) and Gene Cornish’s

(“Cornish”) trademark rights, if any, in the RASCALS for performance of live music and sale of related merchandise.

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4. Danelli, Brigati, Cavaliere, and Cornish (collectively, the “Band Members”) are the original founding members of the musical performing group called “The Rascals”. The

RASCALS will be used herein as used in the Complaint.

5. This Court has subject matter jurisdiction over this counterclaim pursuant to 28

U.S.C. §§ 1331, 1338, 1367, 2202, and 2202.

6. Venue is proper pursuant to 28 U.S.C. § 1391 and pursuant to the Order, dated

July 9, 2018, of Hon. Manuel L. Real of the United States District Court for the Central District of California, which transferred the instant action to the United States District Court for the

Southern District of New York.

FACTUAL BACKGROUND

7. The RASCALS were formed in the 1960s by the Band Members and were also briefly known as “The Young Rascals.” The RASCALS recorded chart-topping records such as

“Good Lovin”, “Groovin”, and “People Got to Be Free.”

8. In 1989, Danelli and Cornish commenced an action in the United States District

Court for the Southern District of New York against Cavaliere for his attempt to bill himself as

The RASCALS for live musical performances (the “1989 Action”) (Danelli & Cornish v.

Cavaliere, 89-cv-3033). Pursuant to a Court ordered settlement agreement, dated January 5,

1990 (the “1990 Settlement Agreement”), Danelli, Cornish, and Cavaliere agreed to the following:

a. Plaintiffs [Danelli & Cornish], individually or collectively, may use or exploit the name Rascals in their band only as follows: “The New Rascals, featuring Dino Danelli and Gene Cornish,” and any other names of individuals with who they may use in their band . . . .

b. Defendant Felix Cavaliere may use or exploit the name “Rascals” for his band only as follows: “Felix Cavaliere’s

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Rascals” and any other names of individuals he may add to his band.

9. The Band Members also engaged in additional litigation in the early 1990s. On

October 30, 1990, Brigati commenced an action against Cavaliere (Eddie Brigati v. Felix

Cavaliere, 1:90-cv-06988-KMW-THK) (the “1990 Action”).

10. On March 20, 1991, Danelli & Cornish commenced an action against Cavaliere

(Dina Danelli & Gene Cornish v. Felix Cavaliere, 1:91-cv-01928-KMW-THK) (the “1991

Action”).

11. The 1990 and 1991 Actions were consolidated and, subsequently dismissed, after another settlement agreement was reached by the Band Members on April 21, 1992 (the “1992

Settlement Agreement”).

12. The 1992 Settlement Agreement covered, inter alia, song ownership, administration of The RASCALS assets, and publishing rights. It also expressly provided that

“[a]ll major decisions (i.e., those involving decisions not in the normal course of business such as involving audits and litigation) shall be made by a majority vote of Brigati, Cornish, Danelli, and

Cavaliere.”

13. In 1994, trademark applications for “Rascals” and “Young Rascals” were filed with the USPTO on behalf of all the Band Members by Brigati for “musical sound recordings” in

Class 9 with a first use of September 1965.

14. The trademark “Rascals” was registered on September 12, 1995 (Registration No.

1917707) (the “RASCALS Mark”).

15. The trademark “Young Rascals” was registered on September 19, 1995

(Registration No. 1919353) (the “YOUNG RASCALS Mark”).

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16. The RASCALS Mark and the YOUNG RASCALS Mark are jointly owned by the

Band Members.

17. The RASCALS Mark and the YOUNG RASCALS Mark trademark registrations are active and were renewed in July 2015.

18. Subsequent to the 1990 and 1992 Settlement Agreements, Cavaliere repeatedly attempted to deceive the public into believing that all the Band Members were performing as part of Felix Cavaliere’s Rascals.

19. In 2014, Cavaliere used a “photoshopped” image depicting all four Band

Members to advertise performances of Felix Cavaliere’s Rascals. After receiving a demand to cease and desist from the owner of the photograph and the producer of Broadway show entitled

The Rascals: Once Upon A Dream, Renegade Circus LLC, Cavaliere removed the advertisement and posted a public apology in which he stated, “These tour dates are not The

Rascals.”

20. In 2015, Cavaliere deceptively advertised a show entitled Felix Cavaliere’s

Rascals 50th Anniversary show, implying that his show was the official 50th anniversary show of the RASCALS.

21. In 2017, Cavaliere and Cornish approached Danelli about participating in a tour

(the “2017 Tour”) and approached Brigati about participating in limited concert dates on the

2017 Tour. Both Danelli and Brigati declined.

22. Neither Danelli nor Brigati granted any permission for Cavaliere and Cornish, nor

Beata, to perform as or otherwise use The RASCALS and/or the YOUNG RASCALS Marks in connection with the 2017 Tour.

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23. Despite Danelli and Brigati declining to participate in their 2017 Tour, Cavaliere and Cornish began advertising their tour as “The Rascals Tour” and their performances as “The

RASCALS.” Such advertisements appeared on Facebook and various websites.

24. On February 20, 2018, Beata purportedly filed a trademark application for the mark “The RASCALS” covering: (a) jackets, jerseys, shirts, shorts, sweatshirts, t-shirts and headwear; and (b) entertainment services in the nature of live performances by a vocal and instrumental group.

25. Upon information and belief, Beata filed the trademark application as the purported assignee of Cavaliere’s and Cornish’s rights in the RASCALS Mark.

26. Cavaliere and Cornish did not and do not have the authority to assign the

RASCALS Mark or Young RASCALS mark to Beata.

27. In June 2018, the USPTO denied Beata’s application.

FIRST COUNTERCLAIM (Declaratory Judgment)

28. Defendants repeat and reallege the allegations contained in paragraphs “1” through “27” of their Counterclaims as though fully set-forth herein.

29. The Band Members are the joint owners of the RASCALS Mark and the YOUNG

RASCALS Mark.

30. Pursuant to the 1990 Settlement Agreement and the 1992 Settlement Agreement, at least three out of the four Band Members must agree to allow the other remaining Band

Members to perform using the RASCALS Mark or the YOUNG RASCALS Mark.

31. By filing a trademark application for “The Rascals,” Beata has asserted its ownership and other rights in and to the RASCALS Mark and/or the YOUNG RASCALS Mark at issue in this case.

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32. Beata has also attempted to use the mark for the performances of Cavaliere and/or

Cornish without authorization from Danelli and/or Brigati.

33. Beata has also claimed that Cavaliere and Cornish may use the RASCALS

MARK and/or perform as “The RASCALS” without the consent of Danelli and/or Brigati and that Danelli and Brigati do not have any rights or interest in the RASCALS Mark.

34. There is now an actual, genuine and justiciable controversy between the parties that can only be resolved by declaratory relief. In accordance with 28 U.S.C. §§2201-2202,

Defendants are entitled to a declaration that: (i) the Band Members are the owners of the

RASCALS Mark and the YOUNG RASCALS Mark; (ii) Beata has no right to register The

Rascals Mark; and (iii) pursuant to the 1990 Settlement Agreement and 1992 Settlement

Agreement, at least three of the Band Members are required to consent to any Band Members, in any combination, performing as The Rascals.

35. Defendants have no adequate remedy at law.

SECOND COUNTERCLAIM (Unfair Competition)

36. Defendants repeat and reallege the allegations contained in paragraphs “1” through “35” of their Counterclaims as though fully set-forth herein.

37. Beata has no rights in and to the RASCALS Mark, but nonetheless has appropriated same for itself and has benefited by exploiting said rights. By its actions, Beata has deprived Defendants of their benefits in and to the RASCALS Mark.

38. Beata’s unauthorized use of the RASCALS Mark is likely to cause confusion, mistake, or deception as to the source, sponsorship, affiliation, or connection between Beata and

Defendants.

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39. Beata’s actions constitute a misappropriation of Defendants’ rights in and to the

RASCALS Mark and constitute unfair competition.

40. As a direct and proximate result of Beata’s misappropriation and unfair competition, Defendants are entitled to recover the proceeds and other compensation received or to be received by Beata arising from its use or exploitation of the RASCALS Mark. Defendants are entitled to an accounting to determine the amount of such proceeds, profits, and compensation.

41. As a direct and proximate result of Beata’s willful, wanton, and reckless acts of misappropriation and unfair competition, Defendants are entitled to compensatory and punitive damages in an amount to be determined at trial.

THIRD COUNTERCLAIM (Unjust Enrichment)

42. Defendants repeat and reallege the allegations contained in paragraphs “1” through “41” of their Counterclaims as though fully set-forth herein.

43. Through the actions set forth above, Beata has obtained money, benefits, and other enrichment that in equity and good conscience should have been paid, in whole or in part, to Defendants.

44. Beata has been enriched at Defendants’ expense such that the amounts by which it has been so enriched should be accounted for and turned over to Defendants.

45. As a direct and proximate result of Beata’s conduct, Defendants are entitled to recover the money, benefits, and other enrichment that Beata unjustly received as a result of its unauthorized use and infringement of the RASCALS Mark.

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FOURTH COUNTERCLAIM (False Designation of Origin – 15 U.S.C. §1125)

46. Defendants repeat and reallege the allegations contained in paragraphs “1” through “45” as though fully set-forth herein.

47. Without permission, Beata has used the image and likeness of Danelli and Brigati in advertisements for the2017 Tour of Cavaliere and Cornish.

48. Such unauthorized use results in false or misleading representation of fact that is likely to cause confusion as to Danelli and Brigati’s sponsorship and/or approval of the 2017

Tour.

49. As a direct and proximate result of Beata’s conduct, Defendants have been damaged in an amount to be determined at trial.

FIFTH COUNTERCLAIM (Permanent Injunction)

50. Defendants repeat and reallege the allegations contained in paragraphs “1” through “49” of their Counterclaims as though fully set-forth herein.

51. Defendants, along with Cavaliere and Cornish, are the owners of the RASCALS

Mark and the YOUNG RASCALS Mark.

52. Beata has used, threatens to use, and upon information and belief, continues to use the RASCALS Mark without authorization, in violation of Defendants’ rights in and to the

RASCALS Mark.

53. Defendants will suffer irreparable injury if the injunction sought is not granted because their rights in and to the RASCALS Mark will be impaired and will result in the false or misleading representation of fact that is likely to cause confusion as to Danelli and Brigati’s sponsorship and/or approval of Beata’s use of the RASCALS Mark.

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54. Defendants have no adequate remedy at law.

55. A balancing of equities favors enjoining Beata from any further use of the

RASCALS or YOUNG RASCALS Marks.

56. By reason of the foregoing, Defendants are entitled to permanent injunctive relief enjoining and restraining Beata and anyone acting by, under, or through them, directly or indirectly, from attempting to register the RASCALS Mark and/or the YOUNG RASCALS

Mark or from using, printing, distributing, selling, offering for sale, possessing, advertising, performing under, promoting or displaying in any way the RASCALS Mark and/or the YOUNG

RASCALS Mark without the express permission of either Danelli or Brigati.

WHEREFORE, Defendants demands judgment against Plaintiff as follows:

1. That Plaintiff take nothing by reason of its Complaint;

2. That the Complaint be dismissed in its entirety with prejudice;

3. Declaring that: (i) the Band Members are the owners of The RASCALS Mark and

The YOUNG RASCALS Mark; (ii) Beata has no right to register The RASCALS Mark; and (iii) pursuant to the 1990 Settlement Agreement and 1992 Settlement Agreement, at least three of the

Band Members are required to consent to any Band Members, in any combination, performing as

The Rascals;

4. Awarding damages on Defendants’ Second, Third and Fourth Counterclaims in an amount to be determined at trial;

5. A permanent injunction enjoining and restraining Beata and anyone acting by, under, or through them, directly or indirectly, from attempting to register the RASCALS Mark and/or the YOUNG RASCALS Mark or from using, printing, distributing, selling, offering for sale, possessing, advertising, performing under, promoting or displaying in any way the

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RASCALS Mark and/or the YOUNG RASCALS Mark without the express permission of either

Danelli or Brigati; and

6. Granting Defendants the costs and disbursements of this action, attorneys’ fees and such other and further relief as the Court deems just and proper.

Dated: New York, New York August 23, 2018 MICHAEL B. KRAMER & ASSOCIATES

By: /s/ Michael B. Kramer Michael B. Kramer Peter T. Salzler Attorneys for Defendants- Counterclaimants Danelli & Brigati 150 East 58th Street, 12th Floor New York, New York 10155 (212) 319-0304 [email protected] [email protected]