Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA290711 Filing date: 06/18/2009 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92050366 Party Plaintiff Live Gold Inc., Larry Marshak, and The Five Platters, Inc. Correspondence Michael Machat Address MACHAT & ASSOCIATES, P.C. 9107 Wilshire Blvd., Suite 425 Beverly Hills, CA 90210 UNITED STATES [email protected], [email protected] Submission Opposition/Response to Motion Filer's Name Michael Machat Filer's e-mail [email protected] Signature /MM/ Date 06/18/2009 Attachments LiveGold'sOppositiontoMotionforS.PDF ( 30 pages )(1307073 bytes ) MehlichDeclarationFinalwEPart1.PDF ( 45 pages )(3486996 bytes ) MehlichDeclarationFinalwEPart2.PDF ( 31 pages )(1819678 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matterof trademarkRegistration No. 2796412 For the mark HERB REED AND THE PLATTERS Dateregistered December 23.2003

LARRY MARSHAK, LIVE GOLD INC., THE FIVE PLATTERS,INC.,

Plaintiffs, CANCELLATION NO. 92050366 V.

HERBREED ENTERPRISES, INC.

Defendant.

PLAINTIFFS' OPPOSITION TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

I. Introduction

This proceedingbegins another round of litigation betweenHerb Reedand his

associates,on the one hand, and Larry Marshak,and his associates,on the other hand.

Onceagain, Reed through thosein privity with him, puts forth a StandingArgument to a

requestthat a trademarkregistration of his be canceled. Sevenyears ago, JudgeGershon found of the US District Court for the EasternDistrict of New York disagreedwith Reed,

the Plattersbe that plaintiffs had standing,and orderedhis trademarkregistration for Reed,229F.supp canceled.Marshakv. Reed,200l wL 7gg57l(E.D.N.Y.); Marshakv. Marshakv' 2d l7g(E.D.N.Y. 2002. The Second Circuit Court of Appealsaffirmed' haschanged over Reed87Fed. Appx 208,2004wL 249580(C.A.2 (N.Y.)) Not much

theseven year period, and the rulings from beforeshould remain. There are three separatePlaintiffs in this case,and this Oppositionshall examine eachplaintiff s basisfor standingseparately. Contraryto defendant'sargument, the

Plaintiffs are not inextricably linked so that if one lacks standing,so do the others. Both

Live Gold, Inc. and Lany Marshakhave standingirrespective of whetheror not the corporatestatus of Five Platters,Inc. hasbeen suspended. After establishingtheir standing,we shall then discussthe ramificationsof Five Platters'Inc corporatestatus.

Sincedefendant's motion for summaryjudgment only discussesthe issueof standingand not the otherelementl that Plaintiffs must prove to prevailin this

Cancellationproceeding, Plaintiff-s need only discussthe standingissue as well.

Plaintiffs Live Gold, Inc. and Larry Marshaklook forward to filing their own motion for

SummaryJudgment at a later date in which they will discussand prove up this second element.

II. Liberal Standing Rules As in oppositionproceedings, a Petitionerfor Cancellationneed not proveactual damage.Traditionally, all a petitionerneed show is the likelihoodof damagefrom the

continuingregistration of the mark. GoldenGate Salami Co. v. Gulf StatesPaper Corp.,

332F .Zd.184, 188 (C.C.P.A . 1964)The issuein determiningstanding is not necessarily

whetherpetitioner is entitled to registrationor owns the mark, but ratherwhether the

presumptionsflowing from the registrationare damagingto petitioner'slegal and 1962); continuoususe of that term. Koplin v. Phitlips,133 U.S.P.Q. 622 (T.T.A'B'

(1) it hasstanding; and (2) h,*r.-k-- .u.celr,t* mustprove two elements: that v' Laser Golf that thereare valid groundsfbr cancelingthe registration' C.unningham of the two elementsand Corporation,Z22 y .Sag$, gqS. Stinding ii the more liberal likely to be damagedby requiresonly that the party seekingcancellation believe that it is the registration.Id.

-2- D'Albrerv. Henkel-KhasanaG.m.b.h.., 185 U.S.P.Q. 317 (T.T.A.B. 1975) (exclusrve

U.S.importer who is non-ownerof mark hasstanding.)

The purposeof standingis simplyto weedout "intermeddlers"from thosewith "a personalinterest in the outcomebeyond that of the generalpublic." Golden GateSalctmi

"a Co,supro 332 F.2d 188. A petitionerneed only pleadand prove real commercial interestin its own marks and a reasonablebasis for its belief that it would be damaged."

The requirementsfor standingcan on someoccasions be relatively easyfor anyoneto

"In meet. Ritchiev. OrenthalJames Simpson 170 F.3d 1092. mostsettings, a direct

"real commercialinterest satisfies the interest"test. Herbko International,Inc. v. Kappa

Books,Inc. 308F.3d 1156, I l6l.

A petitionermay asserta likely rejectionof an applicationby the Examiner becauseof the respondent'sregistration which is challengedin the petitionto cancel.In

CerveceriaModelo, s.A. v. R.B.Marco & Sons,Inc.,55 U.S.P.Q.2d 1298,2000 WL

827785(Trademark Trial & App. Bd. 2000)the PTO ex partecitation of a registrationas a bar was held to be sufficient to grantto the applicantstanding to file a petition to cancel that registration.

,,We regardthe desirefor a registrationwith its attendantstatutory advantages as

that one is a legitimatecommercial interest. To establisha reasonablebasis for a belief

a likelihood of damagedby the registrationsought to be cancelled,a petition may assert

here, a rejection of an confusionwhich is not wholly without merit (as in Norac) or, as

applicationduring Prosecution' that appelleeprove Thus, to have standing in this case,it would be sufficient becauseof appellant's that it filed an application and that a reiectionwas made

-3- registration.These facts do not provide a statutory ground for cancellation,but no more is necessaryfor standing." Lipton Industries,Inc. v. RalstonPurina Co.,670

F2d 1024,213U.S.P.Q.185 (C.C.P.A. 1982) (emphasis added)

III. Live Gold,Inc's Standing

The PTO's citation of a registrationas a bar to registrationof a trademark applicant'sproposed mark is sufficientto grantto the applicantstanding to file a petition to cancelthat registration. CervecceriaModelo, S.A. De C.V. v. R.B. Marco & Sons,

Inc., 55 USPO2d 1298,2000WL 827785(Trademark Trial & App. Bd. 2000)

The PTO did in fact site DefendantHerb ReedEnterprises , Inc.'s Registration

No. 2796412 as a bar to resistrationof PlaintiffLive Gold's trademarkapplication for

"The Platters." A copy of the Office Action is attachedto the declarationof Michael

Machatas Exhibit O.

This fact.in andof itself is sufficientto establishstanding for Plaintiff Live Gold,

lnc. Lipton Incluslries,supra at 1029;(lervecceria Modelo, supra.

IV. Larry Marshak's Standing

The Complaint aversthat Larry Marshakobtains income from Live Gold, Inc..

As the declarationof Charlie Mehlich makesclear, Larry Marshakis very actively

involvedwith Live Gold, Inc.'s exploitationof The Plattersmark. Thus,the as presumptionsthat flow from Defendant'sregistration are harmful to Larry Marshak

well asto Live Gold, Inc'

Marshakand Sincethere has beenextensive litigation that hastranspired between

doesnot concedethe Reedover the years,it is odd that defendantin all faimesssimply

mark. Therehave point that Larry Marshakhas a commercialinterest in The Platters

-4- beenat least8 separatejudicial opinionswritten tn Marshakv.Reed. All eightare attachedto this Opposition. The prior casehistory betweenMarshak and Reedamply demonstratesthat Larry Marshakdoes have a direct commercialinterest in this matter.

As the Declarationof Charlie Mehlich makesclear, Larry Marshakcontinues to be involvedin the productionand saleof PLATTERS' shows. A petitioner'sproduction and saleof merchandisebearing the registeredmark is sufficientto demonstratestanding.

Cunninghamv. LaserGolJ'Corporation,222 F .3d 943,945.Thus, both Live Gold, Inc. and Larry Marshakhave standing.

V. The Federal Courts have already determinedthat Larry Marshak (and hencehis assignees)have standing.

Defendantis collaterallyestopped from relitigatingthe mattersit raisesin its motion for summaryjudgment. The 2ndCircuit upheldthe determinationof the United

StatesDistrict Court of the EasternDistrict of the New York that Lany Marshakhas

Reed, rightsin andto the Platters'mark. Marshakv.Reed,2001 WL 92225;Marshakv'

2002)' 2001wL 7gg57l(E.D.N.Y.); Marshakv. Reed,229 F.Supp 2d 179(E.D.N.Y.

Appx 208' The SecondCircuit Court of Appealsaffirmed' Marshakv' Reed87 Fed'

2004wL 249s80(C.A.2 (N.Y.)) purpose .,Collateralestoppel, like the relateddoctrine of resjudicata, has the dual

issuewith the same of protectinglitigants from the burdenof relitigatingan identical needlesslitigation'" party or his privy and of promotingjudicial economyby preventing

(1979).Under the doctrineof ParklaneHosiery co. v. shore,439 U.S. 322,326 "once determinedby a court of collateralestoppel, an issueis actuallyand necessarily in subsequentsuits based on a competentjurisdiction, that determinationis conclusive

-5- differentcause of action involving a partyto the prior litigation." Montana v. United

States,440U.S. 147,153 (1979). To determinewhether collateral estoppel applies, the

"(1) courtmust determine if: the issuenecessarily decided in the previoussuit is identical to the issuesought to be relitigated;(2) therewas a finaljudgment on the meritsof the previoussuit; and (3) the party againstwhom the estoppelis assertedwas a party. or in privity with a party,to the previoussuit." 1r re Joshua,39Cal.App.4th 984, 993 (1995)

(citationomitted).

1. IclenlicalIssues

With respectto the issuespresented, the SupremeCourt hasheld that the court

"first, must determine whetherthe issuespresented by this litigation are in substancethe sameas those resolved [in the prior litigation];second, whether controlling facts or legal principleshave changed significantly since the [prior litigation];and finally, whether otherspecial circumstances warrant an exceptionto the normalrules of preclusion'"

Montana.440U.S. at 155.

In the earlier litigation betweenthese parties which lastedover a period of

six years,Herb Reed arguedthat the Plaintiffs in that proceeding(Larry Marshak,Helen

Williams,Ricky Williams,and The Five Platters,Inc.) had no standingto askthat his

trademarkfor THE PLATTERS be cancelled. JudgeGershon disagreed, and held that

Herb the partiesto that suit did have standing. JudgeGershon, further determinedthat

this, his prior Reeddid not haveexclusive rights to The Plattersmark, and that becauseof

concludedby registrationnumber 2,374,0g6had been issued improperly. Judge Gershon cancelReed's orderingthe Commissionerof the Patentand TrademarkOffice to 799 57 1 registration. Marshak v. Re ecJNotReported in F.supp.2d, 2001 wL

-6- E.D.N.Y.,2001.)',

JudgeGershon in a lengthyopinion, ruled that:

"The plaintiffsfl-arry Marshak,Helen Williams, Ricky Williams andthe Five

Platters,Inc.] thereforeare entitled to declaratoryand injunctiverelief establishingthat

FPI's rights,and the rightsof the otherplaintiffs derived from FPl, to useof the names "The "The Platters"and Tony Williams Platters"are superiorto the rights of defendant

Reed."2001 WL 92225(E.D.N.Y.) at page19.

Live Gold, Inc. and Larry Marshakhave continued to be involved in marketinga groupof vocalistsunder "The Platters"trademark for a considerabletime. In fact, the

Declarationof CharlesMehlich that was attachedto defendantsmotion as Exhibit 1. specificallysays at paragraph6, that: "Live Gold thus managesand promotesthe group knownas "The Platters.Live Gold makespersonnel decisions, handles the group's finances,and generallysupervises the styleand content of the group'sact..."

This paragraphalone establishes Live Gold, Inc.'s standingin this matter. The issuesof who hasa betterclaim, or priority of use,or evenlikelihood of confusionhave not beenput up for debatein defendant'smotion for summaryjudgment. Accordingly, thereis no needfor Live Gold, Inc. or Larry Marshakto debatethose issues here.

In this case,the only changehas been the suspensionof Five Platters'Inc''s corporaterights. But therehave been no significantchanges with respectto Lany

Judge Marshak'srights to the Platters'name that havebeen adiudicated by the Court.

2 Sincethe matters brought before the Board involve matters that previously were Second decidedby theDistrict Court for theEastern District of New York andby the opinionsand CircuitCourt of Appeals,Plaintiffs have attached each of theDistrict Court eachof the2"d Cir;;it opinionsfor theconvenience of theBoard and the parties'

-7- Gershonfound that Larry Marshakhad standingas a resultof agreements,not just with

Fpl, but alsoas a resultof agreementswith PPI andthe Williams. Marshakv.Reed,

2001wL 92225(E.D.N.Y.); Marshakv. Reed,2001 wL 799571(E.D.N.Y.)

Attachedto the declarationof CharlesMehich as Exhibit K is an Injunction issued by JudgeGershon enjoining Reedfrom interferingwith Lany Marshak'suse of the

Platters'name. Attachedto the declarationof CharlesMehlich as Exhibit L is an agreementbetween both Five Platters,Inc. andPersonality Productions, lnc. on the one hand,and Larry Marshakon the other handin which Five PlattersInc and Personality

ProductionsInc agreedamongst other things:

(a) to vacatethe injunction againstTony Williams on behalfof Five Platters,

Inc..

(b) not to interferein any way with the licensegranted by the Estateof Tony "The Williams and HelenWilliams and Ricky William to Marshakto usethe name

Platters"

Also attachedto the Mehlich declaration(as Exhibit M) is a copy of a signed

agreementmodifying Marshak'scommercial anangements with the Williams regarding

..Theplatters,'name. Exhibit N, which is also attachedto the Mehlich declarationshows

to Helen that Lany Marshakmade the final paymenton the Plattersname transfer

Williams,the widow of Tony Williams'

that All of this of courseshows ways in which JudgeGershon had determined There Larry Marshakhad standingto petition for the cancellationof Reed'strademark'

-8 is nothing in the recordthat demonstratesthat Larry Marshak'sposition with standinghas changed. In fact, the tnjunction that was issuedagainst Reed in favor of Larry Marshak "The specificallyprohibits Reedfrom interferingwith Larry Marshak'suse of the name

Platters"and the name"The Tony Williams Platters." (Seeparagraphs 1 and 2 of

Exhibit K attachedto Mehlich Declaration) It seemsthat Reed,by contestingthis cancellationproceeding, has violated the Injunction.

(2) Final Judgmenton the Merits.

Therecan be no doubt therewas a final judgment on the merits. This matterkept bouncingback and forth betweenthe District Court and the 2''dCircuit every time Reed losta ruling beforethe DistrictCourt. The matterended with a ruling that Reed's trademarkregistration be orderedcanceled. Marshukv. Reed,229 F.Supp 2d 179

(E.D.N.Y. 2002);Marshakv.Reed87 Fed. Appx 208,2004wL 249580(C.A.2 (N.Y.))

(3\ Priviry

The recordwithin the TrademarkOffice showsthat DefendantHerb Reed

Enterprises,Inc. is the assigneeof Herb Reed. (SeeDeclaration of Plaintiffs'counsel.

ExhibitP)

Live Gold, Inc. is in privity with Larry Marshak,as they both are with Personality

'Ihere pointedout Productions,Inc. is alsoprivity with Five Platters,Inc' However'as

doesnot contaminate already,the suspensionof the corporatestatus of Five Platters'Inc.

it effect the standingof the corporatestatus of PersonalityProductions, Inc'; nor does

independentstanding to Plaintiffs Live Gold, Inc. and Lany Marshakwho eachhave

maintainthis CancellationProceeding'

-9- Vt. The Five Platters,Inc.'s Corporate Suspensiondoes not affect the

Standingof the other Plaintiffs.

Defendantmistakenly argues that the failure of Five Platters'Inc to maintainits corporatestatus infects the standingof the othertwo Plaintiffs to the extentthat they too would lack standingbecause in Defendant'sincorrect view, they areinextricably linked.

But thatsimply is not the case.

In its motion for summaryjudgment, defendant has attacheddocuments relating to an unrelatedproceeding involving Live Gold in which CharlieMehlich, an officerof

Live Gold, describedvarious ways in which Live Gold obtainedrights in andto The

Plattersmark. Defendanthas chosen to focuson oneof theseways, i.e., via Five

Platters,Inc. andhas ignored the partsit doesnot like. As CharlieMehlich's declarationmakes clear:

"The "Live Gold, lnc. is the assigneeof Platters"mark from Five Platters,Inc.

andPersonulity Productions, Inc. and its individual stockholders,,lean Bennetl,DuvirJ

Kimbatl and Michael Tarr,pursuantto a purchaseand assignmentagreement dated May

4,2006. (Seeparagraph 4 of Exhibit I attachedto Defendant'smotion.) Personality

Productions,Inc. rightsto the Plattersgoes way backto 1954,the dateclaimed as the

dateof first usein Live Gold, Inc.'s trademarkapplication.' U.S. DistrictCourt Judge

' Judg" Real in The Five Platters, Inc. and Personality Productions, Inc. v. Monroe Pov,ell qnd Rowil Entertainment,rn the US District Court in the Central District of CaliforniaCV-98-3712,recognized Personality Productions, Inc. long standingof claim of right to the Platters name when he signed a Judgment stating that: By virtue of "The continuoususe of the mark Platters"for over 43 yearsby Plaintiff Five Platters,Inc. and for over 45 years by Plaintiff PersonalityProductions, Inc., both plaintiffs being owned and controlled by the same person, Jean Bennett, it is hereby adjudged and decreedthat plaintiffs have a good and valid common law trademarkand servicemark in "The Platters" mark. Although this Judgment was overturned on appeal, Plaintiffs

-10- ConsueloMarshall's AMENDED ORDER RE: PLAINTIFF'S MOTION FOR

SUMMARY ADJUDICATIONOF ISSUES,dated April4, 1997,inRobi v Bennett,

U.S.D.C.Case No. CV 9304546CBM confirmsthis whereshe found asa Findingof Fact that PersonalityProductions, Inc was the sameas Five Platters,Inc. (A copy of this

Rulingis attachedto the Mehlich Declarationas Exhibit B.)

Also, as statedby JudgeGershon in Marshakv. Reed2001 WL 92225(E.D.N.Y.

"FPI 2001)at the secondpage of the opinion, and PPI alsogranted to Marshaka license to usethe name'The Platters'.Marshak predicates his rightsupon his agreementswith

FPI andwith the Williams plaintiffs." The opiniondescribes in furtherdetail how

Marshakhas obtained rights to "The Tony Williams Platters".

VII. Only if the Board believesthat all three Plaintiffs are inextricably linked so that the standing of Five Platters,Inc. affectsthe standing of the others, then the other Plaintiffs seeka continuancepursuant to Fed R.C.P. 56f to obtain a Certificateof Revivor from the RelevantCalifornia Authorities.

In Plaintiffsview, this CancellationAction canproceed without the presenceof

Five Platters,Inc, who admittedlyis presentlysuspended from doingbusiness and from prosecutinga lawsuitor defendingagainst one. Althoughcurrently suspended, Five

Platters,Inc. may revive its corporatestatus and then seekcancellation of defendant's

registration

"The referencethis casebecause it demonstratesthe long claim of usageof Platters"by PersonalityProductions, Inc. Defendantsare of coursevery familiar with this case. The case was reversedon appeal - for reasonshaving nothing to do with the standingof PersonalityProductions, Inc. Reed unsuccessfullyattempted to argue he had exclusive rights to The Plattersmark basedupon a remandorder. Reedmade this argumentbefore the District Court for the EasternDistrict of New York, and to the 2ndCircuit Court of Appeals, and was rebuffed. Marshak v. Reed, 229 F.Supp 2d 179 (E.D.N.Y. zooz);uorthakv. Reed87 Fed.Appx 208,2004WL 249580(C.A.2 (N.Y.))

-11- "A taxpayerwhich has had its corporatepowers suspended may be relievedfrom suspensionif it paysthe taxes,penalties and interest owed. Once payment has been made. the FranchiseTax Boardissues a certificateof revivor. The certificateof revivor is prima facie evidenceof reinstatement.The legal rights of a suspendedcorporation are then revived,as an unconsciousperson is revivedby artificial respiration." Benlon v. County of Napa,226Cal. App. 3d 1485,1490;277 Cal. Rptr. 541 ,544 (1991)citing Diverco

Constructors,Inc. v. Wilstein(1970) 4 Cal,App.3d6. 12.85 Cal.Rptr.85l. andRev.&

Tax.Code QQ 23305. 23305a)

"On issuanceof this certificate,the taxpayerbecomes reinstated, without prejudiceto any action,defense or right accruingby reasonof the originalsuspension."

Bentonv. County.supra at 1490citing Rev.& Tax.Code,$ 23305a.

"lf it pays its taxesand obtainsa certificateof revivor during the pendencyof an

action,the corporationmay be allowed to carry on litigation, evento the extentof

validatingotherwise invalid prior proceedings.The purposeof the suspensionof

corporatepower is to inducethe paymentof taxes.That purposeis ordinarily satisfiedby

a rule viewing a corporation'stax delinquencies,after correction,as mere irregularities.It

accomplisheslittle to imposeadditional penalties after the taxeshave been paid." 1d.

(cilationsomitted.)

Wherethe complaint is viable, it is an abuseof discretionto deny the

corporation'srequest for a continuanceof trial in order to pay delinquenttaxes and obtain

a certificateof revivor.Color-Vue, Inc. v. Abrams(1996) 44 CA4th 1599,1606, 52 CR2d

443.447

-12- Becausethere are two other Plaintiff s in this cancellationproceeding other than

Five Platters,Inc., that do not havethe sameprocedural problems as Five Platters,Inc.,

Plaintiffs do not believeit is urgentfor Plaintiffs to seeka continuancein order to revive the corporatestatus of Five Platters,Inc. As discussedthroughout this oppositionpaper, both Live Gold, Inc. and Lany Marshakhave standingregardless of Five Platters,Inc. If, however,the Board is inclined to think differently,then the Plaintiffs respectfullyrequest a continuanceof this proceedingto allow Five Platters,Inc. time to obtaina certificateof reviver.

VIII. Conclusion

As demonstratedherein, the factsclearly show that Plaintiffs Live Gold, Inc. and

Larry Marshakhave standing. Becausethe completefile for the subjectregistration is

not presentlyavailable to Plaintiffs, Plaintiffs will deferuntil a later time their filing of

their motion for summaryjudgment. In the meantime,for all the reasonsdiscussed

herein,Plaintiffs respectfullyrequest that defendant'smotion for summaryjudgment be

denied.

In the altemative,Plaintiffs seeka continuanceto enableit to revive the corporate

statusof Five Platters,Inc.

Dated:June 18,2009 Respectfullysubmitted for Plaintiffs,

MACHAT & ASSOCIATES,P.C

9107Wilshire Blvd.,Suite 425 BeverlyHills, CA 90210 Tel: (310)860-1833

- 13 - CERTIFICATE OF SERVICE

I herebycertify that on June 18, 2009,I servedthe foregoingPlaintiffs' Oppositionto Defendant'sMotion for SummaryJudgment by mailing a copy thereofby electronicmail andby first classmail, postageprepaid, to opposingcounsel, Thomas J. Donovan.Esq.,900 Elm Street,P.O. Box326, Manchester, New Hampshire03105 r\\ MichaelMachat Attomeyat Law Machat& Associates,P.C. 9107Wilshire Blvd.,Suite 425 BeverlyHills, CA90210 Tel:(310) 860-1833

-14- IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matterof trademarkRegistration No. 2796412 For the mark HERB REED AND THE PLATTERS Dateregistered December 23,2003

LARRY MARSHAK, ) LIVE GOLD INC., ) THE FIVE PLATTERS,INC., ] ) Plaintiffs, CANCELLATION NO. 92050366 v.

HERB REED ENTERPRISES,INC.

Defendant.

DECLARATION OF MICHAEL MACHAT IN SUPPORT OF PLAINTIFFS' OPPOSITION TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

MICHAEL MACHAT. herebvdeclares and statesthat:

l. I makethis declarationupon my own knowledgeand if calledto testify,I couldtestify competently as follows:

2. I am an attorneyand memberof the StateBars of California and New

York. I am admittedto practicebefore the StateCourts in both New York and

California.and the US District Court of the CentralDistrict of California,the Ninth

Circuit Court of Appeals,and the United StatesSupreme Court. I am the attomeyfor

Plaintiffs in this case.

3. Attachedto this Declarationas Exhibit O is a true and correctcopy of an

Office Action I receivedon behalf of my client Live Gold, Inc. relatingto their trademark "THE applicationno.77637095 for the mark PLATTERS." 4. Attachedto this Declarationas Exhibit P is a true and correctcopy of a printout from the USPTO websiteof the TrademarkAssignment Abstract of Title for trademarkregistration number 2796412,the mark subjectto cancellation. The record showsthat Herb Reedassigned the mark to Herb ReedEnterprises, Inc.

5. I respectfullyrequest that the Boardtake Judicial Notice of its own records with respectto registrationnumber 2796412for HERB REED AND THE PLATTERS and with respectto trademarkapplication number 77637095for THE PLATTERS and that theybe admittedinto evidenceas an official records,TBPM $52s.05(e).

6. The documentsattached to the Declarationof CharlesMehlich labeledA,

B, C. D. E. F, G. H, I, J, and K areall copiesof Court Rulingsand therefore admissible alsoas official records.The documentsattached to the Mehlich Declarationlabeled L. M andN arebusiness records.

7. I objectto the Introductionof Defendant'sExhibit 3 into evidenceon the groundsof Hearsay. As the Declarationof CharlesMehlich makes clear. Jean Bennett is not a principal of Five Platters,Inc. Her letter is not an admissionof a party opponent,as defendantcontends. Insteadit is Hearsay.

I declareunder penalty of perjury pursuantto the laws of the United Statesof

Americathat the foregoingis true and correct.

Datedthis l Sthdav of June.2009

Michael Machat E,XHIBITO To: LIVE GOLD INC. (michael(dmachatlaw.com)

SUbJCCt: TRADEMARK APPLICATIONNO. 77637Og5 . THE PLATTERS- N/A Sent: 31151200912:23:A3 PM SentAs: [email protected] Attachments: Attachment- I Attachment- 2 Attachment- 3 Attachrnent- 4 Attachment:5

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 171631095

MARK: THE PLATTERS *77637 095 * CORRESPONDENTADDRESS : MICHAELMACHAT RESPONDTO THIS ACTION: MACHAT& ASSOCIATES,P.C. http://www.uspto.gov/teas/cTEASpascD.htnr 9I07WILSHIRE BLVD STE 425 BEVERLYHILLS, CA90210-5550 GENERALTRADEMARK TNFORMATTON: httrr: //wwrv. uspto. gov/main/trademarks. htm

APPLICANT: LIVEGOLD INC.

CORRBSPONDENT'S REFERENCE/DOCKETNO: N/A CORRESPONDBNTE-MAIL ADDRESS: [email protected]

OFFICE ACTION

TO AVOID ABANDONMENT, THE OFFICEMUST RECEIVEA PROPERRESPONSE TO THIS OFFICEACTION WITHIN 6 MONTHS OF THE ISSUE/MAILINGDATE.

ISSUE/MAILING DATE: 3/| 5/20(f{)

The referencedapplication has been reviewed by the assignedtrademark examining attorney' Applicant mustrespond timely and completely to theissues below. 15U.S.C. $1062(b); 37 C.F.R.$$2.62, 2.65(a);TMEP ggT l 1,71 8.03.

SECTION 2(d) REFUSAL _ LIKELIHOOD OF CONFUSION

Registrationof theapplied-for mark is refusedbecause of a likelihoodof confusionwith themark in U.S.Registration No. 2796412.Trademark Act Section2(d), 15 u.s.C. g1052(d); see TMEp SSl207.0let seq. Seethe enclosed registration.

TrademarkAct Section2(d) barsregistration of an applied-formark that so resemblesa registeredmark thatit is likely thata potentialconsumer would be confusedor mistakenor deceivedas to thesource of thegoods and/or services of theapplicant and registrant. See l5 U.S.C.$1052(d). The courtin In re E. I. du Pontde Nemours& Co.,476 F.2d 1357, 177USPQ 563 (C.C.P .A. 1973)listed the principal factorsto be consideredwhen deterrnining whether there is a likelihoodof confusionunder Section 2(d). SeeTMEP $1207.01 . However,not all of thefactors are necessarily relevant or of equalweight, andany one factor may be dominantin a givencase, depending upon the evidenc e of record.In re MajesticDistilling Co.,315 F.3d 13 I l, 1315,65 USPQ2d1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont,416 F .2d at 136l-62,177 USPQ at 567.

Takinginto accountthe relevantdu Pontfactors, a likelihoodof confusiondetermination in thiscase involvesa two-partanalysis. The marksare compared for similaritiesin theirappearance, sound, connotationand commercial impression. TMEP $$1207.01 , 1207 .01(b). The goodsand/or services are comparedto determinewhether they are similar or colnmerciallyrelated or travelin the sametrade channels.See Herbko Int'1, Inc. v. KappaBooks, |nc.,308 F.3d I156, I164-65,64USPQ2d 1375, 1380 (Fed.Cir.2002),HanBeauty,Inc.v.Alberto-CulverCo.,236F.3d 1333, 1336,57 USPQ2d 1557,1559 (Fed.Cir. 2001); TMEP $$1207.01, 1207.01(a)(vi).

COMPARISON OF THE MARKS

Thequestion is not whetherpeople will confusethe marks, but whetherthe marks will confusepeople intobelieving that the goodsand/or services they identifo come from the samesource. In re West Point-Pepperell,lnc.,468 F.2d 200,201, 175 USPQ 558,558-59 (C.C.P.A. 1972). TMEP $1207.01(b). For thatreason, the test of likelihoodof confusionis not whetherthe marks can be distinguishedwhen subjectedto a side-by-sidecomparison. The questionis whetherthe marks create the sameoverall impression.See Recot, Inc. v. M.C.Becton,2l4 F.2d I 322,1329-30,54 USPQ2d 1894, 1899 (Fed. Cir. 2000);Visual Info. Inst., Inc. v. ViconIndus. lnc.,209 USPQ 179,189 (TTAB 1980).The focusis on the recollectionof the averagepurchaser who normallyretains a generalrather than specific impression of trademarks.Chemetron Corp. v. Mnrris Coupling& ClampCo.,203 USPQ 537,540-41(TTAB 1979);Sealed Air Corp.v. ScottPaper Co.,190 USPQ 106, 108 (TTAB 1975);TMEP S1207.01(b).

In a likelihoodof confusiondetermination, the marksare compared for similaritiesin their appearance, sound,meaning or connotationand commercialimpression . In re E. I. du Pont de Nemours& Co.,476 (b). In thiscase, the F.2d 1351,1361, I 77 USPQ 563,567 (C.C.P.A. 1973); TMEP $1207.01 "THE "HERB THE applicant'sproposed mark is PLATTERS," andthe registrant'smark is REED AND pferrgns.,,The parties'marks are considered highly similar in that the registrant'smark containsthe "THE wording"THE PLATTERS,"and the applicant'smark consists of thewording PLATTERS." of Saidwording is identicalin sound,appearance and commercial impression. Similarity in anyone theseelements may be sufficientto find a likelihoodof confusion.In re l4rhiteSwan Ltd.,8 Uspe2d 1534,1535 (TTAB 1988); In reLamson Oil Co.,6USPQ2d 1041,1043 (TTAB 1987); see TMEP s1207.01(b).

COMPARISONOF THE SERVICES

The goodsand/or services of theparties need not be identicalor directlycompetitive to find a likelihood ofconfusion.See SaJbty-KleenCorp.v.Dresserlndus., Inc.,518F.2d 1399,1404, l86USpe 476,480 (C.C.P.A.1975); TMEP $1207.01(a)(i). Rather, they need only be relatedin somemanner, or the conditionssurrounding their marketingare such that they would be encounteredby the samepurchasers undercircumstances that would give riseto themistaken belief that the goods and/or services come from a coffImonsource. In re TotalQuality Group, Inc.,5l USPQ2d1474,1476 (TTAB 1999);TMEP $1207.01(a)(1);see, e.g., On-line Careline Inc. v. Am. Online lnc.,229 F.3d 1080, 1086-87, 56 USPQ2d 147|, 1475-76 (Fed. Cir. 2000);In re Martin'sFamous Pastry Shoppe, Inc.,7 48 F.2d I 565,I 566-68, 223USPQ 1289,1290 (Fed. Cir. 1984).

"entertainment The registeredmark is usedin connectionwith servicesrendered by a vocaland instrumentalgroup" in InternationalClass 41, andthe applicant's mark is usedin connectionwith "entertainment servicesin thenature of live musicalperformances" in InternationalClass 4l . The parties'services are virtually identical in thatboth parties' seryices consist of theentertainment in the natureof musicalperformances. Consequently, consumers are likely to be confusedas to thesource of theregistrant's services and the applicant'sservices and believe that the services emanate from a commonsource. Based on the foregoing,registration is refused.

NOTE: Registrationhas been refused under Section 2(d) of theTrademark Act, l5 U.S.C.S 1052(d), basedon thecited registration. However, it is notedthat the applicant has filed CancellationNo. 92050366in connectionwith the citedregistration. Therefore, in lieu of respondingto thelikelihood of confusionrefusal, the applicantmay, in its discretion,request that this application is suspendeduntil the examiningattorney can determine whether the cited registration will be cancelled.37 C.F.R52.67; TMEP$716.02(e).

POTBNTIALLY CONFLICTING PENDING APPLICATIONS

The Office recordshave been searched and no similarregistered mark hasbeen found that would bar registrationunder Trademark Act Section2(d), l5 U.S.C.$ 1052(d). TMEP $704.02'However, please be advisedthat potentially conflicting marks in prior-filedpending applications may presenta barto registration.

The Infomrationregarding pending Application Serial Nos. 771548792 and771587055 is enclosed. be a likelihoodof filing datesof itrereflrenced appii.ations precede applicant's filing date' Theremay marks. If confusionunder Trademark Act Sectionz(d; betweenapplicant's rnark and the referenced in this caseunder oneor moreof the referencedapplications registers, registration may be refused entryof a responseto thisoffice section2(d). 37 C.F.R.$2.83; TMEP $$l20a et seq. Therefore,upon the earlier-filedapplications' action,action on this casemay be suspendedpending final dispositionof the earlier-filed If applicantbelieves that thereis no potentialconflict betweenthis applicationand responseto this Office applications,then applicant may presentarguments relevant to the issuein a action' The electionnot to submitarguments at this time in no way limits applicant,sright to address thisissue at a laterpoint.

n SUBMIT FEE

TEAS Plus applicantsshould submit the fotlowingdocuments using the Trademark Electronic ApplicationSystem (TEAS) at http:i/*w*.uspto : (l) writtenresponses to Office actions;(2) preliminary amendments;(3) changesot.*r.rpondence address;(4) changesof owner's address;(5) appointments andrevocations of attorney;(6) amendmentsto allegeuse; (7) statementsof use'(8) requestsfor extension of time to file a statementof use,and (9) r.qurJ, to deletea gl(b) basis. If anyof thesedocuments arefiled on paper,they must be accompaniedby a $50per class fee. 37 c.F.R. 992.6(a)(l)(iv)and 2.23(a)(i). Telephone responses will not incuran additional fee. NorE: In additionto theabove, applicantmust also continue to acceptcorrespondence from theOffice via e-mail throughoutthe examination process in orderto avoidthe additional fee. 37 C.F.R. 52.23(a)(2).

/SonyaB. Stephens/ TrademarkAttorney Law Office 109 (571)272-9352phone (571)273-9109fax* *fax no. for officialresponses only

RESPONDTO THIS ACTION: Applicantshould file a responseto thisOffice actiononline using the form at httrr://ww'"v.uspto.qov/tcas/cTEASrraseD.htrn,waiting 48-72hours if applicantreceived notificationof theOffice actionvia e-mail. For technicalassistance with the form,please e-mail TEAS(iDuspto.qov.For questionsabout the Office action itself, please contact the assigned examining attorney.Do not respondto this Office actionby e-mail;the USPTO doesnot accepte-mailed responses.

If respondingby papermail, pleaseinclude the following information: the application serial number, the mark,the filing dateand the name,title/position, telephone number and e-mail addressof the person signingthe response. Please use the followingaddress: Commissioner for Trademarks,P.O. Box 145l, Alexandria,V A 22313- 145 L

STATUS CHECK: Checkthe statusof theapplication at leastonce every six monthsfrom theinitial filing dateusing the USPTOTrademark Applications and Registrations Retrieval (TARR) online systemat http://tam.uspto.gov.When conductingan onlinestatus check, print and maintaina copy of the completeTARR screen.If the statusof your applicationhas not changedfor more thansix months, pleasecontact the assigned examining attorney.

Print: Mar {5,200$ 750t3503

TYPETIDRAI,\flNG Serial Nurnber ?5023503

Status CA}ICELI.AT ION PEhIDING

Word Mark HERBREED AND THE PLATTERS

Standard C haracnberM ark No

RegisilrationNurnher 2't 964L2

Ilate Registered 2003/12/ 23

Typeof Mark SERVICE MARK

Register PRINCIPAL

Mark Drawing Gode (1) TYPED DRAWING

Ourner A\rE HERB REED ENTERPRISES. INC- CORPORATION DELAWARE 990 I'1ASS ARLINGTON MASSACHIJSETTS 0247 6

Goods/Services G t S: Class Status -_ ACTII.IE. IC 041. US 100 101 10?. GROUP' ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMtrNTAL Flrst Usel 1969/00/00. Flrst use In Commerce: l-969/00/00'

Filing Date t99s / 1-1-i24

Eramining AftomeY HERMAN RUSS

Attomey of Rocord Mark A. I{rigLrf-

-t- Print: Mar'15,200S 775t€7S2

DESIGNMARK Serial hlurnber '7'154 8? 92

Status NON-FINAL ACTIOI{ - MAILEtr

Word Mark BRANSON'S WORLD FAMOUS PLATTERS StandardG haracter M ark Yes

Type of Mark SERVICE MARI{

Register PRINCIPAL

Mark Drawing Code t41 STANDARD CHARACTER MARK Ovuner Ree Doo LLC LIMITED LIABILITY COMPANYMISSOURI 225 Ho-Hum Trail Holl.ister MISSOURI 16551-t

Goods/ServiceE class status -- ACTIVE. IC 041-, U3 100 1-01-1-0?, tl & s; Entertainlnent in the nature or rij.sual and au,3io perrornance6r and the rnusical-, variety, newe and cornedy shows; Entertainment services irt rnusic nature of Ii,ve irusical performanceF; Entertainrnent, narnely, live a rnusical banc" concerts; Entertainrnent, narnely, Iive perforrnances by First use: 1996/08/16- First use Irr Colffnerce: 1996/08/16-

Filing Date zooe/08/16

Eramining AttomeY COWARD. KATHRYN

Attomey of Recod Nancy Lord

-t- Brau$olt's V/orl d Famous Flatter$ Prinl: Mar'15,2000 77587055 lsaue: 0000rD0/00

DESIGN MARK Serial Nurnber ?? 58? 0ss

Status PUBLISHED FOR OPPOSITION

Word Mark WILSON WILLIAMS E HIS PLA.TTER3 StandardC haracter M ark Yps

Type of Mark SER\TICE MARI(

Register PRINCIPAL

Mark Drawing Code (4 ] STANDARD CFTARACTER MARK

OtrUner Wilj arn Entertainrnent LIMITED LIABILITY COMPANYFLORIDA 2025 El- Cerito Ct. Punta Gorda FLORIDA 33950

Goods/ServiGes Cfass Status -- ACTIVE ' rc 041-, us l-00 101 1-0?' G & 8; Entertainment 6ervi'ce8 in the nature of Iive mu6icaL performanceai Entertai-nment, narnelY' live music concerts. First Use: 1-996/06/02' First Use In Cornrnerce; 1,9e6/06/ 02.

Nama/PortraitStatemgnt whose The name "Wilson Williarns" identifies a Iiving individual consent is of record'

Filing llate 2008/10/ 0?

ErarnlnlngAttomey KHOURI r SAI'JI

,'l - Wi lsnn Wi lliarns& Hi s Platters To: LIVE GOLD INC. (michael(d,machatlaw.com) Subject: TRADEMARKAPPLICATION NO. 77637095- THE PLATTERS- N/A Sent: 31151200912:23:06 PM SentAs: [email protected] Attachments:

IMPORTANT NOTICE USPTO OFFICE ACTION HAS ISSUEDON 3/15/2009FOR APPLICATION SERIAL NO. 77637095

Pleasefollow the instructionsbelow to continuethe prosecutionof your application:

VIEW OFFICE ACTION: Click on this link http:i/tmportal.uspto.gov/external/portal/tow?DDA:Y&serialnumber:77637095&doc tvpc:OOA{ (or copy and paste this URL into the address field of your browser), or visit http://tmportal.uspto.gov/external/portal/tow and enterthe applicationserial number to acccss the Office action.

pLEASE NOTE: The Office actionmay not be immediatelyavailable but will be viewablewithin 24 hoursof thisnotification.

(1) if RESpONSEMAy BE REeUIRED: You shouldcarefully review the Office actionto determine period. response a responseis required;(2) how to respond;and (3) the applicableresponse time Your deadlinewill be calculatedfrom 3/15/2{}09.

your response'as Do NOT hit ,,Reply"to this e-mail notification,or otherwiseattempt to e-mail recommendsthat you the USpTO Ooesliot accept e-mailed responses.Instead, the USPTO response form at respond online using the Trademark Electronic Application System http://www. uspto'q ov/teas/eTEASpaqeD' htm'

HELP: Fortechnical assistance in accessingthe Office action, please e-mail with questionsabout the Office [email protected]. pleasecontact the assignedexamining attorney action.

WARNING officeaction attached. l. Theuspro will Nor senda separatee,mail with the deadlinewill result in 2. Failure to file any required responsetly the applicable the ABANDONMENT of your application' EXHIBITP USPTOAssignments on the Web Page1 of 1

United$tat*s $:mten{ end TradernarkCIffice

HonrelSite Ind*x l$earcil lfrrrid*s lCcr^rtact*leBr,r*iness le$iz *l*l't* | ruew*| f-ielp

Assignmentson theWeb > Trademark Query Trademark Assignment Abstract of Title

Total Assignments: 1 Serial #: 75023503 Filing Dt: Ir/24/r995 Reg #: 2796472 Reg. Dt: 12/23/zoo3 Registrant: Reed, Herb MaTK: HERBREED AND THE PLATTERS Assignment: 1 Reel/Frame: 3624/0677 Received: 09/18/2Oo7 Recorded: 09/77/2OO7 Pages: 3 CONVEYANCE:ASSIGNS THE ENTIREINTEREST Assignor: REED,HERB Exec Dt: 09/r7 /2oo7 Entity Type: INDIVIDUAL Citizenship: UNITEDSTATES

Assignee: HERBREED ENTERPRISES, INC. Entity Type; CORPORATION 990 MASSAVE Citizenship: DELAWARE ARLINGTON,MASSACHUSETTS 0247 6

Correspondent: GAIL STEWART 666 MAIN ST #303 WINCHESTER,MA O1B9O

Search Results as of: 06/18i2009 03:05 PM aI571-272'3350 lt Vou have any comments or questions concerningthe data displayed,contact PBD / Assignments Web interlace last modifiedrOctober 18,2008 v 2 0 2

| .HOMEI |NDEXISEARCH I eBUSINESSI CONTACTUSI PRIVACYSTATEMENT

=27 611812009 hup://assignments.uspto. gov/assignments/q?db:tm&rno 9 6412 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARI)

In the matterof trademarkRegistration No. 2796412 For the mark HERB REED AND THE PLATTERS Dateresistered December 23.2003

LARRY MARSHAK, LIVE GOLD INC., THE FIVE PLATTERS,INC.,

Plaintiffs, CANCELLATION NO. 920s0366 v.

HERB REED ENTE,RPRISES,INC.

Defendant.

DECLARATION OF CHARLES L. MEHLICH IN SUPPORT OF PLAINTIFFS' OPPOSITION TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

CHARLES L. MEHLICH, herebydeclares and states that:

l. I make this declarationupon my own knowledgeand if calledto testify, I

could testify competentlyas follows:

2. I am an ownerand officer of Live Gold, Inc.,one of the Plaintiffsin this

Oppositionto case. I respectfullysubmit this declarationis supportof Live Gold, Inc.'s

Defendant'sMotion for SummaryJudgment in this matter' sellsvarious 3. Live Gold, lnc. produces,markets, advertises and otherwise

singelsin variousvenues productionsfeaturing the live musicalperfonnances of vafious

we marketfeatures a group of throughoutthe United States. One of the showsthat

"The an ongoing show in Las Vegas' singersthat are advertisedas Platters." We have "The group, Platters"' That show' Nevadaat the SaharaHotel, that featuresour musical 'THE featuringLive Gold, Inc.'s group, PLATTERS" is now the longestrunning show in

Las Vegas. That showhas been ongoing since at least1998 continually, and on occasionalbasis, for over 30 years.

4. Live Gold, Inc has obtainedits right to promote,advertise and otherwise exploitTHE PLATTERS mark in connectionwith entertainmentservices from various sources,including Personality Productions, Inc., and their then current shareholders at the time: JeanBennett, David Kimball, andMichael Tarr aswell asby agreementthrough

Larry Marshak.

5. At the time Live Gold, Inc. obtainedthe trademarkrishts and stock of

PersonalityProductions, Inc., it wasmy understandingand belief (andit still is my understandingand belief) that PersonalityProductions, Inc. had beenusing the Platters trademarksince at least1954, under the directionof JeanBennett and Buck Ram. I base my beliefon conversationswith JeanBennett, numerous contracts and legaldecisions, as well asupon a copy of a Judgmentobtained by PersonalityProductions against Monroe

"By Powell. That Judgmentspecifically states that, virtueof continuoususe of the mark

"The Platters"for over 43 yearsby Plaintiff Five Platters,Inc. and for over 45 yearsby

PlaintiffPersonality Productions, Inc., both plaintiffs being owned and controlled by the

sameperson, Jean Bennett, it is herebyadjudged and decreedthat plaintiffs have a good "The and valid common law trademarkand servicemark in Platters"mark.

6. I am of courseaware that this Judgmentwas ultimately overturnedon

the partiesto appealthat was unrelatedto the first useof PersonalityProductions and that becauseit that lawsuit settled. However, I maintainthe documentas part of our files sinceat documentsthat PersonalityProductions, Inc. hasbeen using the Plattersmark leastI 954- 45 yearsprior to the dateof the Judgmentas well as on the basisof Five

Platters,Inc. beingan alterego to PersonalityProductions, Inc.

7. As businessesnormally do, we maintainfiles at Live Gold thatrelate to the procurementof our rights to the namesto eachmusical group that we represent, manage,promote or are otherwiseinvolved with. lncluded in thoserecords is a copy of the abovereferenced Judgment in favor of PersonalityProductions, Inc. I haveattached a true and correctcopy of that Judgmentas Exhibit A.

8. I havealso attached a copy of JudgeMarshall's 1997 Amended Order Re:

Plaintiff s Motion for SummaryAdjudication of Issuesas Exhibit B. We keepthis Order in our files becauseit is my understandingthat at paragraph6 of the Findingsof Fact,

JudgeMarshall finds that PersonalityProductions, Inc is essentiallythe alter ego of Five

Platters.Inc.

9. It is also my understandingthat Buck Ram is the songwriterthat wrote

most of the hit songsthat were sungby a group of five peoplethat recordedunder the

name, "The Platters." He also managedtheir careerat its inceptionand producedmany

of theirhit records. It is commonknowledge that Tony Williams wasthe leadsinger of

The platterson eachof The Plattersmost well known hits, including WhenSmoke Gets in

your Eyes,The Great Pretender,Twilight Time,Only You. andmany more' I may be on any mistaken,but it is my understandingthat Herb Reed'svoice cannotbe discerned

"The Platters"mark' By major hit songreleased by a major recordcompany under the

Tony williams' contrast,it is impossiblenot to noticethe soaringtenor of

it is far more valuablefor a 10. In my opinion, and in my company'sopinion,

to evoke nostalgiato companyin the businessof marketingmusical services designed havean associationwith the soaringvoice of the tenor,Tony Williams, than to be associatedwith one of Tony Williams' backupsingers. The samecan be saidfor associatingoneself with the man that wrote and producedmany of the Platters'greatest hits and managedtheir careerat the outset. That's why it hasbeen our corporatestrategy to acquirethe rightsto usethe nameThe Plattersthrough lead singer, Tony Williams,and the songwriter,Buck Ram.

1l. In additionto acquiringrights to THE PLATTERS mark from Personality

Productions,Inc, and Five Platters,Inc., Live Gold, Inc. alsohas obtained rights to use

THE PLATTERSmark as a resultof a seriesof confidentialagreements it hasmade with

Lany Marshak.

12. Larry Marshakhas a relationshipwith Live Gold, Inc wherebyhe is consultedon the look, feel,sound and production of the showsthat are marketed under variousmarks, including "THE PLATTERS" mark. Priorto his associationwith Live "THE Gold, Inc., it is my understandingthat Lany Marshakhad obtainedrights to

PLATTERS"maTk from The Tony Williamsestate, Helen Williams andRicky Williams.

I basemy understandingof this not just on conversationswith Larry Marshak,and the documentswhich he presentedto me, but alsoupon my examinationof the Rulings in

Marshak v. Reed,all of which are kept in our files as businessrecords. A copy of each of theserulings is attachedto my declarationas Exhibits C, D, E, F' G, H, I, andJ.

13. Includedin the files thatwe keepin the normalcourse of our businessthat

relateto the rights of Live Gold, Inc. to marketand exploit THE PLATTERS mark in granted connectionwith live musical performancesare the following: (i) an injunction

by US District Court JudgeNina Gershonin favor of Lany Marshakand the Williams' '6Dl/ JLn,lB2f09 i" R,C,l'/oore No,925lP,t

lanrilyagainst Hcrb Reed;(ii) an agrcementbetween Fivc Platters,Inc and Personality

Prtrtluctions.lnc on lhc onehand and Larry Marshak on theother hand that removesall

legalblocks that cxisted at thetime thatmay havc provented Larry Marshakfrom using

therights he acquiredfiom The Williamsfamily to the Platters'mark: (iii) an amcndnrcnl

of thellccnse agreement previously entered into among Ricky Williams. Hclcn Willianrs

andLarry Marshak conccrning the Platters'nanre; and (iv) an tcknowledgernentof

paymentfrom I'lelenWilliams, Tony Williafirs'wiclow, lbr thelull unf'ettereclrigtrts tu

uscthe Plattcrs' tlamc. Each ol'these documents are attached to thisdeclaration as

F.xhibitsK, 1..M andN respectively,

14. Lastly,I notethat Jcan Bennett has written a letterthat has bcen attached

to dcfcndant'sopposition a$ an exhibit. As a rcsultof the trunsactionsentcrcd into

betwccnLivc Goldand Jean l3ennett, l)ersonality Productions. Inc., and Fivc Platters,

Inc..Jcan Bcnnett is not a shareholder,nor is shean officer.nor directorof Five Plattcrs,

lnc. Her invOlvcmcntwith Five Platters,lnc. is now purelya rnatterof history' In my

is unl'otlttnately opinion,her rambling lcttcr supportsmy belicfthat at the ageof 85, she

sufteringfronr scnil itY' statcsof I declareunder penalty of perjurypursuant to the lawsof the United

Americathat the foregoingis true andcorrect'

Datcdthis l SthdaY of Junc,2009

CharlesL. Mchlich E,XHIBITA 2:9&cv-03212-R-BeRCJ Document Filed pagg fr01 10/08/1999. 1 of 3

t I 2

i J

4 ENTERED CLERK,U.S. DISTRICT 5

6 oclI

1

8 LINITEDSTATES bTSTTCT COI.IRT 9 CENTRATDISTRICT OF CAIIFORMA 10 Tm FIVEPLATTERS, INC.,and CASENO, CV-98-j7t2R(BQRX) ll PERSONATITYPRODUCTIONS, INC., JUDGMENTAND FINAL INJI]NCTION t2 Plaintiffs, l3 v. t4 MONROEPOWELL and ROWIL ENTERTAINMENT N0ilcE l5 l,:ls^ggNsT'TUTESAS 0FENrRy Defendants. ' REQUIREDE'iFRCE RUii iilii,, l6 ) 17 Thiscause came to be heard before the Court, sitting without a jury, on August i l, Dgg, l8 andMichael Machat appearing for plaintifls and Richard Fannan appearing for defendants; and l9 theCourt having heard and considered the arguments and briefs of counsel,NOW 20 THEREFORE,it is ORDERED,ADJUDGED AND DECREED that ptaintiffs shall take 2l judgmentagainst defendants, and each of them,and further that:

22 1. Thiscourt has jurisdiction over the parties and the subject matter. "The 23 2. By virtueof continuoususe of themark Platters"for over 43 years by Plaintiff Five

24 Platters,Inc. and for over 45 years by Plaintiff Personality Productions, Inc., both

25 plaintiffsbeing owned and controlled by the same person, Jean Bennett, it is hereby r: :1. 'ddjir't[ed..r''':t' anddecreed that plaintiffs have a good and valid common law trademuk and :T[D servicemark in "ThePlatters" mark. PYPi".J pefendants, ,lliUt andeach of them,have infringed the above identified nark by holding Ca 2:98-cv-03712-R-BQR Document101 Filed10/0811999 ..Pagq Zof 3

. s. "The I it trnselvesout as, performing as,and advertising as platters,"and by selling

2 entertainmentrelated merchandise such as records, photos, clothing, etc. as,,The

a J Platters,"and by doingso have engaged in actsof unfaircompetition against plaintiffs. . 4 4' Insofar asdefendants, or anyof them,have asserted rights against plaintiffs, said claims 5 of defendantsare denied. 6 5. Defendants,and each of them,and each of theirofficers, agents, servants and employees, 7 andall thosepersons in activeconcert or parlicipationwith themwho receive a6ual or 8 constructivenotice of thisJudgment, ur. h.rrby enjoinedand restrained from using the "The 9 mark Platters"or anysimilar mark or variationlikely to causeconfusion therewith "Platters l0 (for example,but not limitedto, memberMonroe Powell," ,'platters ll sensation,"),in theadvertising, promotion, offer for sale,display, distribution, and sale of t2 services;from performing, recording, entertaining, contracting, or otherwiseholding l3 themselvesout to thepublic as the musical group comnronly known as "The platters"; t4 frombooking any tours, performarces, appearances or engagements for or on behalfof "The 15 eitherdefendant, individually or collectively,as the musical group Platters";and

16 fromconducting any business or €ngagingin anyand all communicationswith any t7 bookingagent, promoter, publishing agent, recording company, talent agent, and/or l8 memberof themedia as the musical goup "ThePlatters." l9 6, Uponsubmission of admissibleand reliable evidence, the Court shall ascertain the prop€r

20 amountof defendants'revenues based on infringingconduct and plaintiffs' loss damages

2l whichcan be proven, to berecovered from defendants, and each of them,upon the

)) determinationby theCourt.

23 7. Plaintiffsshall recover against defendant, and each of them,its costsin anamount to be

24 determinedpursuant to LocalRulel6; andpursuant thereto, the Clerk shall tat costsin 25 favorof plaintiffsand against defendants, and each of them.

26 8. Jurisdictionis retainedfor thepurposes of enablingany of theparties to thisJudgment to

27 applyto thisCourt at anytime for suchfurther orders and directions as may be necessary

28 or appropriatefor theconstruction or carryingout of thisJudgment, for themodification e 2:98-cv-03712-R-BQR Document101 Fited1 010811999., pag.e3 of 3 s. 1 of anyof its provisions,for theenforcement or compliancewith it, andfor the 2 punishmentof violations. 3 4 DATED:October 8-,,nnr. 5 6

7 THEHONORABLE MAI{UEL L. REAL 8 I.JNITEDSTATES DISTRICT COURT JUDGE 9 t0 ll t2 l3 l4 l5 l6 l7 18 r9 20 2l 22 23 24 25 26 27 28 EXHIBIT B Jul_.i i , 20081'i[:44AM,on Rf Moore =rU' .os'No'5291P' 7".o.. H

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E6{:;l @ i 'tr' "t"Tt i ''' '- 1 " 'a" [lf-.' asrE | cc):3Yr:jir'.:Cc):3Yr:iirr.'..-' " '' iI'' E "l j -:' F EI LrNrrEDSTATES DTSTzuC? CotJi(.t.

- plsilcroFcAr_rloRNlA iil ef r FoB,TTs CENTRALe'! lrvv 3 v.- I H[. flt- E tof 1: I- H ltl MARTHARoBT. l ffi I No. T t2l plainri{ t cV eJ4j46cBM ) ,, v, ) pLArNrrFF,s F tI i *ygp*g^g5pgq4E: 'o iE^HI'BENNFT'I 'r'f I ' l'!o[o]!PoR'sT'Mt''{ARY I BEr.{NEIT,era!., 1 ADiirDi,arfrbr-idFissuEs F ,r f Def:ndus, t ' ,.1 ) E UT Ttc ma[cr bcforctfr€ Cou4 thcHonorrblc tB I ConsuctoB. Marhall, UnitcdShrcs Disrrio Judgc,presiding' isPlainrifs Motien lor surnnaryAdjrrdicrtion of hs,rcs. Thc cuun F ,g l lssuesrhe foUowing" Amcnded Or da, grurting pteintiF r :n . 20I otion. HI [i ^-|l,l .DlrsurrfonDlrcurrla. I on Dccembcr pteinriE rr,30, l'g96''rJvt 4rsr$ru{r.rsuIrEr 6redhcr modoarnonecprEt|tilrlyndJutJtc4UonOIiSSUCS. br xrnunnrydjutJicatlon | 221 of i On I | Inuuy ZL,lggT.,Deftndints Eled theirnppositioa p.ptrr, I ,. I ^o! ooFrl-,". =:.; 3. Ig.fl,Frstnrjff' I O*,nrta reply papcrs.. Orr Febmry 1997.1e97. ,I ::i;rf 19, thecountheCounisqrcd an orrtcr rrurringrr.rring plainriffr mcrion I ' ^_ I forsurnmlryrdjudication I 251 I Tte court =6x issucsthis Amcnrled orde' 36 cfuifi itsfinrjlngs of fa;tsand c,onrlusionr of I I FrF.Lurrv-t8-lge2--Dris.a.hdn4cd{+rdcrsupersrdbs"bc- =r-y'-' 1,1...^I lii."T-'..-{=-e$"g.*-i!-!F"A#grJucl - corrn'spi-!r9!-s-.Qrder----.---.--..-.. - " --.--18-I-," J' -. I

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-6002'Bi'unl -A 0r00[{'C' z/fi I 'd-gtz6'0N- U-_l"ldtl:0 P, I Jut. i l. Z00gI r44A|t| Moore |'{o.529l *5 31 7Ba oe4D F. O? c'-_r-ct7 -gT 6E i Sc)P

I Findlngr of Frc?

t I On lrnuary I l, 1989,thir Coun cntcrcdiu Fidhgr ofFect ald Conclusionsofl

-T ---'L:w'irrErulR-obi*.fhcFivo'Plen Nq::-8{.332d{C:D;'Cel;Jan-ltl-1989f0g15i-- 4 ID

5 on Msy 31. I990, tlriecc.rrr cntcrcdirr sccondAmcndcrl Jutlgrncnr in Rcbi II.

6 No 84-3126(C.D. Crl. Jan.I l, 1989),in fs$or ofMafth Robi artl irguinsrdcfcndants Jear Bennett,The Fivc PfaRerr, Inc,, ond Santucl"Buck'Rarr. "B,uck" t 3. DcfcndanrrJcan Bennctt, Thg fivc Plnrrcrs,[nc., and Samucl Rrrn

appoaledrhie Courtt *T,T adjudiuttiunuf fssuetin Eobi4 No. U4-33?6(C.D. Cal. Jal, ll, 'iiu-s 1989),to lbc MrathCirvrrh. rpprrJrsruhEd lo anoplnlo4 dated January 27,'lggB,Rpbi..q

t! lt FjvcPlahgru. ILc 838F,2d 318 (9th cir. 1968),rbrr uphald rhis c.ourt'r ruling.

l2 4. Dcfcndanrsrgein uppcalcd rhls Coun'p ruting in Sobi4 No. g4-3326(C.D. Cat

JJ Jan t l, I989),aftcr ludgnenr was eotercd. Ttris rpped rcsulted il asecondNnth Cirorit t4 decirlon,dalcd Nuvcmbq 14.1990. RoDIv. tiy.qPtanerg,Ins..9tg F.2d 1439 (9th Cir. t990), , t5 thatupheld rhil Coun'rruling "The l6 5. PaulRobi usigrtcd his rights in drctnde nme Planer:"ro MsnhaRobi on '7 Novurnber9, l9tE, It 6- 1.hepanier in thismattcr, to includePcrsonalityPreductions, [rrc., are thc samc or l9 in priviryto thepanics in RoblE No. E4.llZ6(C,D, Csl. Jur- t l, 1gg9i. 20 Cancluslonlof Lsw 2l l. Thedoarine ofic$ua prcdusion rpplics ro rhcprtiar ie rhiscase, ro inctude )) Personall$r Productions,Inc,, ruch thrt isni* frtly rndfar:riy lirlgatcd bcrwcerr rhon in rhcprior 73 acrlon,I(obiJI (Qv. No. 8EJlz6), rrc precludedfrom bcing re-lirlgated in this crsc. 24 2- Dcftndantsre precludedIium rllcglngm thjr casethat Marth Robi hu hadno ZJ rightsin the "The scrvicemuk PJattcn."Dcfendurtr arc not precludcdfton niring affnnarive _._1!n*:*rilg!g:hl!ilfilJh* chz{S:gj!,ainriffr.urcofthc !,ade n{qssiner.-1989- 21 1 ocftn_d_ugj_rcr1gqlg{-edfrom ailcgirrg.lnrhis-.cascrhrr-rhcy haverig:}rts in rhe-,-,**- 28

1i,\/ J1{\ A0065

6t/at,d_9lZ0.0Naj00ni.c'U-r{dgt:0-000e'B|'Un| sa-1 JXO /o No.529l P' 9'-

of tlrat tndct$rlq whiqh r"siatrrtioo ihc borcd uFon t't1citregirr-*tio" t tt,rdr nmqiTho Ptatrlrr"

a CpurtinB-obilldet.rmined'-rr&rudulaat-Dcfendurttutnotprecludcd'c!(c.Ptrsindicrt.dh con:nronlr*'riurrreLrtho trsde nemc ":.L:l::.o':T': t1'|ltthcv ha've I g:rg::.:.f.:: Fit-itGEni' x -^ rrrr -, p"r."a-"r.\.Fandrnts dojo iotnor .lr.g.lr,.Irfl,'iiftrll?iri*eallec. ihrlrfrl'siifhl!f,{dve tr-om'ttr? c Irn. 0".."*:;;" ;I*

J fedarajr"gisu:rdon.

6 4.DcfcndontrorcprccludcdForrrallcgirrgthatthcyhawrightsintltgtrldcnamc of 6:omFrul Robi' which lltc Coun *1-hepktton" brctd on a:r glrignrnentor trondcr rigtrts bocnillcgal ead' thcrcfrrc' void 8 dercrminedin Bgli-S ro havc

v S.DcfcndmtscrcprccludedftornrJlegiogthrt't,g'ha'erigfusi'rtbetradcnano cxreff that thC ,,Thc pedTrdantj' usc of CIetndc rumc prior Cs1969' lo th0 l0 Ilafter'bascd on thCpubt'ic in IL usutt'r havcbccn fllsc rnd nrJshad-r'lglo Kob-i ll Coun dctefitriltrdDcfsnrlulft' oErne.,TheFlStterc'' dlcgingthat rhcy iuvc nE:htrh thc rade t2 D:fcprJutsa'c not prccluded8om public in Robi 1I' nocfumd to bc 'fiJrcud midcrdingto the l3 brscrlupurr usuJ priur ro 1989 Conduslou t.f .

I5 Bascduponthcforcgoing&oCounhcrcbygrrntsPlaintitrsmotionforrummary faas and OrdcrcOnstiurtcg thc Court'l Ftnding of IA rdjudicarionof istues. Ihis AnrendcC lbecourtir ordcr drrd Fcbruary19, 1997 , .'l consiusioqsof Lew, and supencdrs

r8

I9 ZU tTiSSOORDERED. ' Dard;//b,' 22. 23

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25 w

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Westlaw I USE ONLY Page Not Reportedin F.Supp.2d FOR EDIJCATIONAL (E'D'N'Y') Not Reportedin F.Supp.2d,2000WL 33152016 (Cite as: 2000 WL 33152076(E.D'N'Y'))

perform had been authorizedby Marshak and The in this H i'iu" Platters, Inc. ("FPl"), plaintiffs bnty ttteWestlaw citation is currentlyavailable' to en- action.FNrPlaintiffsin this action also seek fcrr join Reed from prosecutingany futtf:: actions UnitedStates District Court, E'D' New York and irademarkinfringement against plaintiffs -and.others S.D.New York' plaintiffs to licensed or otherwise authorized by Lany MARSHAK' HelenWilliams' Ricky Willi- musical entertainment,r'Nror from holding amsand the Five Platters,Inc', Plaintiffs' frovide to out as having rights superiorto plaintiffs frimsetf "The "The performing names Platters" and Herb REED, Defendant' the Tony WilliamsPlatters." No. 96 Cv 2292(NG)(MLO)' FNI' In a similar action in the CentralDis- Oct. 17,2000' trict of California by Reed to enjoin anoth- er performanceby a group using the name LorvellB. Davis.Esq', Carle Place, for plaintiffs' "The Platters" that had been authorizedby FPl, District Judge Christina A' Snyder T. ChristopherDorrnollv. Esq., Donnelly, Couroy & denied Reed's applicationfilr a temporary Gelhaar,LLP, Boston, Mass. and Stanley K' Sha- restraining clrder' on September 29' 2000' piro. Esq.,New York, fbr def-endant' Herb Reid t'. Evert Productiorts' LLC' et' al, CV-00-10415-CAS' The court fbund that Reed's request was barred by the doc- and that Reed had not MEMORANDUM AND ORDER trine of laches shown either irreparabteinjury or likeli- hood of successtln the merits of his claim GERSIION,District J. that he had the right to prevent FPI from as "The Platters." *1 Plaintifts seek a preliminary injunction enjoin- performing ing the defendantHerb Reed fiom further prosecut- motion papers requested ing an action pendingin the District of Massachu- FN2. Plaintiffs' "from prosecuting setts,Herb Reecl t,. King B. Productions, Inc', En- that Reed be enjoined for trademark infringe- tertainnrcnt Unlinited, Ittc., Holy Rosary Parish any further actions subsequentlyclarified and SaintsAtfio, Fitudelfo and Cirino Society, 00 ment," but plaintiffs prevent Reed CY 11112(ILT),which Reed filed on August 31, that they did not seek to third parties 2000 ('1he Massachusettsaction"). Reed seeksin from bringing actions against from the the Massachusettsaction to enjoin the def'endants who had not obtained rights named in that action fiom all uses of the trademark plaintiffs. "l'he Platters" in connectictn with entertainment group' Plaintiffs' requestto enjoin prosecutionof the Mas- servicesrendered by a vocal or instrumental "first-filed alleged infiingement. sachusetts action is based upon the and also requestsdamages for "[w]here On September l, 2000, District Judge George A. rule", which providesgenerally that an ac- a O'Toole,Jr. grantedReed's motion for a prelimin- tion is brought in one federal district court and ary injunction preventing the Massachusettsde- later actionembracing the same issueis broughtin jurisdiction fendants from proceeding with a performance that anotherfederal court, the first court has "The eveningby a group billed as Platters"in Low- to enjoin the prosecution of the second action'" (2d ell, Massachusetts.It is not disputedthat the group Meeropol v. Nizr:r, 505 F.2d 232. 235 "The using Platters" name that was scheduledto

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common-lawrights to . Reed does not disputethat the same issue ts tn- things, that he has superior with FPI is volvedin both actions,which arisefiom an ongoing the name and that his prior agreement uponhim' controversy between Reed and plaintiffs over neitherdeterminative nor binding whether Reed has a superior right to use the name *2 rule are to avoid "The Platters"or variationsthereof in musicalper- The purposesof the first-filed judicial effort, avoid vexatiouslitiga- fbrmances. duplicationof tion in multipleibrums, achievecomprehensive dis- among partiesover relaledis- The action before me was filed in 1996 by Larry positionof litigation the lisk of inconsistentadjudic- Marshak, Helen Williams and Ricky Williams' iues, and eliminate v. 'lacobs, 950 F'2d 89. 92-94 (2d Reed filed an answer with counterclaims'The alion. Atlttttt Etlttip. R<:rttul,I'td' v' Frtwler' partiesengaged in discovery. Reed moved fix judg- Clir.199 l); Nuritttutl 43. 45-46 (2cl Cir'l9(rl); Jrrcli S

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Page3 Not Reportedin F.Supp.2d FOREDUCATIONAL USE ONI-Y NotReported in F.Supp.2d,2000 WL 33152016(E'D'N'Y') (Citeas: 2000 WL 33152076(E.D.N.Y.))

turther prosecutionof a first-filed not partiesto the action in this fbrum, had obtained York restraining a customerof the allegedinfringing through Marshak and FPI the entertainmentser- action against "The pending disposition of the New York vices of a group billed as Platters." Since the manutaciurer manufactureragainst the patent hold- rights of the defendantsin the Massachusettsaction action by the c&.Co' t'. Intettuttiotutl Platte'r are derived from the plaintiffs in this action, there er. William Glrtckin 117 (2d Cir.1969);accord, Crxlex is an identity of interestin the litigation.Notwith- Coryt.,401 F.2cl Corp.' 553 F'2d 73'5.737-38 standingthe naming of the nominal defendantsin Cor1t.t'. Milgo Elec. (lst ll.S. 8(;0(1977)' In the the Massachusettsaction' Marshak and FPI effect- Cir.),cert. denied,:134 an action againstthe equi- ively are being required to go to another place to presentcase, similarly, plaintiffs' customers by the defendant litigate the same issues, in contraventionof the valent of when the issuesbetween de- policy againstpiecemeal litigation in multiple fbr- should not proceed plaintil'ls.who arethe realparties in in- ums.-Mtxeover,a determinationin this actionof the fendantand terestin the Massachusettsacti()n. concerning their competingrights betweenReed, on the one hand, "The rights t

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has been pending in this court since 1996. demonstratethat such a broad injunction is neces- Moreover,Reed's counsel acknowledged at oral ar- sary at this time, so I do not considerthis court's gumentthat he never advisedthe PTO during the authority to issue such a blanket prohibitionupon entire pendencyof Reed's registrationapplication other actions. Plaintiffs' application is denied (filed in 1995) of the existence of this action without prejudice to plaintiffs' ability to seek to en- againsthim by Marshak and FPI contestingReed's join particular actions that are now pending or that right to perform as, or to license others to perfbrm may be filed, and also without prejudiceto renewal as, "The Platters." Reed's failure to reveal this ma- of plaintiffs' application for a more general injunc- terial infbrmationto the PTO undermineshis claim tion against other litigation if the circumstances that the registrationof the mark is entitled to a pre- warrant. sumption of correctnesspursuant to 15 U.S.C. S 1057(b),which provides that the certiflcateof re- Finally, plaintiffs seek to restrain Reed from hold- "prima gistrationis facie evidenceof the validity of ing himself out as having rights superior to "The the registeredmark and of the registration of the plaintiffs to the perftlrming names Platters" "The mark, clf the registrant'sownership of the mark, and and Tony Williams Platters."This requestis of the registrant'sexclusive right to use the re- denied.For many years,the partiesto this action gisteredmark ...." In any case,the significanceof have madecompeting claims to perfclrm'and to au- "The this new developmentis properlyconsidered in the thorize others to perform, as Platters"or vari- acticlnbefore me, just as the parties have on many ations of that name. The partiesalso have widely occasions,since oral argument of the summary publicizedtheir competingclaims in written materi- judgment motions, brought to my attention other als disseminatedto potentialcustomers and the gen- judicial new materialthat they deem pertinent,primarily ju- eral public. There has been a plethoraof "The since dicial decisionsdealing with other lawsuitsamong decisionsconcerning rights ttl Platters" various individualsand entities claiming rights to the group first achievedtame in the mid-1950's' have con- "The Platters." and the partiesto this action and others struedthese decisions in a mannerfavorable to their justifiably or not' The *4 Reed will not sutfer undue hardship if the Mas- respectivepositions, whether sutficient basis for sachusettsaction is stayedwhile the presentaction plaintiffs have not furnished quo' is determined. Plaintiffs assert without contradic- now disturbingthis stcttus tion that Reed has never befbre brought an action againsta customerof FPI, althoughFPI continued "Platters" Cotrclusion to sponsor groups after Reed and FPI parted company in 1969, and plaintiffs do not dis- "Herb of the plaintiffs for a preliminaryin- pute Reed's right to continue to perform as The motion junction against defendantHerb Reed is grantedto Reed and The Platters." ih" "*t"nt1hat the def-endantis restrainedfrom fur- prosecutionof the action entitled Herb Reed v' For these reasons,plaintiffs' motion tbr a prelimin- ther King B. Productiotts, Inc., Entertainment Urilim- ary injunction is granted insofar as it seeks to stay Parish and SaitttsAlfio' Fil- of the Massachusetts ited, Inc., Holy Rosary Reed from further prosecution in acte:lfoanrt Cirino Sociery, 00 CV I177.2(JLT)' actionpending the disposition of this action' the District of Massachusetts,pending the determ- or ination of the present action before this Court' also request that this court enjoin Reed Plaintiffs this Court' Plaintiffs' request actions for trademark until further order of from prosecutingany further ac- to enjoin the defendant from prosecutingother infringement against plaintiffs and others licensed without prejudice to renewal' and by plaintiffs to provide mu- tions is denied or oth-erwiseauthorized preventing the de- not request for an order sical entertainment' Plaintiffs' papers do flaintiffs'

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Not Reportedin F.Supp.2d FOR EDUCATIONAL USE ONLY Page5 Not Reportedin F.Supp.2d,2000 WL 33152076(E.D.N.Y.) (Cite as: 2000 WL 33152076(E.D.N.Y.)) fendant tiom claiming rights superior to plaintifTs in "The Platters"name is denied.An injunctionwill issuein accordancewith thisdecision.

*5 SO ORDERED.

E. & S.D.N.Y.,2000. Marshakv. Reed Not Reported in F.Supp.2d,2000 WL 33152076 (E.D.N.Y.)

END OF DOCUMENT

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F George of the District of Nevada more recently "skirmishes and battles" between Only theWestlaw citation is currentlyavailable. characterizedthe various individuals and groups claiming rights to "The "a wat." Martha Robi UnitedStates District Court, E.D. New York and Platters"as thirty-year 1029-LDG S.D.New York. r,. Herb Reed. et ol., No. CV-S-95- 1991),offd, 173 fr'id 736 (9th LarryMARSHAK, HelenWilliams' Ricky Willi- (D.Nev., Sept. 2,5, tl.S' 9-52(1999)' This case amsand the Five Platters,Inc. Plaintift's' Cir'.\.cert. denied,-528 is anotherchapter in theextensive litigation history' Herb REED, Defendant. and Ricky Williams are No.96 CV 2292(NGXMLO). Plaintiffs Helen Williams the heirs of Tony Williams, one of the original its lead singerduring Feb.l' 2001' membersof The Plattersand the period that the group achievedcommercial suc- hit records. They, together with l-orvellB. Davis.L.sq., Carle Place, for plaintiffs' cess and recorded Larry Marshak. the managerol' lheir pertbrming Tony Williams Platters' commenced T. ChristttphcrDonrrelly. Esq., Donnelly, Couroy & group, The against another original former member Gelhaar,LLP, Boston, Mass' and Stanley K' Shtt- ihis action Herb Reed, and John Villano and piro.Esq., New York, for defendant. of The Platters, the managers of Reed's current J.P. Productions, "Herb performing group, which uses the names "The iteed and the Platters" and Platters"' The ac- Section43(a) of the Lanham MEMORANDUM AND ORDER tion is brought under Act, l5 tl.S.C. $ ll25(a), seekingdeclaratory and relief for infiingementof plaintiff's'unre- GERSHON,District J. injunctive gistered trade name and service mark, false desig- of origin, and unfair competition' An xl The Platterswere one of the most successfulv<'l- iatinn complaint was filed adding FPI as a cal pertorminggroups of the 1950s,but ever since amended plaintiff. Heten Wittiams and Ricky Williams seek the original members of the group that. achieved "The a determinationtlf their rights to the name successbegan to separatein the 1960s'it appears Tony Williams Platters"'and a permanentin;unc- that they, iheir current and fbrmer managers' and prohibit defendantstiom interferingwith The FivL Platters, Inc. ("FPl"), a company formed ,io"'a that name' Marshak and FPI more spent more time in judicial venues plaintiffs; use of in 1956, have of their rights to the history of litigationover fi.r^afy seek a determination than in musicalones. The i'Th" prohibiting of the nurn" Platters,"and an injunction the right to perform as, and to control use fiom using that name or lnterlerlng Plunttt" between and among the ori- the defendants nu*",""Th" of it' The amended Platters and FPI' and with plaintiffs' use .complaint ginal members of The punitive dam- others' also requeststreble actual damages' 8",*".n those individuals and entities and York State ages,attorneys' f-ees and costs' hu, b""n prtltracted and tortured' New in 1987 Suor"*. Court JusticeWalter Schackman that in- answer raises affirmative defenses the litigation history surrounding Reed's aftly aetctiUed "a uncleanhands' res judicataand col- "1h" Plutt"tt" as tangled .iuO" "turppel, ,t," iigt,,, to the name use of the trade name and inconstst- ioi"rut "ttoipel, and first *eb r.iflitigation resulting in a number.of that ReeA also counterclaims' alleging couit decisions.''Tlrel"ive Irlut' mark. ent federal and state Sections43(a) and 43(c) of 1296' 1291 pf.i"iifft, (l) violated trl,rr, l,,r-. v. Willirurrs,1' tl'S'P'Q'2d Judge Lloyd tN.i.Sup.. N.Y.Co.l987). Chief

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the LanhamAct, 1.5U.S.Cl. s\ I l2-5(a).(c),by falsely seek to prevent Reed from continuing to use the "Herb representingthat they, not defendantshave exclus- names Reed and the Platters" "Herb "The and ive rights to use the name Platters" and by Reed of the Original Platters." Reed, however, causingdilution of Reed's mark; (2) tortiouslyin- claimsthat he has the exclusiveright to use,and to "The terfered with the booking contract between Reed licenseothers to use, the name Platters"or and Villano; (3) tortiously interf'eredwith Reed's any variationof it in the provisionof entertainment prospectivebusiness relationships and prospective services,and seeksto enjoin the plaintiffsf-rom us- "The "The economicadvantage; (4) violatedNew York (jener- ing Platters," Tony Williams Platters," al BusinessLau. $ -i-19through deceptiveacts and or any other name containing "Platters". Reed practices;and (5) engagedin false advertisingin vi- claims rights as fbunding member of The Platters olation of Ncvu,\'ork GenertrlBusiness Law "s3-59. and the only survivingoriginal Platterstill perfbrm- Reed seeks treble actual damages and punitive ing, his allegedcontinuous use of the name,and se- damages,together with attorneys'f'ees and cclsts. lectedjudicial decisionsfhvorable to him or unfa- Reed also seeksa permanentinjunction to prevent vorableto FPI. On October6, 2000, by agreement "The plaintiffstiom using in any mannerthe name of the parties,all claims by plaintiffsagainst Vil- Platters",and directing plaintiffs to deliver to the lano and JP Productionswere dismissedwith preju- court filr destructionany goods,articles or any oth- dice. Reed is the sole del'endantremainine in this "The er mattersbearing the mark Platters". action

*2 The Williams plaintiffs predicatetheir rights to Reed now moves for summary judgment under "The Tony Williams Platters"name both upon their Rule -56 of the FederalRules of Clivil Ploceclule, allegedcontinuous use since 1962 of the name in and plaintiffs in responsemove tbr summaryjudg- the provision of entertainmentservices, originally ment. Reed also movesto strike certainexhibits rlr with Tony Williams and later by themselves,and portionsof exhibits submittedby plaintitf.sas part also upon an agreementbetween Marshak, FPI and of their response. While these motions were PersonalityProductions, Inc. ("PPI") entered intcr pending decision,this court on October 17, 2000 on December16, 1996, after this action was com- grantedplaintiffs' motion fbr a preliminaryinjunc- "first-filed menced.In that agreement,FPI and PPI agreed to tion to entbrce the rule" by enjoining vacatean injunctionthat FPI had obtainedagainst further prosecution,pending determinationof this Tony Williams and agreednot to interferewith li- action,of an actionReed had filed in the Districtof "The censesto use Platters" name granted to Mar- Massachusettsentitled Herb Reed v. King B. Pro- shak by the Estateof Tony Williams and by Helen ductiorts, Inc., Entertoinntent Unlinited, lnc., Hol;t and Ricky Williams. In the agreement,FPI and PPI Rosary Porish anel Saints Alfio, Filadelfo and also grantedto Marshak a license to use the name Cirino Sociery,00 CV 1111Z(JLT),which soughtkr "The "The Platters".Marshak predicateshis rights upon enjoin perfbrmancesby a group using Plat- his agreements with FPI and the Williams ters" name that had been authclrizedby Marshak plaintitfs.FPI claims rights pursuantto agreements and FPLITNT with the original membersof The Platters,both in and out of court, its continuoususe of the name F'Nl. The court in that actionhad granteda since FPI was establishedin 1956, and certainse- preliminary injunction enjoining a sched- lectedjudicial decisionsthat were favorableto it. In uled performanceon SeptemberI, 2000. In court proceedingssubsequent to the filing of the a similar action in the Central District of position that, in ac- California by Reed to enjoin another per- complaint,plaintiffs take the "The cordancewith an earlier agreementterminating cer- fbrmance by a group using the name by FPI' tain litigation between FPI and Reed, they do not Platters" that had been authorized

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that court denied Reed's applicationfor a rangedburs, did promotionalactivity, and was tn- temporary restraining order on September strumentalin securinga contractwith Mercury Re- 29,2000. Herb Reed v. Evert Productions, cords. As will be seen later, courts have differed in LLC. et.a/. CV-00-10415-CAS. evaluatingRam. He has beenseen both as engaging in overreachingand fraudulentactivity and as play- ing a principalrole in the group'ssuccess. Ram was BACKGROUND assistedby Jean Bennett and incorporatedPPI as his managementcompany in 1955. *3 Unless otherwise indicated. the facts set forth beloware undisputed. When the group beganto achieveits initial success, Ram suggestedthat a corporation be formed under "The the name Five Platters,Inc." ("FPI") as a Formation of The Platters and the Successof the meansof protectingthe group'scollective right to Group its performing name. FPI was incorporatedin Cali- fbrnia in January1956. All of the original members Herb Reed was a founder of The Platters, which of The Platters,including Herb Reed and Tony was fbrmed and began performing in 1953; he Williams, executedemployment contracts with FPI claims to have clrganizedthe group and createdits on July 5, 19-56.As part of thosecontracts, each of name.The other membersof the group when it was the perfilrmersassigned to FPI their rights in the "The first tbrmed, Alex Hodge, Joe Jetfbrsonand Cornell name Platters",in exchangefilr the issuance Gunther, did not stay long. By 1954, and of sharesof sklck in FPI. The five perfbrmerseach throughoutthe period when the group realizedits became 20o/o shareholders. Section 12 of each greatestsuccess, from 1954 to 1960,it consistedof agreementprovided: five perfbrmers:Tony Williams, Herb' Reed, Paul 'Artist 'THE Robi, David Lynch and Zola Taylor.t'x: puling acknowledgesthat the name PLAT- this period the original membersof The Plattersre- TERS' is the sole and exclusiveproperty of Cor- corded music together and achieved at least twelve poration. With referenceto the atbresaidacknow- gold records(records selling over one million cop- ledgment,it is specifically understoodand agreed "Only ies), including such hit recordingsas You," by and betweenthe parties hereto that Artist may "Smoke "The Great Pretender," and Gets in Your be replaced by Corporation and that the name 'THE Eyes."They pertbrmedconcerts nationwide. PLATTERS' may be applied with respect to any ttther emplclyeesof Corptlration without FN2. As several courts have done, I will ref'erenceto Artist and without additionalconsid- refer to these five members who comprised erationbeing furnished by Corporationto Artist.'' the group when they achievedits first suc- "original" Director, and cess as the members of The Reed becamePresident of FPI and a he resignedin 1969'Later' Platters. With the exception of Reed, remainedPresident until membersof The however. none of these members was in- in the 1960s,all of the original "founding" sharesof stock to volved as a member of The Platters except Reed sold their Platters. BuckRam, PPI or FPI.

"Buck" Samuel Ram became the group's manager of the Original Membersfrom the Group and musicaldirector in 1954,and remainedas man- Separation ager during the group's most successfulyears, and *4 of The Platters remained the aiterwards.It is undisputedthat Ram selected and The composition arrangedmaterial, wrote songs including some that became major hits, helped develop a show, ar-

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samefrom 1954until some time between1960 and other persons or entities which were not 1962, when Tony Williams left.r'Nroverthe re- connected with the original members of mainderof the decade,each of the other original The Platters. See, e.9., Tlte Firc Plattar.s, members lefi the group, one after another'.FPI re- Irtt'. v. Punlit', 419 F.SLrpp. 372 placedeach of the departingoriginal memberswith ( D.Md. 197(r), and Tlre Five Platters, lttc. new perfbrmersand continuedto promoteThe Plat- and Persottnlitl, Productiotts, lttc. r,. Mott- ters until by 1969, when Reed departed,it was roe Powell, et al., No. CV-98-3112 R comprisedof none of its original members.Reed's (C.D.Cal., Oct. 8, 1999). FPI prevailedin resignationletter, dated July 28, 1969, statesthat both of theseactions; in the latter action,a " 'The Reed resignedfiom Platters'singing group." lead singerof FPI's groupsfrom 1970 until It accusesRam of having seized control of The approximately 1995, Monroe Powell, was "particularly Plattersand of FPI, more recently," a defendant. operating it fbr himself, and withdrawing tunds without authorization.Reed announcedhis inten- "corporation tion to bring legal action so that the Early Actionsby FPI AgainstTaylor, Robi andReed may be correctly controlled and administeredin ac- cordancewith the law and the stockholders'in- FPI commencedan action againstZola Taylor and terests." Paul Robi in Califbrnia Superior Court in 1967. Reed, who was still FPI's President,submitted an I'N3. The record contains references that affidavit affirming that the public identified The date Tony Williams' departure in 1960, Plattersas a group,not its individualmembers, that 196l and 1962.The discrepancvis not ma- the employment agreementsof each performer with "in terial. FPI had been entered into order to provide for the continuityof the Plattersas a group," and that Each of the original members, afier leaving the the continuityand continuedsuccess of The Platters group, also continued to perform under some deriv- was attributable to its group identity "The "Zola "notwithstanding ation of the name Platters", such as various changesin the member- Taylor's Platters",and in sclme instances,former ship, including the replacementof Tony Williams" "The members gave performanceswith groups as as lead singer.FPI did not pursuethe Califbrnialit- Plattters".At one point, three original members igation at that time afier its motion for a prelimin- "Platters" and even pertbrmed together using the name. ary injunction was denied in November 1967' to pro- The legal battlesbegan. Because the partiesin this the actionwas dismissedin 1972fbr failure action rely in part on the collateral estoppeleff'ects secute. of certain past judgments, and because certain againstTaylor in agreementsrelied upon by the parties were entered However, FPI brought an action terminatedin a into to resolve actual and threatenedlitigation, a re- the District of Colorado, which consentdecree in which Taylor acknowledged view of the litigation history between the parties 1974 "The rights to the name Plat- and with other original members of The Platters is FPI'sownership of the herself only as a former necessary.r'N1 ters" and agreedto refer to member of the group. Taylor was enjoined from "Platters,""Zola Taylor'sPlatters"' [rN4. This review of the litigation, al- cltherwiseusing Five Plotters, ltrc' v' Zola though lengthy, includes only cases in- or any similar name.The No. C-5249 (D'Colo', May 24, volving original members of The Platters Mae Ta;tlor, et al', and FPI. It does not include casesin which t974). FPI has litigatedits claims to the exclusive "The rishts to the name Platters" against

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After Reed discontinued his relationship with FPI trademarkownership. "The in 1969, he perfbrmed under the names Plat- "Herb ters" and Reed and the Platters." Within After a benchtrial, JudgeWilliam H. Levit granted weeks of his departure, FPI obtained a temporary judgment in favor of Robi in a decision dated injunction in Florida state court prohibiting Reed November 14, 1974,dismissing the complaint.The fiom holdinghimself out by thoseor similar names. court determinedthat FPI was at all times domrn- The Five Platters, Inc. v. Herbert Reed, et n/., No. ated by Buck Ram; that Ram wrongfully induced 69-13781(Fl. Cir. Ct., Dade Co., Aug. 18, 1969). the group's membersto transfertheir intereststo the Ultimately,as describedinfra, this action was settled. corporationby falsely representingthat establish- ment of the corpclrationwas in their best interest *5 Notwithstandingthis injunction and subsequent and was being done to protect them; that Ram, a "unequal settlementagreements limiting his right to use vari- Iaw schoolgraduate, took advantageof an "Platters" "young ous names.Reed claims that he has con- bargainingposition" with the and inexperi- tinued tc'rperform under vari

FPI v. Paul Robi: 1974Superior Court of Calitbrnia Reed's197-5 Agreement Decision Reed had broughthis own action in CaliforniaSu- FPI in 1972brought a new actionagainst Paul Robi perior Court in Los Angeles in 1972 againstBuck and others in California Superior CourI, Five PIat- Ram and the persons and entities associatedwith ters, Inc. r,. 12319 Corporation, er nl., No. C43926 him.Herben Reed v. Buck Ram, The Five Platters, (Cal.Super.,L.A.Co.). Relying on the employment Inc., Personality Productions, Jean Bennett, et al., contractsit had received from Robi and the other No. 960429.DespiteJudge Levit's decisionagainst original members of The Platters in 1956, FPI FPI for Paul Robi, Reed, who was representedby claimed it owned the exclusiveright to the name counsel,chose to enter into a settlementagreement, "The Platters" and sought to prevent Robi tiom datedApril l, 1975,which amongother things,ter- presentinghis group as The Platters.While that ac- minated the California and Florida state court ac- respective tion was pending, FPI was granted registration of tions without prejudice and detined the "The parties to the the service mark Platters" by the Patent and rights of the parties. The named FPI' PPI and Reed' TrademarkOffice ("PTO") and advancedclaims of agreementare Ram, Bennett, The copy of the agreementprovided to the court

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does not contain Ram's signatureas an individual, ment that they claim is a 1974 stipulation but does include Ram's signatureas Presidentof in an action betweentrPI and Reed in Mas- FPI, Bennett'ssignatures individually and as Pres- sachusetts state court. Reed's motion to identof PPI.and Reed's signature. strike this document,which bearsonly the signature of Reed, not of FPI, is denied. x6 The 1975 agreementwith Reed beginswith re- However,for reas

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"evidence reaffirmedthe languageof his 1956 employment bers of The Platters;on the contrary, the "that contract quoted at p. 6 above and the name overwhelmingly demonstrated"that FPI's advert- 'The Platters'is now owned exclusivelyby [FPII." ising and publicity reflectedthe actualcomposition The agreementallowed Tony Williams to identify of the group tiom time to time (which by then had himself as a former memberof the Platters.Never- reached 60-65 different performers that had ap- "Tony theless,Williams continued to perform as pearedwith the group since 1956),and that FPI was "scrupulous" Williams and The Platters" or the like. See l/re in accuratelyportraying the group's Five Plotters, Ittc. t,. Totty WilLiants,No. 807l/72 membershipto the public.Id. at 18-20. (N.Y.Sup.Ct.,N.Y.Co., Iuly 12,1982),at pp.3-10. The court concludedthat Williams was prohibited *7 FPI tlled suit against Tony Williams in New by resjudicata based on the 1975Court of Customs York State Supreme Court for breach of his 1967 and PatentAppeals' decision fiom challengingFPI's "The agreementby performing as Tony Williams service mark of "The Platters"./d.at 25.Williams' Platters".Afier a nonjury trial, JusticeArthur Blyn claims of clverreachingand illegality in the forma- issueda decisionin favor of FPI and grantedit a tion of FPI additionallywere found to be barredby permanentinjunction prohibiting Williams from us- the doctrines of estoppel and laches. Id. at "The ing thename Platters".1d. 25-26.Thecourt rejected Williams' argumentthat the 1974 Califbrnia judgment in f'avor of Robi The court found that Williams'1967 agreement should be given collateral estoppeleffect against "exclusive with FPI ratitied FPI's ownership of FPI. The court noted that Williams had been "dilatory THE PLATTERS name," and nullitied any claim and unsuccesstul[in providing the court fbr relief basedon allegedoverreaching in the cre- withl an admissibletranscript of the Californialaw- ation of FPl. Id. aI 22-23.The court also fbund that suit," but concludedin any event that it would not the five original shareholders,including Williams, apply equitableor collateralestoppel against FPI in had "received valuable and continuing cclnsidera- light of the evidenceand the court'sfindings. /d. at tion" in exchangefor transf-erringtheir rights in 26. "The Platters"name to FPI, that they treatedFPI as "operated a legalentity in all respects, under its ae- gis fbr their individual benefit," and only chal- Paul Robi v. FPI: 1985 CentralDistrict of Califor- lengedFPI's right to the name after leaving FPI's nia Decisions employ. Id. at l2-l3.The court concludedthat the 1956employment contracts were valid and that FPI x8 Paul Robi filed a federal action in the Central lawfully acquiredexclusive ownership of the name District of California againstFPI seekinga declar- "The "The Platters" tiom the partnershipof the original atory judgment regarding the parties'rights to groupmembers. Id. at22. Platters" and a permanentinjunction to preventFPI from interfering with Robi's right to perform using "no "The The court also found evidenceof uncleanhands the name Platters." Robi v. The Five Platters RQzL No. CV on the part of [FPI]."Id. at l3.The court character- Irtc., Jean Bennett and Buck ized the claimed defects in the issuance of FPI 84-3326-CBM (C.D.Cal.).FPI counteredby suing technicaland found Robi fbr trademark infringement and unfair com- stock in California as merely "The that Williams and the other original Plattershad petition for use of the name Platters"in the was "realized substantial monetary benefits from their Northern District of Illinois, which action Ifte ownership of shares in and employment by transferredto the Central District of California. lnc. v. Robl, No. CV 84-9873-CBM tFPIl."/d. at 13-l4.Thecourt further found no evid- Five Platters ConsueloMarshall gran- ence that FPI had ever misrepresentedto the public (C.D.Cal.).District Judge a preliminaryinjunction that its singing group included the original mem- ted Robi's applicationfbr

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in 1985 after finding that Robi was likely to suc- Circuit, which heard argumenton the consolidated ceedon the meritsof his casebecause of the collar caseson September8, 1987.See infra pp. 19-20. eral estoppel eff-ect of the 1974 Superior Court judgment. The court rejected FPI's reliance upon decisionsthat were favorable to it which were FPI v. Tony Williams: 1987New York County Su- rendered atier the California Superior Court de- premeCourt Decision cision. It fbund that the 1974 Californiajudgment "The invalidatedFPI's trademark, Platters"and pre- While Williams' t'ederal case in Califbrnia was cludedFPI fiom claiming that it had rights enforce- pending,FPI flled a motion in New York StateSu- able againstRobi. As FPI was precludedtiom relit- premeCourt to hold Williams in civil contemptfor igatingits claim that, as againstRobi, it had the su- refusing to comply with the permanentinjunction "The perior right to use the name Platters",the issuedin the 1982 New York judgment. In a de- court grantedRobi's motion to dismissFPI's action. cision dated June 15, 1987,Justice Schackman de- "under Tlte Five Platters, Irtc. y. Robi, No. CV clined to enforce the judgment the present 84-9873-CBM(C.D.Cal., May 22, 1985).(The ap- stateof facts."Theliive Plotters, ltrc. v'. Williutrs, 4 pealsof thesedecisions are discussed infra at p. 19.) tJ.S.P.Q.2d1296, 1299 (N.Y.Sup..N.Y.('o.1987). "the The court explained that mere existenceof a judgment does not mandate that the Court enforce Tony Williams v. FPI: 1986 Central District of that judgment automatically;'ld. at l298.lnstead, "consider CalitbrniaDecision the court can the equities of enforcing that judgment under the circumstancesexisting at Folkrwing in the wake of Robi's f'ederallitigation, the time enfbrcementis sought."/d. Tony Williams filed an action in the Central Dis- trict of California,also befcrreJudge Marshall, for a *9 First, the court tirund that FPI had tailed in its declaratoryjudgment as to his rights in the name duty to act expeditiouslyin seekingto preventcer- "The Platters." Tort1,Williams v. Five Platters, Inc., tain performancesthat had been scheduledby the No. CV 86-4294-CBM.FPI arguedin responsethat Williams group. Second, the court describedthe collateralestoppel, based on the 1982 New York federal and state decisionsin California that had judgmentand the 1975 Court of Customsand Pat- ruled againstFPI's claims of ownershipof rights ttl "The ent Appealsdecision, prevented Williams from rel- the name Platters".ld. at 1291.lt observedthat "The "concepts 't'ull itigating his claims to the name Platters." of faith and credit, res judicataand JudgeMarshall, however, concluded that the 1982 collateralestoppel' are designedto avoid the incon- New York judgment had failed to give full faith and sistent results which are at issue here. Unfortu- credit to the 1974 Califbrnia judgment. The court nately, however, inconsistent results have been enteredsummary judgment in favor of Tony Willi- rendered."/d.at l299.Such inconsistentresults, the ams, giving collateral estoppel effect to the 1974 court fbund, mandate that Williams' use of the "The Californiajudgment and the 1985 Robi cases'since name Platters" cannot be considereda willful the legal issues were the same and FPI had the violationof the 1982injunction. /r/. at 1298."In or- to result same incentiveto litigate the previousWest Coast der to avoid the inequitieswhich are likely inconsistencies," decisionsas in the present action. Williants v. Tlte from further perpetuating these judgment.It con- F'ivc Plattcr.s. Inc., 4 LJ.S.P.Q.2d 1299 the court declinedto enforcethe (C.D.Cal.1986). cluded that, in view of the Calitbrnia decisions, "enforcementof plaintift's purported claim of own- trademark/tradenameis inap- FPI appealedJudge Marshall's 1985 and 1986 de- ership of the subject at 1299. cisions involving Robi and Williams to the Ninth propriate."/d.

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The court neverthelessrejected Williams' cross- Aronovitz denied Reed's motion on May 5, 1987. motion to vacatethe 1982judgment on the basisof The court ruled that allegations of fiaudulent pro- "Platters" the I9l4 California Superior Court judgment and curement by FPI of its right to use the "must the decisionsrendered by the Central District of name be adjudicatedon an individual basis "full California.It held that Williams had a and fair and may not properly be the subjectof collaterales- opportunityto raise the key issues" presentedby toppel in suits by other persons."Forexample, the the 1974California judgment during the 1982trial, court noted,one party may "and rely on misrepresenta- he had the right to appealthe challengedde- tions to his detrimentwhile anotherdoes not. The terminationand neglectedto do so."/d. at 1291. court's ruling was without prejudiceto renewal if the Ninth Circuit were to uphold Judge Marshall "[t]he prior to trial, in which case court could at Herb Reed: 1987 SouthernDistrict of Florida Set- thattime be inclinedto revisitthe issue." tlementAgreement *10 Reed. however.chose to settlewith FPI rather As the federal and state actions in California and than awaiting the Ninth Circuit decisionand pro- New York involving FPI's rights as against Robi ceedingto trial in Florida.The Stipulationof Settle- and Williams went fbrward, FPI in 1984 com- ment, signedby Reed, JeanBennett as Presidentof mencedan actionagainst Reed in the SouthernDis- FPI, and their respective ilttorneys, was "scr trict of Florida to prevent Reed from performing as ordered"by JudgeAronovitz and tlled in the court "The Platters." The Five Platters. Ittc. t,. Herbert on December10. 1987.It dismissedthe actionand Reed,et c/., No. 84-8324-CIV-SMA.Reed flled an all other actions betweenthe parties in any other answer raising defenses that included unclean court, with prejudice. Reed assignedto FPI all hands and lack of proper corporate existence of rights he had in the stock of FPI, and agreednot to FPI, and amendedcounterclaims seeking to enfbrce use the name "The Platters." Reed retainedthe his 1975 agreementwith FPI by compellingan ac- "right to perform or entertain in any place and with counting, participationin FPI's management,and any medium other than commercial recordings" issuanceof stock certificates. Reed also advanced (definedto include phonographicrecordings, audio his claim to equitableownership of the remaining and video recordingsof any kind and commercials) "Herb 807cof FPI sharesheld by the Ram group. as Reed and the Platters." Reed agreedthat "the natureand quality of all servicesrendered" in "shall On September Il, 1985, District Judge Sidney connectionwith that name conform with the Aronovitz denied Reed's motion fbr a preliminary reasonablestandards used and set by" FPI. Reed injunction both becauseof delay in bringing the also retainedthe right to perfttrmor entertainin any "Herb motion and becauseReed had not demonstrateda form or in any medium as lor Herbertl Reed likelihoodof successon the merits.The court also of the Original Platters,"or under his own name, denied Reed's motion fbr partial summary judg- without these restrictions.The stipulationreserved "Platters" ment to adjudicateReed's entitlement to deliveryof Reed'sability to claim rights to the name "[iln sharesrepresenting 20%, of FPI stock. Reed's claim the eventthat a court of competentjurisdiction to the shareswas fbund to raise a genuinedispute entersa final order with all appealsbeing exhausted materialfact. that provides that The Five Platters,Inc. has no of 'The ' right in the name Platters." The stipulation Reed subsequentlymoved for summary judgment provided that the court retained jurisdiction to en- on collateralestoppel grounds based upon the 1974 force it. The court entered a Final Order of Dis- "with prejudice decision by Judge Levit in California Superior missal which dismissedthe action accordancewith Court and Judge Marshall's 1985 and 1986 de- as to all claims and all parties,in cisions in t'ederalcourt in Los Angeles. Judge

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the terms of the aforementionedstipulation of set- ceeding. See pp. 16-17 supra.The record tlement." does not reflect whether the Ninth Circuit wasaware of thatdecision.

Paul Robi v. FPI and Tony Williams v. FPI: 1988 NinthCircuit Decision Paul Robi v. FPI: 1989 CentralDistrict of Califor- nia and 1990Ninth CircuitDecisions The Ninth Circuit renderedits decisionin the con- solidatedappeal of Judge Marshall'sdecisions in- After the preliminary injunction was upheld by the volving Robi and Williams on January21 , 1988. Ninth Circuit, Paul Robi's case proceededto a The court upheld the 1985 decisionsin the Robi bench trial in the district court. JudgeMarshall is- cases,but reversedthe judgment in favor of 1'ony sued a memorandum which incorporatedthe find- Williams. Robi v.. I;'ivePlotters lnc., 838 F.2cl318 ings made in the 1974 California state court de- (9th t'ir.1988).The Ninth Circuit held that the dis- cision and madeadditional findings of fact and con- trict court conectly gave res judicata effect to the clusionsof law againstFPI, Ram and Bennett.Przrzl 1974 Calitbrnia state court decision in favor of Robi v. Tlrc Five Platters, Ittc., et n/., No. CV Robi, but erred in failing to give full faith and cred- 84-3326-CBM(C.D.Cal., Jan. 9, 1989) (hereinafter it to the 1982New York StateSupreme Court judg- Robi II ). JudgeMarshall awarded Robi $1,510,000 ment where Williams and FPI were parties,as op- in compensatorydamages and $2,000,000in punit- posedto the stateand federaldecisions in Califor- ive damagesfor the det'endants'intentional interfer- nia in which Williams was not a party. The court ence with Robi's performance contracts and pro- reasonedthat allowing Williams to relitigatethe ad- spective businessrelationships, and enjoined fur- "Platters" verse New York judgment "necessarilyimpaired ther interference with Robi's use of the the Corporation'srights establishedby the New name.Despite the 1974state decision, and both be- York judgment," since identical issues and legal fore and after entry of the 1985 preliminaryinjunc- "undertook theories were presentedin the two cases and both tion, the court found that FPI at each cases"required a determinationof whether the Cor- and every possible occurrenceto thwart, stop and porationcan preventWilliams fiom using the name inhibit Robi from performingas The Platters."(Op.ll "have THE PLATTERS."/r/. at 326.Thecourt concluded: l4). The defendantswere found to been guilty of oppression,malice and despicablebehavi- We can think of no rationalreason to permit Willi- or" (Op.ll 34), and abuse of process(Op.1[ 37). ams to avoid the claim preclusiveeffect of the Moreover,FPI had been presentinga group called "The New York judgment by trying to draw issue pre- Platters" that included none of the original clusion from a subsequentcase in which he was membersin a manner that was misleadingto the not involved. public. (Op.ll5l41, 42).

'rll Id. at 328.If Williams disagreedwith the 1982 The court also ordered the Trademark Office to New York judgment, the court explained, the cancel FPI's three registered trademarks using the "The "proper avenue of redress is appeal of the second words Platters" on the grounds that FPI had fbr the court's judgment, not collateral attack in a third filed a fraudulent incontestabilitystatement Levit's court."/d.f\6 registrationswhich failed to discloseJudge adversedecision in 1914and had submitteda mis- (Op'1111 FN6. The Ninth Circuit opinion does not leading exemplar with its application. decision mention Justice Schackman's 1987 de- 38-40).Judge Marshall describedthe 1974 "adverse claim of ownership cision which declined to enforce the 1982 as being to defendants' the court determinedthat New York judgment in a contempt pro- of their trademark in that

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defendantswere not the only parties entitled to use amended order that granted Martha Robi's motion the registeredname and, accordingly,denied in- for summary adjudicationof issues,applying the prohibiting iln:,igy such use by others,including doctrine of issue preclusion (collateral estoppel) lRobil".(op.9l3). basedon the decisionin Robi /1.Thecourt ruled that the defendants(including FPI) were precludedfrom The Ninth Circuit affirmed with an opinion the dis- alleging that Martha Robi (as successorto paul trict court'sruling. Robi pltttttlt.s., "The v. Fivt, !tu..,et ul., Robi) had no rights in platters"service mark, 918 lr.2d 1439(9rh Cir.1990).The appeilatecourr but defendantscould raise affirmative defensesand determined,among other things, that the district other allegationsthat challengedRobi's use of the court did not err in cancelling FpI's registered name since 1989. The court barredthe def'endants trademarksbecause FPI had engagedin misleading fiom assertingrights based upon the trademarkre- conductand the incontestabilityafTidavit was false "the gistrationspreviclusly voided by the court, but the rn view of adverse 1974 Decision, which def-endantswere allowed to assert common Iaw denied FPI's claim that it was the only entity en_ rights "Platters" "Defendants 'The to the name: are not titled to use the name Platters'and contained precluded,except as indicated in Ithe next para- numerousfindings adverse to FpI's ownershipin_ graphl, fiom alleging that they have common law terest."ld. lrt 1444. 'The rights in the trade name Platters,'so long as Defendantsdo not allege that those rights derive from the fraudulent federal registra- MarthaRobi v. JeanBennet: 1996 and 1997Central tion."Specifically, defendantswere barred from as- District of CalitbrniaDecisions sertingthose rights basedupon: (l) assignmentor transferof rights tiom Paul Robi that the court had *12 Afier Paul Robi died, his wif'e and successorrn previously determined to have been illegal and lnterest, "use Martha Robi, initiated another action void; or (2) of the tradename prior to 1989,to against FPI in the Central District of California the extent that the Court determinedDefendants' seekingdamages fbr violationsof unfair competi- use to have beenfalse and misleadingto the public tron statutesand an injunction,this time, to prevent in Robi //."The order expresslyallowed defendants "The "rights 'The FPI from using in any manner the name Plat- to claim in the trade name Platters' lers." Mertha Robi v. Jean Bennett, et al., No. CV basedupon usesprior to 1989 not fclundto be false 93-4546-CBM (C.D.Cal.). Defendants moved for and misleadingto the public in Robi II," and did summaryjudgment on the basisof the res judicata not addressFPI's ability to assertrights basedupon and collateralestoppel effect of the district court's assignmentsclr transf'ersof rights tiom other mem- 1989Robi 1/ decision,which, it was claimed,estab- bersof theoriginal Platters or othersources. "The lished that FPI had rights to the name Plat- ters." Judge Marshall, however, denied FPI's mo- tion in an order dated June 28, 1996. The court Martha Robi v. Herb Reed: 1991 District of quoted the languageof paragraph3 of the Robi II NevadaJudgment and 1999Aftirmance opinion set forth above, which made it "clear that the Court did not make a determinationof whether MarthaRobi's claim to an exclusiveright to usethe 'The Defendantsare entitled to use the name Plat- mark "The Platters"led her to commencean action ' ters." Instead,in ordering cancellationof the de- in the District of Nevadaagainst Herb Reed,to pre- "did "The t'endants'registeredtrademarks, Robi II not vent him from perlbrming as Platters" or make any findingseither approvingor disapproving "Herb Reed and the Platters." Reed counterclaimed "he, of [FPI's]use of the name." and alleged,among other things,that and only he, has a right to use the mark The Plattersbecause On April 3, 1997, Judge Marshall issued an he founded the group."Robi v. Reed, No. CV-

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S-95-1029-LDG(D.Nev., Sept. 25, 1997),at p. 3. .528tl.S. 9-52(1999). The court noted that its prior "addressed District JudgeLloyd Georgerejected Reed's claim decisions only FPI's right to prevent 'The that he owns the right to the Platters name because Pauf Robi from using the name Platters." ' td. he tbundedthe group, but grantedsummary judg- at 738.Thecourt reviewedother decisionsthat had ment for Reed for having, as betweenhimself and determined"that '1he membersof a group do not retain Robi, superior right to exclusive use of the rights to use the group'sname when they leavethe "a mark" as a matterof law. 1rl. group," kl. at 739. and that person who remains continuouslyinvolved with a group and is in a posi- *13 The court creditedthe original memberswith tion to control the quality of its servicesretains the "The platters". developingthe value in the name, right to useof the mark, even when that personis a Like a name of a partnershipthat gains value managerrather than a performer." ld. at 740.Apply- joint "as through the ettorts of its partners and there- ing thoseprinciples betweenReed and Paul and "deemed "is fore is the property of the partnership," MarthaRobi," the court held that Reed the per- the court concludedthat the group, rather than any son who has maintainedcontinuity with the group single member, was entitled to exclusive right to and has been in a position "The to control the quality of the name Platters." Id. at 3-4.Becausethe its services." Id. The court added that Reed is the 1974 California court voided the 19-56assisnmenr -Martha only surviving member of the singerswho origin- of rights to FPI, a finding binding upon ated the group, that he tbunded, named and man- "and Robi in view of the Ninth Circuit's 1990decision in aged the group, is the only memberwho has favor of Paul Robi, the group continuedto own the continuously perfcrrmedwith the group." ld. The "the right to the name after 1956; right to use the opiniondoes not discussany of the eventsthat tran- nameremained with the group wheneverone of its spired between Reed and FPI, in or out of court, membersleft the group."Id. at 5. afier Robi's departurefiom the group. In a footnote, however.the court statedthat it was not determin- To determine,as betweenRobi and Reed, which of ing the rights of other parties, including Reed's the original membersheld the superiorrights to the present group, to use the "Platters" service mark. "The "Robi name Platters," the court reasonedthat Id. n. l. Thus,the court did not addressthe rightsof has failed to offer any argument, nor could she, FPI asagainst Reed.rrNT suggestingthat the group's [956] assignmentof the name owned by the group was ineffective as to frN7. Reed's Answer to the Amended Paul [Robil but not as to Reed."/d. Therefbre, it Complaint implicitly acknowledges that "the concluded that group (as opposed to FPI) FPI was not a party to the proceedingby owned and had the exclusiveright to use the name assertingthat FPI could have intervened prior to Paul'sdeparture and continuedto own and and should be bound by the District of have the exclusiveright to the name subsequentto Nevada decision. Jean Bennett's affidavit his departure.Since Reed was the original member and a letter tiom FPI's West Coast counsel who remainedwith The Plattersas the others left, it state without contradiction that FPI was is Reed who now owns the exclusiveright to the not a party to the Nevada action. Reed's mark The Platters."/r/. at 6-7.The court issued a counsel conceded at argument of the sum- permanentinjunction prohibiting Martha Robi from mary judgment motions that the action in "The using the mark Platters"in any manner,and Nevada was between Reed and Robi only. canceledRobi's registration in several statesof the I accept the correctnessof these represent- "The servicemark Platters." ationsby all partiesalthough FPI's name is included in the caption of the case both in The Ninth Circuit affirmed on April 2, 1999' Ilohi the district court and on aPPeal. v. Reerl.er ul.. 173F.3cl 736 (9th Cir.), cert. denied,

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PTO lssuance "The platters" of Service Mark in to ern District of Florida between Reed and FpI in Reed 1987. Also, Reed interprets that agreement's "escape clause" as satisfiedby *14 the Ninth Circuit's On August 8, 2000, the Patentand Trademark affirmanceof Judge Marshall'sdecision in 1988, ..Theplat- Office issuedto Reed a servicemark in and by various subsequentdecisions, so that Reed ters." "The At argumentof plaintiffi' motion fbr a pre- is fiee to resumeusing the name Platters"and Iiminaryinjunction (see p. 4 supra),Reed's counsel challengingFPI's right ro use rhat name. Finally, pTO acknowledgedthat Reed never advised the Reed maintainsthat the court should defer to the during the entire pendencyof Reed's registration recentPTO decisionon August 8, 2000,while these application(filed in 1995),of the existenceof this motions were sub judice, to award Reed registra- actionagainst him by Marshak and FpI contesting tion of a servicemark in "The Platters." Reed's right to perform as, or to license others to "The perfbrmas, Platters." Plaintiffs counter that the agreementsthat Reed entered into with FPI, and especially the 1987 court-approvedstipulation of settlementand dis- DISCUSSION missal with prejudice in the SouthernDistrict of Florida, are valid, binding and dispositive of "The Reed contendsthat his right to the name Plar Reed's current claims .r'NsTheyfurther argue that ters" is exclusive and superior to the rights of no court has made a final determinationthat FPI "Platters" plaintiffs. He predicateshis argument on claims has no rights tcl use the name, and there- that he originated the Platters group, named it, was fbre the escapeclause of the 1987 settlementhas the first to use it as a trade name, and that he is the not been triggered. Plaintiff.s argue that all of only onginal memberof the group still performing. Reed's argumentsconcerning flrst use, continuous Reed further argues that any agreementswith FPI, use, invalidity of assignmentsand agreements, PPI, Buck Ram and JeanBennett that plaintiffsrely overreachingin the establishmentand operationof upon are ineffectual,both because(l) a tradename FPI, FPI's alleged lack of corporateexistence, and and service mark in personal performancerights is any other claims by Reed of superioror exclusive "Platters" not assignableas a matterof law and (2) FPI, hav- right to the name were known and avail- "sham" ing been tbund to be a in the Calitbrnia able to Reed, but Reed neverthelessvoluntarily stateand f'ederaldecisions, and having had its stock enteredinto the 1975 and 1987 agreements.They issuancedeclared void, did not and could not enter furtherargue that Reed, having settled,cannot now into valid agreements.Reed also relies upon court relitigatehis claims or use them to collaterallyar findings that FPI had engagedin fraudulentactiv- tack in anotherfbrum the dismissalwith prejudice ity. Reed assertsthat FPI is bound by those de- in Florida. Furthermore,plaintitfs argue,Reed can cisions under the doctrine of collateral estoppel. no longer properly complain about the issuanceof Reed further maintains that, becauseFPI's federal FPI sharesor other FPI corpclratematters since he service mark registration was canceled, it could transf'erredhis interests to FPI in the 1987 settle- haveno common law rights in the name.Reed alstl ment. Plaintiffs also dispute Reed's claims on the arguesthat his 1975 agreementwith FPI does not merits. "The bar him from claimingrights in the name Plat- ters". FN8. For purposesof thesesummary judg- ment motlons, the Williams plaintiffs do Reed arguesthat, only if plaintiff's overcome all of not argue that undisputed facts concerning "The the above hurdles, would the court need to determ- their use of the name Tony Williams ine the meaning and eff'ectof the so-orderedsettle- Platters" give them rights to that name. ment stipulationthat was enteredinto in the South-

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The court understandstheir claim of enti- .C.P.A.1979)("lf therebe a policy favoringchal- tlement to summaryjudgment to be deriv- lengesto trademark validity, it too has been viewed "The platters". ativeof FPI'srights in as outweighedby the policy favoring settlement."); Titrrc,yMirror MrL,gu:.irrcs,103 F.Supp.2dat 141. lf *15 Finally, the court is urged by plaintiffs to dis- a court were to entertainchallenges b the validity regardthe PTO decisionas not binding on the court of a party'suse of a nameor mark in orderto decide and also becausectf Reed's failure to disclosethis whether the settlementagreement should be en- litigation to the PTO and becauseReed failed to forced,the valueof suchsettlements, and the strong notify plaintiffsof his applicationso that they could public interestin encouragingsettlements, would be contestit. rendered largely nugatory. MWS Wire ltulus., lttc. r. Culifitniu liittc Wire Co.,'/97 F.2d 799.803 tgth I find that Reed's argumentsplace the proverbial (lir.l986); 1' & 1' M.tk.,581 F.2d at 539;'l'irtte.sMir- cart befbre the horse. Reed's entry into the so- ror Mugo..irrcs,103 F'.Supp.2dat 141. As the Ninth orderedstipulation of settlementin 1987, and his Circuitstated in MIUSllirc Irulus..191F.2d ar 802: consentto a dismissalof the action with prejudice, "There bar Reed from assertingthat he has any right to the is an 'overridingpublic "The interestin settling name Platters"as againstFPI or thoseclaim- and quieting litigation.'....Prclmotionof this ing through FPI except as specificallyallowed in policy requiresjudicial enfbrcementof settlement that agreement,or from otherwise interfering with agreements.If the merits of a causeof actionun- "The "The plaintiff.s'rights to the use of Platters," derlying a compromise agreementcould, as a Tony Williams Platters," or other variations of matter of course, be inquired into in "Platters". an action to enfbrcethe settlement,neither settlement nor the policies it promotes would be fostered. The The strongpublic interestin protectingparties' ex- parties would be subjectedto the expense,delay pectationsarising tiom agreementsthat are freely and uncertaintythey soughtto avoid throughset- enteredinto applies to agreementsrespecting trade- tlement;the court would be burdenedwith trial of marks.1' & 7' Ml'7. Co. v. A.'[. Cnts:;C.lo.. 587 tr.2d the underlyingdispute and the preparationwhich -533.-538 (lst Clir.l9l8),ccrt. denied,44l U.S. 908 precedesit."(citations omitted) "the (1979)(applying in trademarkdispute policy, "[iln vital to the law of contracts,of holding people to *16 Therefore, the absenceof significantin- the terms of agreementsknowingly and wilfully jury to the consumingpublic" --- beyondmere pos- "a enteredinto"); Bcc'r Ntus,Inc. v. Kitt,gNut C'o.,411 sibility of confusion--- party enteringinto a set- F.2d 326. 329 (6th (l.ir.),cert. denied.414 Ll.S.858 tlement agreementwith respectto a trademarkwill '[itttt.s (1973)(agreement that recognizedvalidity of trade- be held to its contract." Mirntr Mugtt:.ittt'.s, mark barred party's later claim that the trademark 103 F.Supp.2dat 738. Even if thereis a possibility was invalid as being merely descriptive);Tirrrc.r of confusion,a court must weigh the confusionand Mirror Mugu:.itrcs,Ittc'. v. Fieltl & Steotr Licettses resultingpublic harm againstthe policies favoring Co., 103 F.Supp.2cl7ll, 140 (S.D.N.Y.2000) holding parties to their agreementsand encouraging (enforcing settlementagreement concerning con- settlementof disputes.Bccr Nttts,411 F.2d at 32E; "Field "f current uses of & Stream" trademark by 7 & Mfg., 581 F.2d at -538(lower court properly competingowners of mark). In addition,there is a decided to enfbrce settlement agreementin trade- "encouraging strong public interest in extra-judicial mark infiingement dispute notwithstandingthat settlement of trademark litigation," which weighs court's finding of likelihood of confusion among heavily in favor of enforcing parties' agreements.Z productsof competingpen manufacturers). 'l' Mfg., -587ltr.2d at 539;see Well.sCarg,o, lru'. t'. cg "Platters" Wells (lureo, Itt<'.,606 F.2d 961,965 (Cl In this case, where competing groups of

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have appeared fbr many years, there can be no (S.D.N.Y.1999)("broadly worded and unequivoc- claim of injury to the public interestby allowing al" stipulatedorder of dismissalwith prejudiceand FPI to continuewhat it has been doing since 1969 releaseprecluded further "The litigationof all claimsthat in presentinggroups as Platters" that do not could havebeen raised in the first action;claim pre- platters. include any membersof the original No clusion of stipulateddismissal, although described "more evidencehas been presentedthat, at this late date, as res judicata, is properly understoodto be the public still believesit is seeingmembers of the the subject of contractualagreement among the "Platters" ..Tony 1950sgroup when they attend or parties."). Williams' Platters" performances,as opposed to "Herb performancesof Reed's Platters." *17 Reed presentsno legitimatebasis fbr this court to decline to enfbrce the terms of the settlement In this case, the compelling policies favoring en- stipulation that he knowingly and voluntarily forcement of settlement agreements merge with agreed to in federal court in Florida.FNeAllof the principlesof res judicata to bar this action because argumentsReed now advancesfbr deeming his "with "The the settlementterminated actual litigation rights in Platters"paramount, or tbr rejecting "The prejudice." The stipulation of settlement was any claims to Platters" name by FPI, were "so presentedto and ordered" by District Judge availableto Reed in the Florida action. This in- Aronovitzand filed with the court, and the underly- cludeshis argumentsof entitlementto exclusiveuse "Platters" ing claims by FPI and Reed's counterclaimswere of the name by reasonof his claims of dismissedwith prejudice.The stipulationprovided having founded the group, and having used the tbr the retentionof jurisdiction by the court to en- namecontinuously. force its provisions,and the order of dismissalwith "in prejudice specified that it was entered accord- FN9. It is unnecessarykt addressthe effect ance with the terms of the aforementionedstipula- of earlier agreements and settlements re- tion of settlement."Anunambiguous stipulation of lied uponby plaintiffs. " 'is dismissalwith prejudice deemeda final adju- dication on the merits for res judicata purposeson Reed also cannotavoid the 1987 settlementby his the claimsasserted or which could have beenasser- claims of fraud and overreaching.He is not claim- ted in the suit."' lsraelv. Carptltter,120 Ir.3d 3(rl, ing that the 1987 settlement,where he was repres- 365 (2d Cir.l997), cert. denied, -522 U.S. 1l l4 ented by counsel,was in any way the productof (1998),quoting NfJNBrotutctt,ttirt.q, luc. r,. Slt<:ridutt fiaud or overreaching.Reed voluntarily abandoned Bntalga51i1l,qNctwrsrks, /rrc'., 105 F.3d 71, 18 (2d his claims that the plaintiff.shad engagedin earlier "Such Cir'.1997 l. a stipulationwill (almostinvari- acts of fiaud and overreaching,which had beenthe ably) have preclusiveetfect notwithstandinga litig- subject of different decisions by different courts as ant's post hoc assertionthat he intendedto preserve to individual original membersof The Platters,in certain claims." Id. See also Wells Carg,o, supra acceptingthe settlement.Nor can he rely on collat- (withdrawal of prior application for trademark re- eral estoppel arguments he abandonedwhen he gistration with prejudice estopped party from later settledin 1987.Having electedto settleatier Judge "dismissal seekingto refile). Furthermore,a with Aronovitz had denied his pretrial motions for in- prejudicearising out of an agreementof the parties junctiverelief and for summaryjudgment based on is an adjudicationof all matterscontemplated in the collateral estoppel, Reed may not now seek to re- agreement,and a court order which memorializes visit the collateral estoppel issue. Reed, by this agreement bars further proceedings." Ntr- abandoning that issue, also is barred from raising nrcizerr'.. Bakar,793 F.2d -58, 6l (2d Cir.l986);see argumentsbased on the collateral estoppeleffect of Will,st.o t'. Tlrcis, 1999 Wl. 595629, xt *J decisions that were rendered after the 1987 settle- ment except as specificallyallowed in the escape

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clauseof the stipulation of settlement.As the earli- (Fed.Clir.l983)(granting trademarkregistration by er review of the tangled "ABBA," litigation history shows, corporateentity of musical group since courts have not reached consistentresults, present_ entity controlledthe quality of sound recordings); ing difficult issuesas to the preclusiveeffects of Murshak t,. T'reulwell, 58 F.Supp.2d -551 prior decisions. Reed choseto avoid a trial in Flor_ (D.N..T.1999)(finding that secondmanager improp- ida, notwithstandingthe "The decisionsadverse to FpI in erly registered Drifters" mark because the stateand f-ederal actionsin Californiaand is bound manager of the clriginal group and corporation he by his decisionto settle. controlled,not individual singerswho purportedto assign the rights to the second manager after they Two of Reed's argumentson the merits could be left the group,had exclusiveright b use the name); construedas claiming that the 1987 stipulationis Ric'kv. Buchun,sk.1,.609F.Supp. 1522, l-537-38 unenforceable public on policy grounds.The valid- (S.D.N.Y.), appeal dismissed,770 F.2d l5j (2cl ity of these arguments therefore will be addressed Cir.198-5) (manager of musicalgroup providedcon- briefly, althoughI do not agree that, in any event, tinuity and validly registeredservice mark "Vito eitherof thesematters raises public policy concerns and the Salutations,"which designateda group that are so compellingas to overridethe policy of whose performers changed continually); Marshak enfbrcing settlementsof the type involved here. t,. Graert, -505 F.Supp. l0-5:1 (S.D.N.Y.l98l) First, "The Reed contendsthat a trade name or service (upholdingmanagers's right to Drifters" name mark in personal performance rights is not as- as assigneeof original performersagainst challenge signable.This is an overbroadstatement of applic- by former group member). able law. A trade name, whether fbr personalser- ,.in vlces or manufacturedgoods, is not assignable *18 Second, Reed challengesFPI's capacity to gross", i.e., without the goodwill in the business enterinto valid agreements.Although Reed charac- "sham", that the name represenls.Marshak v. Grecn. J16 terizes FPI as a a term that appears in b.2d 921,929 Qd Clir.l984); Pilute,s,Itrc. t,. Cur- Judge Levit's 1914 decision in California Superior rertt Cotu:c7tts,Irtt.., 120 Ir.Supp.2d286.310-ll Court, neitherthat decisionnor any subsequentone (S.D.N.Y.2000);Dkil-A-Muuress Opt:rutittg Corp. determinedthat FPI was not a valid and existing t'. Muttre.\sMutlttas,s, Inr'. 841 F.Supp. 1339. l3-50 corporation.Judge Levit used that word to describe (lj.D.N.Y.l994). But this doctrinedoes not prevent his conclusionthat FPI was an instrumentalityof assignmentor transferof a name to a personor en- Ram personally,as part of his findings of over- tity that continuesthe business,nor does it prevent reachingconduct. In fact, FPI was and is a Califor- an individualor entity that carrieson the busrness nia corporation.Its privilegesrecently were suspen- of furnishing gocldsor services from acquiring ex- ded tbr nonpaymentof state franchisetaxes but it clusive rights to the business name. See Diul- was reinstatedas a corporation in good standingon A-Matra.ss,841 Ir.Supp. at l3-50--52.These prin- December 21, 2000. Reed, after having repeatedly cipleshave been appliedrepeatedly in decisionsin- assertedthe validity of his stock ownershipin FPI volving musicalgroups where, dependingupon the previously,and then having agreedto surrenderthat individualfacts, claims of ownershipof the group's interest to FPI as part of the 1987 settlement,may name by managersor corporateentities have been not now be heardto complainthat the stockwas in- upheld or rejectedon the merits. Stetsont,. Howtrrd validly issuedin 1956,much lessadvance invalid- D. lUoU'cQ As,rzrcs..9-5-5 F.2d 847 (2d Cir'.1992) ity as a basisto upsetthe settlement.See Willseav. "the (managerof singing group Diamonds" owned Tlrcis,at *9 (settlementagreement, in which party trade name and properly licensed it for tours by a agreed to deal with company as a valid holder of group that did not include any of the original Dia- copyright interests,precluded party from claiming monds);In re Polar Mu.sicltt'l AB, 111 l:r.2dl-5(r7 in later action that company acquired those copy-

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"a right interestsin sham transaction"). On the un_ Languagewhose meaning is otherwiseplain does disputedfacts Reed's challenges to the validity of not becomeambiguous merely becausethe litigants the 1987agreement are without merit as a matterof urge differing interpretations,nor law. is the cour-tob_ liged to find languageambiguous where the rnter- pretationurged by one party is not the ordinaryand Finally, Reed has failed to show that 'finrt:,r the escape reasonable use of the words. Mirntr clausein the 1987 agreement,which allows 'at Reed Mu.qa..itte.s,l0-i F.Supp.2d 122. The languageof to resumehis claim to ',The platters" name after a the provision at issue here is unambiguous.No final decisionwith all appealsexhausted that Fpl party arguesthat thereis an ambiguity,or that parol has no rights in the name,has beentriggered. para_ evidenceis availableor shouldbe consideredin in_ graph7 of the stipulationof settlementprovides: terpreting the stipulation of settlemenl. see Cotn- "7. puertie Itirtuncierc dc' Cic ct Dtt L,L/niott In the event that a court of competentjuris_ Europeetttrc v. A4e:rrill [,.t,nt'h,pier<:e, Fcnner & diction entersa final order with all appealsteing Sntitltltrc..232 [r.3d 1.53.1.57-59 (2d Cir.2000) exhaustedthat provides that The Five platters, (summaryjudgment proper if the languageis unam_ Inc. has no right in the name ..Theplatters," then biguous,or if there is no extrinsicevidence, or if it nothing contained herein "so shall be construedto is one-sidedthat no reasonablefactfinder could limit Herbert ..The Reed's rights in the name decidecontrary to one party'sinterpretation"). Platters"and this agreementshall not inure to any party other than The platters, Five Inc., and its The court in interpretingan agreementis to give ef- successorsand assignsor HerbertReed." fect to the intentionof the partiesas manifestedin the languagethey employ. Id. il l5J; Scitlen As- The language of the 1987 stipulaticlnof settlement .ioc'.r.,9,59 F.2cJat 4.)8.rNr{)Thecourt should inter- is clear and unambiguous,and it is properly inter- pret an agreementin a mannerthat doesnot render preted by the court as a matterof law in decidinea any of its provisiclnsmeaningless. The court is judgment "obliged summary mcltion. to read the agreementsin a mannerthat gives full fbrce and eff'ect to all clausescontained 'In 'l'inrcs reviewing a written contract, a trial court's therein." Mit'ror Mugazint:.s,103 I;.Supp.2d "contract primary objective is to give effect to the intent of trt 725. Moreover, if a is more reasonably the partiesas revealedby the languagethey chose read to convey one meaning,the party benefittedby to use....When the questionis a contract'sproper that readingshould be able to rely on it; the party construction,summary judgment may be granted seekingexception or deviation from the meaning when its words convey a definite and precise reasonablyconveyed by the words of the contract meaningabsent any ambiguity....Where the lan- should bear the burden of negotiatingfbr language guage used is susceptibleto diff'ering interpreta- that would express the limitation or deviation." tions, each of which may be said to be as reason- Bttosey & Hau'ke,sMusic Publi,sher,s,Ltd. v. Wult able as another, and where there is relevant ex- DistteyCo., 145F.3d 481, 481(2cl Cir.l998). trinsic evidence of the parties' actual intent, the meaningof the words become an issueof f'actand FN 10. The stipulation of settlement summaryjudgment is inappropriate,... since it is provides that Florida law governs.Neither only when thereis no genuineissue as to any ma- party has suppliedthe court with authority terial fact that the moving party is entitled to on Florida law, and I therefore assumethat judgmentas a matterof law." Florida law follows the same basic prin- ciples of contract law set forth in the cited *19 SeidenA.r.socs., Inc. v. ANC lloldings, Inc., 959 cases,which applyNew York law. (f F.2tl 425,428 t2d Cir.l992)(citations omitted).

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7-altratt-Berkelel'Cit,il & Ent.tl. En,q,r.s t.. earlier decisionsthat Fpl has no rishts. As the Tipperts-Abbt:tt-Mt:Cartlqy,-Stnirotr, ggg court's 1996 opinion in Robi v. Bentleuexpressly F.2d 239, 212 (Zd Ctir.l989)(applying doc_ states,Robi 11 cancelled FpI's f'ederalservice mari trine of implied consent to "did use of forum registration,but the court not make a determ_ state's law where parties to contract relied ination of whether Defendantsare entitled to use upon york 'The New decisi

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Not Reportedin F.Supp.2d FOR EDUCATIONAL USE ONLY Page19 Not Reportedin F.Supp.2d,2001 WL 92225(E.D.N.y.) (Cite as:2001 WL 92225(E.D.N.Y.))

The plaintiffs therefore are entitled to declaratory derand identify the issues that remain fbr determin_ and injunctiverelief establishingthat Fpl's righti, ation. and the rights of the other plaintiffs derived from ..The ,.The FPI, to use of the names platters" and SOORDERED. Tony Williams Plarters"are superiorto the rightsof defendantReed. As this litigation is betweenonly E.& S.D.N.Y.,2001. plaintifis and Reed, this decisiondoes not dererm_ Marshakv. Reed ine FPI's entitlementto claim ..The plat_ rights to Not Reporred in F.Supp.2d,2001 WL 92225 ters" name superior to others than Reed. The court (E.D.N.Y.) thereforedenies plaintiffs'requests in the amended complaintfor a declarationc

FN I l. Reed's motion to strike testrmony and exhibits is denied. The obiectionshe raisesare either withtlut merit, ni p.rta,n to mattersthat are immaterialto the decision or cumulativeof other evidencein the re_ cord.

CONCLUSION

*21 The motion of def'endantHerb Reed for sum- mary judgment is denied.Reed's motion to strike testimonyand exhibits is denied.plaintiffs' morion tbr summaryjudgment is grantedto the extent in- dicated in this Memorandum and Order, and Reed's counterclaimsare dismissed.An injunction will is- sue baning Reed from interfering with the use by the Williams plaintiffs, and their agents,licensees and assigneesincluding Marshak, of the name "The Tony Williams Platters,"and interferingwith the useby FPI, and its agents,licensees and assign- "The ees including Marshak, of the name Platters," "Platters" or any other name that includes except as permittedin the 1987 Stipulationof Settlementin the SouthernDistrict of Florida. Reed is prohibited "The from performing or using the name Platters" "Platters" or any other name that includes in the furnishingof entertainmentservices except as per- mitted in the 1987 Stipulation of Settlement.[f plaintiffs are seekingany further relief in addition to the declaratoryand injunctiverelief that is being granted,they must notify the court in writing within two weeksof the date of this Memorandum and Or-

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Westlaw 199F.R.D. I l0 FOREDUCATIONAL USE ONLY r99F.R.D. I l0 PageI (Citeas: 199 F.R.D. tf0)

H [2] Federat Courts l70B UnitedStates District Court, e;D6g5 E.D. New york. Larry l70B FederalCourts MARSHAK, HelenWilliams, Rickv Willi_ lT0llVIII Courtsof amsand the Five platters,Inc., plaintiifs, Appeals lT0IlVIll(F) Effect of Transfer and Super- sedeasor Stay Herb REED, Defendant. l7Oflk(rti4 No.96 CV 2292(NGXMLO). Supersedeasor Stay of pro_ ceedings l70llk685 March5,2001. k. Injunction Cases. Most ClitedC-'ases Owners Injunctionissued in tradenameand service of former musical group,s tradename mark in_ brought fiingementdispute over right to use name infiingement action agiinrt' furrn"r. group of tbrmer musicalgroup would not be stayedpending member.The District Court, 2001 WL 9222-5, appeal; held injunction did prevent for and granted . _not def'endantfio*m usrng .plaintifts injunctive relief. Crn de_ meaningful fendant's performingnames, and he had no sub_ motion for stay p"nding appeal,the Dis_ stantialpossibility of successon appeal.Fed.llules trict Court,Gershon, J., held that stay was not war_ Civ.Proc.Rule 62(c), 28 U.S.C.A. ranted. xl10 Lowell B. Davis.Carleplace, Ny, for plaintiffs. Motion denied. T. Christopher.Donnelly, Donnelly,Conroy & Gel_ haar,LLP, StanleyK. Shapiro,Boston, MA. for de_ West Headnotes fendant.

[l] FederalCourts 1708 Cp684.l

l70B FederalCourts ORDER IT0BVIII Courtsof Appeals lTOUVlll(F) Effect of Transf'erand Super- (;ERSIION, DistrictJudge. sedeasor Stay t70Bk684 Supersedeasor Stav of Pro- DefendantHerb Reed requeststhat the court granr ceedinss a stay pending appealof the Injunction issuedon 170Uk684.1k. In General.Most Cited Februaryl,2001. Theapplication is denied. Cases (Formerly170Bk684) Il Rule (r2(c.),Fed.R.Civ.p., provides that when an Factorscourt considersin determiningwhether to appeal is taken from an interlocutory or final judg- grant stay of injunction pending appeal are: (l) ment grantingan injunction,the court in its discre_ whether movant will sutTerirreparable injury ab- tion may suspendor modify it during the pendency sent (2) "upon stay; whether party will suff'ersubstantial of the appeal such terms ... as it considers injury if stay is issued; (3) whether movant has properfor the securityof the rights of the adverse demonstratedsubstantial possibility, though less party." Four factors are consideredin determining than likelihood,of successon appeal;and (4) pub- whetherto granta stay:(l) whetherthe movantwill lic interests that may be aff'ected. Fed.Rules suffer irreparableinjury absenta stay; (2) whethera Civ.Pnrc.Rule62(c). 28 ti.S.C.A. party will suffer substantialinjury if a stay is is- sued; (3) whether the movant has demonstrateda

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199F.R.D. I I0 FOREDUCATIONAL USE ONLY 199F.R.D. I l0 Page2 (Citeas: 199 F.R.D. 110)

substantialpossibility (althoughless than a likeli_ LanhamAct is utterly devoid nooo)ot successon appeal;and (4) of merit. The Injunc_ the public in_ tion upholds tereststhat may a lawfui contractualagreement, indeed be aflecgA Hirsct{t,ll r. Boorcl oJ Elecriorrs,g8.l a so-orderedsettlement agreement,that F.2d 3-5,39 (2d Cif:1993\; LNC Reed now ltt_ seeksto avoid.As described Ittc. t,. I?eptrblit:of in the Opinion of Feb_ :e:t:t:t.ent.t. Nicuragzn, 2000 WL ruary I, 729216,ar *t (S.D.N.y.2000i. the public interestin enforcingsuch agree_ ments is strong. There is no merit tn ih" urgurn"nt that l. the public interestwill be servedUy [2] Reed'sclaims of irreparableinjury are aitowing specu_ Reed, as well as competlng lative.Reed continuesto groups sponsoredby be able to p"rf-, o, p", FPI, to ;fn. his agreement. continue to perform u, plaiters-,iduring Insofaras he claims tlat the tnlunc_ the pendencyof the appeal.If ticlnmight be readto precludehim anything,allowing from mentroning Reed to the fact that continue to perform unaer ttrai name ln_ he was an original performerwith the group "The steadof a nameunique to his group can confuse Platters,"he overstatesthe Injunction. the prblic Reed agreedto limit He cannotget a stay by misstating "The his use of the name the termsof the Platters" court'sorder. as set fbrth in the l9g7 agreement. He cannot now avoid that agreementby clarming that the existenceof multipleFlutt"., groups,which A: f:t injury to plaintiffs,the Injunctionenjoins 1 was.clearly contemplatedby the agreJment,causes Reed fiom interf'ering with their use of the name public confusion.Moreover, the The Platters.A stay would *lll Opinion addressed allow Reed ro con_ any public policy arguments tinue to violate the fbr declining-*"r" to en_ terms of his agreement.Reed's fbrce the agreement ability and those arguments ,"_ to maintain his separateidintity as an ori_ jected. ginal platters memberof The is not impairedby the Injunctionwhich, as with the settlementagreement I also declineto issuea temporarystay while Reed whoseterms are enforcedby the Injunctioi, allows seeksa stay pendingappeal fiom the SecondCir_ him to use perfbrmingnames that both identify his cuit. There is no showing that Reed will suffbr connectionto the original platters and enable him harm in the interim before the SecondCircurt can to differentiate his group from others. The balance considerhis application,and, pursuantto the terms of hardshipsclearly favors the plaintiffs. of the Injunction and the settlementagreement, he ..Herb remains free to perform as Reed and the 3. There is not a substantialpossibility "Herb of success Platters"or Reed of the Orieinal platters." on appeal. For this conclusion,I rely upon my Opinion of February l, 2001 granting rhe Injunc_ SO ORDERED. tion. Reed misconstruesthat Opinion. The claims of Reed that I ignoredthe histoiy and conrextand E.D.N.Y.,2001. casesupon which he reliesis beliedby that Opinion Marshakv. Reed which analyzedthe history and casesin detail. In 199F.R.D. I l0 large part, the application fbr a stay is an effort to reargue,and indeed not only to reargue,but to re- END OF DOCUMENT open, the case, for Reed submits new affidavits as to the fhcts and even new arguments.Nothing he presentssuggests that I misapprehendedeither the t'actsor the applicablelaw, or that a substantialap- pellateissue is presented.

4. The public interest favors denial of the stay. Reed's claim that the Iniunction itself violatesthe

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Westlaw l3 Fed.Appx. l9 FOR EDUCATIONAL USE ONLY PageI l3 Fed.Appx.19, 2001 wL 668656(C.A.2 (N.y.)) (Not Selectedfor publication in the Federal Reporter) (Cite as: l3 Fed.Appx. 19,2001WL 668656(C.A.2 (N.y.)))

H junctive relief under Section43(a) of the Lanham This publication casewas not selectedfor in the Act, l-5 Ll.S.C.ss I125(a),for Reed'salleged in- FederalReporter. fringementof their unregisteredtrade name and ser- vice mark, false designationof origin, and unfair competition.Plaintiffs Helen Williams and Ricky UnitedStates Court of Appeals, Williams, the widow and son of Tony Williams, SecondCircuit. sought a determinaticlnof their rights to the name "The Larry MARSHAK, HelenWilliams, Ricky Willi- Tony Williams Platters"and a permanentin- ams,and Five Platters,Inc., Plaintiff's- junction prohibiting Reed from interfering with Counter-Defendants-Appellees, their use of that name. Plaintiffs Larry Marshak, the managerof the Williams' perfitrminggroup, and Herb REED, Defendant- Five Platters,Inc. ("FPI"), a company fbrmed in Counter-Plaintiff-Appel lant. 1956,sought a determinationof their rights to the "The No.0l-7151. name Platters"and an injunction prohibiting Reed tiom using the name or intert-eringwith their June12,2001. useof it.

Appealfiom the United StatesDistrict Court for the Reed, in addition to raising affirmative defenses, EasternDistrict of New York, Nina Gershon,Judge. counterclaimedalleging that plaintitfs violated the T. ChristopherDonnelly, Donnelly, Conroy & Gel- Lanham Act by falsely representingtheir exclusive "The haar, LLP, Boston,MA; Stanley K. Shapiro,New rights to Platters" name; that plaintiffs tor- York, NY, on thebrief, fbr appellant. tiously interfered with Reed's booking contracts and businessrelationships; that plaintiffs violated Lowell B. Davis, Carle Place, NY; Michael Nerv Yrlrk Gcneral llusinessl,alv N 3.19;and that Machat, Beverly Hills, CA, on the brief, fbr ap- plaintift'sengaged in false advertisingin violation oellees. of New York law. Reed also soughtan injunction "The to prevent plaintiff.s from using Platters" name.Both sidesmoved for summaryjudgment. PresentCABRANIIS, STRAUB, and SACK Circuit Judges. Reed appealsfrom a judgment of the District Court enteredFebruary 13, 2001, grantingplaintift.s' mo- tion for summaryjudgment, denying his own mo- tion fbr summary judgment, and enjoining him "The SUMMARY ORDER from (l) interfering with plaintiffs' use of Platters" name o[ any variaticlnthereon, and (2) "The **1 UPON DUE CONSIDERATION, IT IS performingor using Platters"name except (a) HEREBY ORDERED, ADJUDGED, AND DE- in situationsnot involving commercialrecordings' "Herb CREED that the order of said District Court be and when he may use the name Reed and the it herebyis AFFIRMED. Platters," and (b) in any situation in which he "Herb wishes to use the name [or Herbert] Reed of This appeal is the latest chapter in thirty years of the Original Platters"' The District Court based its litigation, among various parties, over who has the decision,inter alia, on Reed's voluntary decisionto "The *20 FPI' right to use and control the name of Platters," enter a settlementstipulation in 1987with a suit a successfulsinging group from the 1950s. In the pursuantto the dismissalwith prejudiceof instant case, plaintiffs sought declaratoryand in-

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l3 Fed.Appx.l9 FOR EDUCATIONAL USE ONLY Page2 l3 Fed.Appx.19,2001 wL 668656(C.A.2 (N.Y.)) (Not Selectedfor publication in the Federal Reporter) (Cite as: 13 Fed.Appx. 19,2001WL 668656(C.A.2 (N.Y.)))

brought againsthim by FPI in the SouthernDistrict Marshakv. Reed of Florida ("the stipulation"). According to the l3 Fed.Appx.19,2001 WL 668656(C.A.2 (N.Y.)) termsof the stipulation,Reed, inter alia, agreednot "The to use Platters" name except as specifically END OF DOCUMENT providedfbr in the stipulation.

On appeal, Reed alleges that the District Court erred (l) in holding that he lackedexclusive rights "The to Platters"service mark; (2) in holding that the 1987Stipulation does not violate public policy; and (3) in conferringon plaintiffs the right to use "The Platters"service mark.

**2 Althoughno final judgmenthas beenentered in this case,we havejurisdiction to hearthis appealof a grant of an injunction pursuantto 28 U.S.C. $ 1292(aXl).Accordingly, we may consideronly the proprietyof injunctiverelief and the merits to the extent necessaryto review issuanceof the injunc- tion. SeeUnitul Stutasv. ALLen,l.55 t'.3d 3-5,40 (2d Cir.1998).We review the District Court's entry of an injunctionin a trademarkcase for abuseof dis- cretion. See Starlcr Corp. v. Contersc, lrtc., 170 F.id 286.298 (:d Cir.1999).

We have reviewed Reed's argumentsand find them to be without merit. Accordingly, we affirm for substantiallythe reasons stated by the District Court in its thoroughand well-reasonedopinion. In addition,we have consideredthe Ninth Circuit de- cision in l'-ite Pluttcrs, Itrt:. t'. Powcll, No. C'V- 98-017l2-Ml-lt. 2001 Wl, 3894-53,7 Fed.Appx. 79+ (9th Cir. Apr.l6, 2001),issued atter the District Court's opinion in this case. While the summary dispositionby the Ninth Circuit may shedsome ad- ditional light on the casesdiscussed by the District Court in its opinion, we do not find that it clearly shows that the District Court misinterpretedthose cases.We expressno opinion regarding Powel|s ef- f-ecton the parties'rights once all appealsin that materhave been exhausted.

The order of the District Court is hereby AF- FIRMED.

c.A.2(N.Y.),2001.

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Westlaw Not Reported in F.Supp.2d FOR EDUCATIONAL USE ONLY p,aa r No-tReported in F.Supp.2d,2001 WL 79957| (E.D.N.Y.) (Cite as: 200r WL 799571(E.D.N.Y.))

F FNl. Plaintiffs have abandonedclaims for Only theWestlaw citation is currentlyavailable. damages and attorneys'fees, leaving the applicationto cancel Reed's registrationas UnitedStates District Court, E.D. New york. theonly remainingissue in theaciion. LarryMARSHAK, HelenWilliams, Ricky Willi_ amsand the Five platters. Inc. plaintiifs. "Actiort l. lrtvolvingo RegistereclMark', HerbREED, Defendant. No.96 CV 2292NGMLO. .,action Reed's argument that this is not an in_ volving a registeredmark" within the meaningof Juty11,2001. Sectionll l9 is without merit. Reed obtainedresis- tration of the mark with the pTO without at iny Lorvcll B. Davis, Erq., Carle place, Michael time advisingthe PTO of the pendencvof this ac_ Macl-at,Esq. Los Angeles, CA, fbr plaintiffs. tion. Immediatelyupon issuanceof the registration, and while the summaryjudgment motions weresub T. ChristopherDonnelly, Donnelly, Canroy & Gel_ judice, Reed urged this court to def'er to the pTO haar,LLP, Boston,Mass., StanleyK. Shrpiro, Esq., determinationand to give it a presumptionof valid- New York, fbr def'endant. ity in determining the respective rights of the partiesto this action.The Memorandumand Order of Februaryl, 2001 speciticallyconsidered and re- jectedthat argument.2001 WL 92225.irt ,t,20.It is ORDER not disputedthat Reed also usedthe PTO registra- tion in his unsuccessfulappeal to the SecondCir- GERSIION,Districr J. cuit. The mark's validity and significancetherefore were sutficientlyplaced befbre the court and actu- *1 patent Plaintiftsseek an order directingthe and ally consideredby the court to deemthis an "action Trademark (PTO) OfTice ro cancel def'endantHerb involvinga registeredmark" within the meaningof Reed'sregistration of servicemark # 2,374,096for "The the statute.It is not necessarythat eitherthe claims Platters" based upon this court's Memor- or counterclaimsspecifically request cancellation "involving" andum and Order dated February l, 2001 and the for this to be an action a mark. It is sut-- Injunction that was issued.Marshak r Reed, 2001 flcient if the validity or invalidity of the mark is WL 92225. Reed opposesthe application,arguing: raised as a defenseby a party. Bust'ottrLtunder '['alecoin (l) the requestfor cancellationis not properly be- Corp. v. C'orp., 2O4 F.2d 3]1, 335 (2d "action fore the court becausethis is not an in- C.ir.),cert. detied, 345 tl.S. 994,13 S.Ct. I 133,91 volving a registeredmark" within the meaningof L.Ed. l.l0l (19-53)(urisdiction to order mark'scan- l5 tJ.s.c. "s I ll9; (2) plaintitfslack standing;(3) cellation under Section | | l9 properly exercised plaintiffs fail to establishgrounds fbr cancellation. where defendantraised its registeredmark as a de- This court stayedconsideration of the application fense). Contrary to Reed's argument, federal court pending the Second Circuit's determinationof an jurisdictionto determinetrademark validity has not expeditedappeal from the Memorandum and Order been narrowly circumscribed where there is an ac- and Injunction.Following the SecondCircuit's af- tual case or controversy between two parties con- firmance in a summary order, 200 I Wt- 6686-56 cerning their respectiverights to make commercial (dccidcdJunc ll. 1001),I heardoral argumenton use of a mark. See Slurter (lorn. t,. ('ort|er.se, ltrc.. the applicationfor cancellation,which will now be 84 F.3d 592, 591-91 (2d Cir.l996t (declaratory addressed.FNl

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judgment action properly brought to resolve com_ to complainthat this is not an action .,involvins" petrng claims of right a to use a mark on similar registeredmark. products between commercial competitors, both of whom had registeredtheir trademaitr;. In fact, full exerciseof the jurisdiction conferred by Scction 2. Standing. I I 19 comports with "Congress Congressionai int"nt, has providedthat all questionsin respect Reed's argument that plaintiffs lack standrns to tcl a registered trade-mark may be determined in seek cancellationalso is without merit. AII thit is one proceeding,thus preventingvexatious and har_ ..real requiredto establishstanding is a interest"in assinglitigation as well as savingtime, expense and the proceeding,not a hypotheticalone or the claim inconvenienceto the partiesand to the courts "mere and of a intermeddler".Aerogrotrp lnt'1,ln<:. t.. the Patent OfTice tribunals." Sirlrrr;rttl.; At,ro<.c.ssrtr_ Mttrlboro Footwork.t. Ltl.. g11 F.Supp.264, iyy. Lrd. v, Elusri<'Stop Nut C.orp.., 2-57F.2d 4g-5, 266-67 (s.D.N.y.1997), off(t, t52 tj.:to 948 49I (3d Clir.19.58t (plaintifT seeking cancellation (Fc'd.Clir.), of cert. deniecl,-525 U.S. 9:18, I l9 S.Ctt. mark could proceed under Sectir.rnll 19 and was 373. 142L.Ed.2d 308 (t998). A comperitorhas the not relegatedto a separatecancellation proceedins ..show requisitestanding provided that it can more becausethe two remedies are concurrent ana ur! than a vague or general desire" to use a name or notmutually exclusive). mark that conflicts with anotherparty,s trademark right "the *2 in order to create requisite adversarial Reed interpretsBascom as having looked to the conflict" to satisfythe requirementof an actualcase pleadingsto determinewhether the iction involves or controversy.Sturtcr Corp., 81 I-.3dat .596_97.In a registeredmark, and he argues that the court can_ considerationof the interestin promptly resolving ncltorder cancellationbecause pleadings "the the did not trademarkdisputes, finding of an actuarcon- place the registeredmark pTO in issue.The sranted troversy should be determinedwith some liberal- Reed registrationof the mark on August SI ZOOO; iIy." ld. at -59(r.Thislitigation itself establishesthe obviouslythe registration could not have beenmen- parties'deep adversarialconflict. Reed's arsument tionedin the original pleadings in this action,which that likelihood of consumer confusion m-ust be was commenced in 1996. Bascorn merely referred shown to demonstrate standing is incorrect. to the registered ..as mark as having been raised a Ae:rogroultlttt'\, 971 F.Supp. at 266 ("There rs no defense,"204 F,2d ar 335. and does not describe requirement,however, that in the contextof a coun- what, if anything,the pleadingsstated about the re- terclaim for cancellationa challengermust prove gisteredmark. However, even if Bascontwere ln- likelihoodof confusion"). terpretedas requiring that the validity of registra- tion be a matterraised in the pleadings,under the FPI clearly has an interestin Reed's ability to con- liberalpleading standards of Rulc l-5 ol' thc Fecicral tinue to claim rights derivedfrom his t-ederalregis- Rules of Clivil Plocedule,I would grant an amend- trationthat this court has determinedReed doesnot ment to the pleadingsbased on the eventsthat have have. In lntcrrrutionul Ortlct of' Job'.sDttugltter.s r'. transpiredsince the original pleadings,including Lirrtleburgcl Co.. 121 F.2(t 1087 (Fed.Clir.1984), the registrationof the mark, and the issuesthat have the Ninth Circuit had previouslyruled that the de- actually been litigated. Furthermore,Reed is es- fendanthad an equalright with that of jewelersap- toppedfrom objecting to determinationof the valid- provedby plaintiff to usean emblemon its jewelry. ity of his registrationof the mark. Having intention- The Federal Circuit held that continued federal re- ally injectedthe issue of the registrationinto the gistrationof plaintiffs mark was inconsistentwith proceeding,and having soughta ruling in his favor the defendant'srights as establishedby the Ninth basedon the PTO's action. Reed mav not be heard Circuit, since registrationsignified exclusiverights that plaintiff did not have; therefore,def'endant was

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entitled to cancellation of plaintiffs mark. Pla.tters" Moreover, purports to furnish prinm evidence the Federal Circuit found that defend_ "of facie the validity of the registeredmark in precluding rhe possibility and of the re_ 11_t,s.l1rtgrest that gistrationof the mark, of the platnttfl rn a later action against registrant'sownership the defendant of the mark, and would attemptto use of the registra;t,sexclusive rrght the regisirationas prinru to proof Jacie use the registeredmark in commerceon of its rights sufTicedto establishstandins_ /./ or ln ,11 connectionwith the goods or servicesspecified l99l Although rhis case ,rir., unJ.r'-i.-l.l_ in :\r the certificate,subject to any conditions tr()n l l l9 and not Section 1064 as did InternationaL or limita_ tions sratedin the certificute."t.5u.s.cl. l0-57(b). Order. of Job's Daughters, a cancellation proceed_ N This^Court'sInjunction, which has been rng, the same considerationsapply here. plaintifl.s aifirmed by the SecondCircuit, is inconsistentwith the have a direct and immediateinterlst in preventing termsof Reed's registration.They cannot coexist. Reed,s Reed from using the registrationin his commercial suggestionthat the court could fbrmulate dealingsand in removingthe a resrnc_ threatof its use rn lit_ tion on the registration rgationthat impacts which wcluldpermit the re_ the interestsof plaintiffs. gistration to be consistentwith the Injunctionis re_ je^cted.Clearly, Reed is not entitled FN2. The court in io registration Internetional Order ot of the mark, "The platters." Job's Daugltters Whetherhe ii enritled even noted that given the to register a diff'erentmark containing the name vagariesof the doctrine of issue "Platters" "it preclu_ is a mattertbr the pTO. sion, [is] impossibleto say that former adjudicationis an all_sufficientremedv. in itseli to preclude any attempt to use the 3. Groundsfor Catrcallatiort. registration" against the party who pre_ vailed in the litigation. 1d. n.4. Further, "[elven Itttenmtiortal Order oJ'Job's Douglt crr also estab_ though appellee might prevail in lishesFPI's entitlementto cancellationof the resis_ its defense of former adjudication, it tration of the mark, since Reed's continuedreiis_ should not have to litigate that detense -d"_ in tration of the mark is irreconcilablewith .y order to be free of appellant's registration cision that Reed retainsonly a limited right to use advantage."/r/.Given the history of "The mul_ of Platters"name and may not otherwisein- tiple litigations and conflicting assertions tert'erewith its use by Fpl and its desisnees.In_ of collateralestoppel regarding ..The plar deed, Reed's effort to reargue ttre meriti and his ters" mark, these comments are particu_ useof the registrationto supportthat argument,fur_ larly pertinenthere. ther demonstratethat cancellationof registratit)nis necessary x3 and appropriateto et'fecturt.th. decrsion Reed argues that plaintiffs nevertheless lack and protectplaintiffs' rights. A trademarkthat has standingto seekcancellation of the registrationbe_ not been registeredfbr five years may be cancelled causeReed's registration and the Iniunctioncan co_ by the court on any ground that would have barred exist. Reed'spremise is incorrect.The Iniunction registrationin the first instance.ltrternatiottul Or_ bars Reed,inter tilia, liom performingor oiherwise dar of .lob'.s Drtughters, J2J F.2d rr 109I (..For using the name "The Platters"or any other name PrincipalRegister registrations less than five years that includes"Platters" in the furnishing of enter- old ... cancellationmay be basedupon any ground tainmentservices, except that he r"y ur! the name "Herb which would have preventedregistration initially,'); Reed and the Platters"in situationsnot rn- Aitri, l.C.E. v. Swt T'ui),tutgCo., Ltd., 961 F.Supp. volving commercial recordings,and he may use 162.180 (S.D.N.Y. "Herb t991), affd, 159 F'.3d 13,18(2ct Reed of the Original Platters"without limit- Clir.1998). Only the owner of the mark may register ation. ..The '1.;u Reed's certificate of registration for it. Chien Min,q lluang v. Wei Clrcn I'-ood Co. Lrd., 84t) F.2d l4-58, t460 (t;ed.t'ir.l!)88):Hotittut'

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Ittil t'. Holidat, Ittrt.s, Inc., 534 tr.2d 312, -3l9 n. 6 Trademark (C-C].P.A.l976). Oflice on August g, 2000, resistration Registrationdoes not grant owner_ ..evidence number2.374,096. is granred,and the Com-mrssion_ ship; instead,it is only of in exclusive er of the Patentand Trademark a right to Office is directedto lqht, excludeothers". Holidut, Ittn, 534 cancel Ir.ltl this registration.The Clerk of Court is direc_ lr.ll9. Sincethe Injunctionissued in thrs case ted to certify this Order to the Commissioner establishesthat Reed does of the not have such a rrght, Patent and Trademark the mark is nor properly Office in accordancewith registeredto him and Scction I I l9 ol''fitle snouldbe cancelled. l-5.l.initecl Stares C-\rclc.Juds_ ment will be entered,and the Clerk of Court is dii_ *4 ectedto closethis case. Reed's reliance on SlmkespcttreCo. t,. Sil,stttr Corp.oJ'Anericu, Inc.,9 F.3d l09l (4fh Ctir.l993), SO ORDERED. cert. dertied,.51I lJ.S. ll2i, lt4 S.Ct. 213,t. I28 l..l,d.2d8(r4 (199.1), is misplaced.Shctkespeare held, E.D.N.Y.,2001. that a registrationwhich had become incontestable Marshakv. Reed after flve yearscould be cancelledin a proceeding Not Reported in under F.Supp.2d, 2001 WL 7()957| SecrirtnI ll9 only on the specificgrounds for (E.D.N.Y.) cancellationset fbrth in Section 1064.Section 1064 does not purport to enumeratethe sole grounds for END OFDOCUMENT cancellationof registrationof a mark that is chal_ lenged within five years of registration;therefore, the reasoning of Shokespeareis inapplicable to a registrationthat, as in this case,has not becomein_ contestable.r,Nr

FN3. Since Shakespeureis inapplicable here, there is no reason to addresswhether this Circuit would accept its reasoning.I note, however, rhat Shakespeerewas reiec- ted by the Eleventh Circuit in lt'iUicltrt Pudetr;.,GnrbH t'. Littltlirse, Itu'., lll F.3,J 1204(llth Cir.l999), which did not limit the grounds for cancellation of a mark that had become incontestable to the grounds specificallylisted in the statute and held, contrary to the Fourth Circuit, that a re- gistered trademark that had achieved in- contestable status could be invalidated based on the judicially-createdfunctional- ity doctrine.

Cottclusiott

Plaintiffs' motion to cancel Herb Reed's registra- tion on the PrincipalRegister of a servicemark fbr "The Platters"that was issued by the Patent and

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34Fed.Appx. 8 poR EDUCATIONAL USEONLY \L r PageI 3aFed.Appx. g,2o02wl- -597400 (c.A.2(N.y.rr (Not Selectedfor publicationin the FederalReporter) (Citeas:34 Fed.Appx.B,2002WL 597400(C.A.Z N.y.yyy H 110tlk94i k. Further Evidence, Find_ This casewas not selectedfor publication in the ingsor Conclusions.Most C.itecj FederalReporter. Cases Remand fclr reconsiderationwas warrantedwith re- spect to. summaryjudgment grantedfor purported owners in action for infringementof uniegistered UnitedStates Court of Appeals, tradename and servicemark for musicalgro-up, SecondCircuit. and with respectto cancellationof fbrmer g-up ,"rn_ Larry MARSHAK, HelenWilliams, Ricky Willi_ ber'sregistration of servicemark, inasmuchas dis_ amsand Five platters. lnc., plaintiffi_ trict court, in making its rulings,did not havebene_ Counter-Def'endants_Appellees, fit of out-of'-stateintervening decision in which purported owners were barred fiom assertingcom_ Herb REED, Defendant_ mon law trademarkin group's name to the extent Counter-plaintiff-Appellant. that their use had beenfalse and misleadingin sug_ Docket No. 0l-7961. gesting that those performing under group's name weregroup's original members. April 18,2002. *9 Appeal from the United StatesDistrict Court fbr Purportedowners of trade name for musical group the EasternDistrict of New york, ( Gershon,J.).T. sued former group memberfor, inter alia, infrrnge_ ChriskrphcrDonnclly, Donnelly, Conroy & Gel- ment clf unregisteredtrade name and service mark. haar,LLP, Boston,Mass. StanleyK. Shapiro,New The United StatesDistrict Court fbr the Easrern York, NY, firr Appellant. District of New York, Gershon, J., 2001 WL 92225,2001 WL 199511,granred summary judg- Lowell B. Davis,Carle Place, NY, MichaelMachat. ment to purportedowners, denied fbrmer member,s BeverlyHills, CA, for Appellee. summaryjudgment motion, and cancelledfbrmer member'sregistration clf servicemark. Group mem- ber appealed.The Court of Appeals held that re- PresentWINTIIR, POOI-ERand Il.D. PARKER. mand fbr reconsiderationwas waranted in light of Jr.,Circuit Judges. interveningdecision addressingpurported owners' rights.

Vacatedand remandedin part and reversedin part. SUMMARY ORDER

Seealso: l3 Fed.Appx.19. X*l ON CONSIDERATION WHEREOF, IT IS HEREBY ORDERED, ADJUDGED, AND DE- West Headnotes CREED that the judgment of said District Court be and it hereby is VACATED AND REMANDED IN Federal Courts l70B *947 PART. REVERSED IN PART.

l70B FederalCourts Herb Reed appeals fiom the February l, 2001, IT0BVIII Courtsof Appeals memorandumand order of the United StatesDis- I T0llVIll(l-) Determinationand Disposition trict Court fbr the EasternDistrict of New York ( of Cause Gershon, J.) granting summary judgment to 170Bk943 Ordering New Trial or Other plaintiffs; denying Reed's motion tbr summary Proceeding judgment and cancelling Reed's registrationof

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34 Fed.Appx.8 FOR EDUCATIONAL USE ONLY Page2 34 Fed.Appx.8,2002WL 597400(C.A.2 (N.y.rr (Not Selectedfor publication in the Federal Reporter) (Cite as:34 Fed.Appx.8,2002 WL 597400(C.A.2 (N.V.;y; "The Platters" service mark.r,Nr Morshqk t,. Reetl, haustedthat providesthat The Five platters.Inc. 2001 WL 92225 (E.D.N.y. Feb.I, 2001). ..The He also has no right in the name platters," then appealsfrom the district court,sdenial of his mo_ nothing contained herein shall be construedto tion to correctits July 18, 2001,judgment. For the limit Herbert Reed's rights in the name ..The reasonsgiven below, we vacateand remand in part Platters"and this agreementshall not inureto any and reversein part. party other than The Five platters,Inc. and its successorsand assigns or Herb Reed. FNl. Plaintiff Larry Marshak filed a peti_ tion under Chapter 7 of the United States Reed arguedbelow that this reservationclause was Bankruptcy Code on October 22, 2001. triggered a number of times between lggg and The automatic stay prevents Reed fiom 1999,by the cclurtdecisions in Rohi t,. Five plut_ pursuing his claims against Marshak at tars.|ttr,.,838 lr.2d 318.:124 (9rh Cir.lggg), /tobi r,. thistime. F'iyt'Plutrerslnr'.,918 lj.2ci 1439. l44l-J2 Oth Cir.l990), and Roltit,. Reed, l7j l:r.3dj3(t. j39_10 This is Reed's secondappeal from the Februaryl, (9th Clir.l999).The districrcourt found noneof the 2001, opinion and order. His first appealwas lim_ casesheld FPI had no right in the platters,thus ited to a review of the injunctiongranted by the dis_ none triggered the reservation clause. Marshak. trict court enjoining him from interfering with 2001 Wl- 668656, * 19. It then enteredsummary plaintiffs' use of The Platters name and limiting judgmentin favor of appellees.trl. ar .t2O-21.2001 Reed's right to use The Plattersname to the terms Wl- 668656. The district court also issuedan in- of a 1987 Stipulation.We affirmed the iniunction. junction,described above, and cancelledReed's re- Marshaky. Reed. l3 Fed.Appx.t9 (2dCir.lbOl). gistration of the Platters' mark. Id., tr[arshuk t,. Reed,2OOl Wl. 79951I (tr.D.N.y.Juty l l. 200t). More than thirty years after the platters,heyday, members of the group, their survivorsand a man- x*2 On appeal,Reed arguesthe district court errecl agementcompany are still litigating the question: in finding the reservation "The clause had not been whcl owns the name Platters?"The district triggered.Further, he argues,even if the previous court thoroughlydescribed the convoluted history casesdid not triggerthe clause,then FP1 r,.Monxte betweenthe parties,and f'amiliaritywith that opin- Pou'cll, 7 ['red.Appx.194 (gth Cir.200l) did be- ion is assumed.Marshsk, at 19. causein PowelLthe Ninth Circuit determinedFPI had no rights. The district court did not consider Reed is one of The Platters'fbunding members. Powell because Powell issued after the district Reed quit the group in 1969,but he continuedper- court'sFebruary l, 2001, decision.In Powell, FPI fbrming, both under The Platters name and as sued Powell for breach of contract "Herb and trademark Reed and the Platters."In 1984,FPI sought infringementof the Platters'mark. The Ninth Cir- an injunctionto preventReed from pertbrming*10 cuit held the district court erred in failing to give under the Platters'name. Reed and FPI enteredinto preclusiveef'fect to earliercases, which: a stipulationsettling the lawsuit in 1987.The stipu- lation provided, in pertinent part, that while the :stablishedthat FPI presentedand continued to "The agreementremained in effect, Reed would not use present its group as Platters" even though "The "Herb the name Platters" but could use Reed the group no longer includes any of the five of the Original Platters,"or other similar billing. It peoplewho made the name famous and that FPI alsoprovided: usedthe trademarkwith the intentionof mislead- ing the public into believing that FPI's group is ln the event that a court of competentjurisdiction the original group. As a result,the plaintiffsmay "The enters a final order with all appeals being ex- not assert any common law trademark in

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Platters" based on their prior use of the mark to reversethe district court'sdenial of Reed's motion the extent that the plaintifTs' use has been false andorder thejudgment corrected. and misleadingin suggestingthat their group rs theoriginal Platters. **3 This panel retainsjurisdiction over this appeal if it becomes necessaryto consider f'urther argu_ TlteFirc Plrrtars,200I Wl.3894.53at *1. After the ments. See Llnited Stutes v. Jacobsotr, l-5 F'.3d 19. casewas remandedto the district court, FpI volun_ 2l-22 (2cl Cir,l994). Accordingty,rhe Clerk is dir- tarilyabandoned its infringementclaim. ected to issuethe mandatenoting our retentionof jurisdiction,in compliancewith a Jacobson order On appeal,appellees argue that our previoussum_ tiled contemporaneouslywith thisopinion. mary order encompassedboth the summaryjudg_ ment decision and the injunction. However, our c.A.2 (N.Y.),2002. summary order clearly limits its review to the issu_ Marshakv. Reed ing of the injuncion. Marshak, 2001 WL 669656. 34 Fed.Appx.8,2002 *2. wL 597400(C.A.2 (N.y.)) rt Thus, the summary judgment decision is properlybetbre us. END OF DOCUMENT

The district court did not have the benefit of the Ninth Circuit's teachingsin powell when it issued its opinion.We think the district court shouldcon- 's sid,erPowell impact on its summary judgment and servicemark cancellationholdings in the first instance.Accordingly, we vacate those decisions below and remandfor reconsideration.

Reed also arguesthe district court'sJuly 18, 2001, judgmentwrongly implied that the SecondCircuit affirmed both the *ll injunction and the summary order.In itsjudgment, the districtcourt stated:

Ihe Court havingentered judgment cln February13, 2001 for plaintift.s,against det'endant,Herb Reed, pursuantto the Court's Memorandumand Order and the Injunction,dated February l, 2001 and enteredon February6, 2001, which grantedpar- tial summaryjudgment to the plaintiffs and dis- missed the defendant'scounterclaims, aflirmed by the United StatesCourt of Appeals fbr the SecondCircuit by SummaryOrder filed June 12, 2001...

Reed moved to correct the judgment to reflect that only the injunctionwas afflrmed by the SecondCir- cuit. The district court denied the motion. Because the judgmentinconectly states that the SecondCir- cuit affirmed the grant of summaryjudgment, we

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ll final determination of members, rights, within United StatesDistrict Court, meaningof stipulationof settlementbetween E.D. New york. -em_ bersand third party, which had limited third partv,s Lany MARSHAK, HetenWiiliams, Rickv Willi_ rights in name unless and until final je_ amsand the Five plarters,Inc., plaintiifs, iudicial cision was rendereddenying members'iight tn u." name. Herb REEJ, Defendanr. No. 96CV2292NGMLO. [2] Courts 106 *;1107

Nov. l,2002. 106Courts l06II Establishment,Organization, proced- Purportedowners and of trade name for musical group ure suedfbrmer group member for, inter alia, infrineel l06ll(K) Opinions ment.The L.lnitedStates Distr.ict Court tirr. the Eiist_ lf)6kl07 k. Operationand Eff'ect ern District

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l70ll FederalCourts tion for summary judgment, I T0BVIII Courtsof Appeals denied defendant Reed's motion lT0llVIII(1.) for summaryjudgment, and, in an Dererminationand Disposition Injunction of Cause also dated Februaiy t, ZOOt, enjoined Reed from interfering ..The l7OItk943 with plaintiff's'use of Ordering New Trial or Other Platters" Proceeding name and from using that name himself exceptas had beenpermitted by the termsof a l9g7 1708k947 k. Furrher Evidence, Find_ Stipulationof Settlementin th; SouthernDistrict ingsor Conclusions.Most CitedClases of Florida enteredinto by Reed platters, (Formerly 382k721) and The Five Inc. ("FPI"). The court held that the Stipulation Nonfinal Circuit Court order of remandingfor determ_ Settlementwas valid lnation and enfbrceablein iccordance of trade name claimant,srights did not be_ with its terms,and that paragraph7 of the Stipula_ come final determinationof claimant'srights when tion of Settlementhad not beentriggered by any in_ action was dismissed on remand, afier claimant terveningdecision. paragraph 7 of the Siipulation droppedinfringement claim, for lack of iurisdic_tion. x180 reserved Reed's ability to claim rights to the LorvellB. Davis.Carleplace, Ny, tbr plaintifTs. "Platters" "l name iln the eventthat a c;urt ol com_ petentjurisdiction entersa final order with all ap- T. ChristophcrDonnelly, Boston, MA, for Def-end_ peals being exhaustedthat provides ant. that The Five Platters,Inc. has no right in the name ,The plat_ " ters.' Judgmentwas enteredin this court on Feb_ ruary 13, 2001, and Reed filed noticesof appeal from the judgment, the grant of the Iniunctiontcr ORDER plaintifts.the denialof his requestlirr an inrunc- tion,and the decision. GERSH0N, DistricrJudge. While the appeal was pending, the Ninth Circuit By summaryorder dated April 18, 2002 (mandate renderedits decisionby summaryclrder in Tlrc Five issuedAugust 28, 2002), a panel of the SecondCir- Platters, Inc. t,. Powell, supra. In powell, the dis- cuit ("secondpanel") has vacated in part and re_ tnct court had grantedsummary judgment for Fpl mandedtbr me to reconsider my decisionsgranting on its claimsof infringementof common-lawtrade- summaryjudgment "The to plaintiffs, denying summary mark rights to the name Platters"and breach judgment to def'endant,and orderingcancellation of of contract.Case No. 98-CV-3112 (Real, J.). The the ..The defendant Herb Reed's service mark in Ninth Circuit x181 reversedand remandedfor fur- Platters"in light of the Ninth Circuit's decisionin ther proceedingsin the district court, holding,ittrcr The Five Planers, Inc. v. Potre11,7 Fed.Appx. i94. alia, lhat the district court should not have granted 2001 WL 3894.5.1(9th Cif.200l). Marshqk v. Reetl, summaryjudgment to FPI. The Ninth Circuit fbund 3-l Fed.Appx. S (2d Cir..2002).The parties have that the districtcourt had erred in decliningto give madesubmissions and oral arqumenthas been heard. preclusiveeffect to threeearlier cases, all of which involvedPaul Robi: (l) the decisionby JudgeLevit in Los Angeles Superior Court, Five Platters. Inc. Background v. 12319 Corp., Case No. 43926; (2) Judge Mar- shall's decision in Robi v. Five Platters, 1nc.,Case By Memorandum and Order dated February l, No. CV 84-3326,Central District of California;and 2001, Marshsk v. Reed..200l Wl- 92225 (3) Judge Marshall'sdecisions in Robi t,. Bennett, (E.D.Y.\'.2001),this court granted plaintiffs' mo- CaseNo. CV 93-4546.Each of thesedecisions had been addressedin this court's Memorandumand

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Order of Februaryl, 2001. The Ninth Circuit opin_ group was the original platters." Id. ion statedthat those decisionshad established 7 that Fed.Appx.at 7c)6n. -5.2001 FPf had engagedin misleading WL 3994-53at conduct,and ir ad_ t'I n. ,5. dedthe following: FpI's counsel provided the court with a transcriptof the clral argumentbe_ fore the Ninth Circuit, which this court has As a result,the plaintiffs may not assertany com_ examined. Counsel did acknowledse mon law trademark in ..The platters" that ba.sedon FPI's group never held ..fn" their prior use of itself out uI, the mark to the extent that the Platters plaintiff's' Since 1970" or some similar quali_ use has been false and misleadingin fication as to time fiame, but, in this suggestingthat their group is the original platters. court's view, did not characterizehis cli_ Any use identilying the group u. ..Th" platters,,, "misleading" "The ..The entsas thepublic. Five Platters," Buck Ram platters,,,or "The platters" Original is false and misleadins On his initial appeal to the SecondCircuit. Reed under those prior decisions. Thus, unless th; advisedthe court of the Ninth Circuit,spowell de_ plaintiffscan presentevidence that they used the cision,and the partiesargued its impactin the case. trademarkin a way that was not false and mis_ Reed also requesteda stay of proceedingsin this leading (e.g., by identifying the group ..The as court on the remainingunresolved issue, plaintiffs, Platters Since 1970" or some similaily distin- requestfor cancellationof Reed's servicemark in guishinglabel). they cannotassert a common law "The "The Platters," pending the Second Circuit de_ trademarkin Platters." cision. Reed based his requeston powell, among other reasons.By order dated May 23, 2001, I dir_ 2001 WI- 3894.53.at ,r,1.The courr ..for remanded ectedthat plaintiffs'applicationbe held in abeyance an evidentiaryhearing as to whether any of the pending the Second Circuit's decision.The Ninth ptaintitfs'use of the mark was not false and mis_ Circuit deniedxlS2 FPI's requestfbr rehearingin leading,"id, but in footnotesindicated the court's PowelLon May 24, 2001. FPI's rehearingpetition belief that it was "unlikely" that the plaintitfs included a requestthat the court delete from its would be able to presentsuch evidence,and stated opinion the sentencethat, under the specifiedearli- that, if the district court's ..The denial of summaryjudg- er decisions,any identificationof its group as ment for the def'endantshad been betbre it, the pan- "The "The plat- "would Platters," Five Platters," Buck Ram el "The be inclined to reverse"and grant sum- ters," or Original Platters"is false and mls- mary judgment dismissing FPI's common-law leading.This court and the SecondCircuit were ap- trademarkclaim.r'Nr Id. 7 Fed.Appx. at 796 nn. 5, prisedof this denial. 6,2001 WL 389453at *1, nn.5,6. The district court was directedto grant summaryjudgment to On June 12, 2001, a panel of the SecondCircuit the defendantson the trademarkclaim if plaintiffs ("first panel") affirmed my decision "present in a summary could not evidenceof non-misleadinguse order, l3 Fed.Appx. 19, afier consideringReed's "that as definedby this order and the earlier decisions," arguments the District Court erred(l) in hold- or to submitthe claim to a jury if evidenceof non- ing that he lackedexclusive rights to 'The Platters' misleadinguse was presented.Id. at 7 Fed.Appx.at servicemark; (2) in holdingthat the 1987Stipula- 'k 796 n. 6. 2001WL 3894-53at l n. (r. tion does not violate public policy; and (3) in con- ferring on plaintitfs the right to use 'The Platters' FNl. The opinion also statedin a footnote service mark." Id. ttt 20. The tlrst panel noted its "conceded" that plaintiffs' counsel at oral jurisdiction under 28 l.J.S.Cl.ss 1292(aXl) to hear "that argument they have never represen- the appeal from the grant of an injunction and to "the ted themselvesin a way that would not consider merits to the extent necessaryto re- misleadthe public into believing that their

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view issuanceof the injunction." The first panel the district court found Reed's arguments..to ordered the case dis_ be without merit,,and missed atfirmed "for without prejudice for lack of feder_ substantiallythe reasonsstated by the al jurisdiction by order entered on Novem_ District Court in its thorough and well_reasoned ber 8, 2001. Reed's opinion."The first panel counsel maintains also noted that it had con_ without side.red"the sontradictionthat the action was summarydisposition by the Ninth Cir_ dismissed becauseFpI in the pretrial order cuit" in Poyvell,and found that, while "may that decision abandoned the trademark shed some additional claim, leavrnc light on the casesdis_ only state cussed law claims, but neitherparty hai by the District Court in its opinion, we do suppliedthe court with the pretrialorder or not find that it clearly shows that the District Court any decision or clrderof the misinterpretedthose ..We district court cases."The court added; pertaining express ,s to thedismissal. no opinion regarding powell ef-fecton the partles'rights once all appealsin that matter have The plaintiffs in the dismissed beenexhausted." Id. f-ederal action, FPI and personalityproductrons, Inc. (PPI), immediately commencedan In light of the first panel'safflrmance, this courr on actronagainst Monroe powell and others July 11,2001 orderedcancellation of Reed's "The ser_ in Calitbrnia Superior Court, Los vice mark to platters", primarily .. because AngelesCounty (CaseNo. BC 262lgg), Reed's continuedregistration of the mark is irre_ for breach of contract and inducing concilablewith my decisionthat Reed retainsonly breach of contract. The det-endantsflled a limited right to use of .The platters' name and a cross-complaintagainst Fpl, ppl, Jean may not otherwiseinterf'ere with its use by FpI and Bennett and others seeking declaratory its designees....Since the Injunction issuedin this and injunctive relief and damagesunder case establishesthat Reed does not have such a Section 43(a) of the Lanham Act, l-5 right the exclusiveright ft.e., to excludeothersl, the LJ.S.Cl.S ll2-5(a),and statelaw, claim_ mark is not properly registered to him and should ing, among other things, that powell had be cancelled." Marshak v. Reed.2001 WL i9957I, common law trademark rights in ..The at t'3. Reed appealedfrom this decisionand fiom Platters" name and mark and that the the final judgment entered,and from a subsequenr plaintiffs had wrongfully interferedwith orderdenying his motionto amendthe judgment. those rights. Plaintiffs filed a motion for summary judgment on the cross- On November8, 2001, after the Ninth Circuirs re- complaint on September 5, 2002; this mand of Powell to the district court, the district court has not been intilrmed of any de- court dismissedfbr lack of subject matterjurisdic- cision on the motion, or whetherthe pre- tion.rNr viously scheduledtrial date of November 13,2002has been adjourned. FN2. The district court docket sheet in Powell indicatesthat, following the Ninth *183 The secondappeal to the SecondCircuit from Circuit's remand, the def'endants filed a the decisionsand judgment of this court was heard motion to dismiss for lack of federaljuris- by a different panel, which held that the merits of diction on August 22, 2001, the plaintiffs this court's summaryjudgment decisionwas prop- filed papers in opposition,and the district erly before it, notwithstanding the first panel's af- "summary court denied the motion to dismiss and firmance, becausethe first panel's order scheduleda jury trial; that the Ninth Cir- clearly limits its review to the issuingof the injunc- "did cuit denied a petition for a writ of manda- tion." 34 Fed.Appx.at 10. Sincethis court not mus; and that, insteadof conductinga trial,

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have the benefitof the Ninth Circuit,steachings in Judge Levit's findings canceling Defendants, Pov,ellwhen it issuedits opinion," ex_ the secondpanel clusive rights to the name, remandedfor this ..considerpowell ,s the Court cliclttot nnke court to im_ att,u pact findings either approt,irtg or tlisapprovutg oJ on its summaryjudgment and service mark " IFPI'sl use of the trcmte (emphasisuOa"O;. nnO cancellationholdings in the first instance.',1rl. JudgeMarshall's April 3, 1997decision in Robiv. Betutett ..that The expresslyallowed FpI to claim they secondpanel also reversedthis court'sdenial of have common law rights in the trade name ..I.he Reed's motion to correct the judgment and directed " Platters' as long as it did not claim that those that the district court judgment be corrected to re_ rights stemmed from the previously_invalidated flect that first panel affirmed only the Injunc_ .the federal registration,any assignmentoi transferof tio.n,not the grant of summaryjudgment. However, rights from Robi (not from anyone else) that the it is noteworthythat all issuesd-ecided in the Febru_ court had previouslyinvalidated, or any use of the ary l, 2001 Memorandumand Order,which granted "Platters" name prior to 1989 that had been found plaintiff's' motion for summary judgment and to be false and misleading in Robi //.This careful deniedReed's motion fbr summaryjudgment, were qualificationof the parametersof the court,srulins essentialto issuanceofthe Iniunction. would have been superfluousif Robi II had held .,platters" that FPI had no right to use the name,or that all prior usesclf that name by Discussion Fpl were mrs_ leadingto the public, statementsthat are not fbund in Robi II. The secondpanel has directed the court to address "teachings" ',impact" both the and the of powell *184 "impact" on As to the of powel/, the inquiry is the summaryjudgment and service "a mark cancella- whetheror not that decisionis final order with tion decisions. all appealsbeing exhaustedthar providesthat The Five Platters,Inc. has no right in the name .The lll Having caretully reviewed " the Memorandum Platters' within the meaningof paragraph7 of the and Order of Februaryl,2001 and the earlierde- Stipulation.If so, the Stipulation would not bar cisions discussedin that decision in light of the ..The "teachings" Reed from resuming use of the name plat- of Powell, I adhereto my prior determ- ters".If not, the Stipulationof Settlementshould be ination for the reasons set forth in the Memor- enforced for the reasons set forth in the Memor- andum and Order and find no error in my analysis andum and Order. I conclude that Powell is not a "final "no of the three cases that PoweLI specifically cites. order" that FPI has risht" in the name Without repeatingthat discussionhere, I note that, "The Platters". in Robi v. Five Platters, 1nc.,Case No. CV 84-3326 (C.D. Cal., Jan.9, 1989)(Robi 1/ ), JudgeMarshall The specific relief ordered by the Ninth Circuit filund that the earlier California state court action showsthat its decisionis not a "flnal order" within involvingRobi and FPI decidedby JudgeLevit was the meaningof Paragraph7. The "adverse court reversedthe to defendants'claim of ownershipof their districtcourt's order grantingsummary judgment to trademarkin that the court determined that defend- the plaintiffs, and it remandedfor an evidentiary atts were not tlrc only parties entitled to use tlrc re- hearingand also possiblya jury trial to determineif gisterednante and, accordingly,denied injunctions FPI still had rights in the "Platters" name. prohibiting such use by others, including IRobi]" Moreover, the court affbrded FPI the opportunity (emphasisadded). Judge Marshall's 1996 decision upon remandto presentevidence that its useof the in Robi v. Bennett,Case No. CV 93-4546 (C.D. mark was not t'alseand misleading,and the court Cal., June 28, 1996) quoted this language fiom noted that it "would be improper" to rule against "Although Robi II, adding: the Court did adopt

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FPI's common-lawtrademark claim without afford_ ll3, at 1046-47(2002). The doctrineof iudiciales_ ing it that opportunity,since FpI had not been re_ toppel is inapplicable;among other things. Fpl is quired to presentevidence as to its use in the dis_ not shown to have adoptedinconsistent positions trict court. rn Powell. 7 Fed.Appx.at i.96 n. 5, 2001 theNinth Circuit *l andhere. WL 389453ar n. 5. paragraph7 explicitly re_ quiresa final determinationthat FpI has no rights, [-5] Nor did the Ninth Circuit order becomefinal which the Ninth Circuit, despitelanguage strongly when the action was dismissedon remandfor lack adverseto FPI's claim, did not hold. Reed ,,[t]he argues of jurisdiction.Reed concedesthat fact that that Paragraph7 of the Stipulationdoes not "holding" r""quire FPI abandonedits LanhamAct claimsacainst pow_ a that FPI has no rights becauseof the "provides". ell afterthe Ninth Circuit decisionis entirelyirrel- use of the word But the languase "orderof evant to the finality of that *185 appellatede_ Paragraph7, with its requirement of a fii'al cision." The Ninth Circuit decision,of course,.,can with all appealsexhausted, establishes the parties' never be reversed, vacated or otherwise changed," intent that the agreementnot be undone simply as Reed asserts,particularly now that the actionhas basedupon statementsin an opinion that remands terminated,but that does not transtbrma decision fbr furtherproceedings aimed at final resolutionof that ordereda remand to determineFpI's riehts into theexistence and scope of FpI's "final" rights. a order which determinedthat Fpi had no rightswithin the meaningof Paragraph7. l2lt3lt4l Reed also argues rhar the Ninth Circuit decision "final" became when FPI's petition for re- Additionally, the informality of the powell de- hearing was denied and when FpI did not seek a cision, a brief discussion in a summary order, writ of certiorari fiom the Supreme Court; and he against 'Judicial a backgroundof 30 years of litigationand argues estoppel"fiom FPI's having unsuc- conflicting decisions,and the decision'sambiguity, cessfully sought rehearing.These argumentsare counselagainst interpreting it as satisfyingthe re- without merit. A Circuit'sdenial of a petitiontbr re- quirementsof Paragraph7 of the Stipulationof Set- hearinghas no precedentialvalue and is not a rul- tlement.The order states,in one sentenceof text, ing on the meritsof any issuebetween the parties. that plaintiffs may not asserta common law trade- y. (lontnt'r,8.59 "The kurtlretlr F.2d (r43,648 (9th mark in Platters"based upon prior use to the Clir.1988), citing with approval ln r<: Orutul Jttrt' extentthat the prior use has beenfalse and mislead- Ittvesrigution,542 F.2d 166, 173 (ld Cir.l976), ing; in the next sentence,that any useof "The Plat- cert. denied, -129 tJ.S. 1041, 91 S.Ct. 7-5-5,50 ters" and other names plaintiffs had used was false L.Ed.2d162 (1911) (denialof petitiontbr rehearing and misleadingunder the prior decisions;and, in "imply or rehearingen banc does not any judgment the next sentence,that unlessFPI can presentevid- "cannot on the merits and has no jurisprudentialsignific- enceof nonmisleadinguse it asserta com- 'The " ance"). And the denial of rehearingcannot make mon law trademarkin Platters.' Thesesen- "frnal" a decision that was not otherwise final. tences,upon which Reed relies,are quoted in full Likewise,the denial of certiorari,or the failure to supra at pages 180-81. While the Ninth Circuit's seek certiorari, f'rom a nonfinal decision or order languagecan be read, as Reed argues,as express- does not transform it into a final order. The party ing the opinion that, whateverrights FPI may have "Platters" that has not prevailedin the Circuit may againseek to use with qualifying language,FPI has "The Supreme Court review, or request it for the first no right to use the name Platters" without time, as part of the appellateprocess following a qualifying language,the languagecan also be read districtcourt's decision on a remandthat the Circuit as leaving open the possibility, however remote, has directed.20 C. Wright & M. Kane, Federal that FPI can establisha common law trademark "The Practice and Procedure:Federal Desk Handbook $ risht to the name Platters".

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In sum, the limited natureof the actual holding of Powell, the fact that it remandedfor a trial, and the ambiguitiesin the languageupon which Reed re_ lies, persuademe that powell does not meet para_ "final graph 7's requirementof a order with all ao_ peals being exhausted"which determined "no that FirI has right in the name .The platters.' " .fhere_ fore, Powell does not alter my previctusdetermina_ tion. In view of this conclusion,it is unnecessaryro considerwhether, under Ninth C.lircuitRule 36-3, the powell .unpublisheddisposition in is properly usedas precedentin thisaction

Conclusion

Upon reconsiderationas directed by the Second Circuit, this court adheresto its earlier decisions granting summaryjudgment to plaintitfs, denying summaryjudgment to det-endant,and orderingcan- cellation of the defendant Herb Reed's service "The mark in Platters." Those decisions are hereby ordered reinstated.An Amended Judgment will be entered which will reflect the amendmentdirected by theSecond Circuit.

The Clerk of Court is directedto transmita copy of this decisionto the Clerk of the SecondCircuit and to arrangefor transmissionof the record as supple- mentedto that Court.

SO ORDERED.

8.D.N.Y.,2002. Marshakv. Reed 229F.Supp.2d 179

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Westlaw 87 Fed.Appx.208 FOR EDUCATTONALUSE ONLY 87 Fed.Appx.2o8, 2004 wL 24ss80(C.A.t y.)) Page I (Not iN. Selectedfor publication in the feaeraiReporte.; (Cite as: 87 Fed.Appx.20B,2004WL tt5d0 (C.A.2 (N.v.y;y H LanhamAct, This casewas not selected 15 tl.S.C. nsI12,5(a), against Reed's fbr publicationin the use ..The FederalReporter. of the servicemark, platters.,,In a Febru_ ary l, 2001 memclrandumand order, the district court granted summaryjudgment in favor of ap_ pellees,denied Reed's motion UnitedStates Court of Appeals, for summaryjudg_ ment, and enjoined Reed from interfering witn SecondCircuit. ..The ap_ peflees' use of the name platters.,," Larry MARSHAK, HelenWiiliams, Rickv See Mar- Wilti- slnk v. Reed, No. 96-CV-2292, ()2225, ams.and Five platters, lnc., plaintiffl_ 2001 WL 2001 tl.S. Dist. LEXTS 880 (U.D.N.y. Counter_Claimants_Appel lees, Ireb. I. 2001). The injunction barred "The Reed from using the name Platters" except as permitted Herb REED, Def'endant- by the terms of a l99l Stipulation of Counter-ClaimantAppellant. Settlement ("Stipulation")entered into by Reed and The No. 0l -796I ( L), 0l -9227(CON). Five Platters,Inc. in the Southern District of Florida. *64-66,2(nl Seeid.at Wl . 92225.The Feb.10,2004. Stiputation includedan escapeclause reservingReed's ability "The ..in to claim rights to platters"name the event Appeal from the United StatesDistrict Court for the that a court of competentjurisdiction enters a final EasternDistrict of New york ( Gershon,Judge). *209 order with all appealsbeing exhaustedthat UPON DUE CONSIDERATION, IT IS H-ENEEY providesthat The Five platters,Inc. has no right in ORDERED, ADJUDGED AND DECREED rhat 'The " the the name Platters.' See Marshak. judgment of the 22g District Court is hereby AF_ F.Supp.2dat 180. FIRMED. T. (lhristopher Donnelly, Boston, Massachusetts, While Reed's appealfrom the district court's for Appellant. Feb- ruary l, 2001 decisionwas pending,the Ninth Cir- cuit issueda summaryorder in Irirc pluilttt.s,Irtc. t,. Lorvell B. Davis, Carle Place, york, New for Ap- Powell, 7 Fed.Appx.194 (gth C'ir.2001),which im_ pellee. plicatedthe rights of The Five Platters,Inc. to the "The mark, Platters,"id. at 795. and might tngger the escapeclause. On June 12,2001, we affirmed Present:WINTIR, POOLI]R and Honorable B.D. by summaryorder, but only with respectto the in- PARKER,Circuit Judges. junction because no final judgment had been entered in the case. Scc Marshak v. Rcecl. l3 Fed.Appx.i9. 20 (2d Cir.200l).With respectro rhe "express[edl Ninth Circuit's order, we n<_ropinion SUMMARY ORDER regardingPowell's effect on the parties'rights once all appealsin thatmatter have been exhausted." Id. **1 Herb Reed appealsfrom Judge Gershon's or- der reinstatinga grant of summary judgment in fa- On July ll,2001, the district court orderedcancel- "The vor of appelleesLarry Marshak, Helen Williams, lation of Reed's service mark to Platters."See Ricky Williams, and Five Platters,Inc., and cancel- Marshak v. Reed, No. 96-ClV-2292, 2001 WL "The ling Reed's rights to the service mark, Plat- 799571.2001tJ.S. Dist. LEXIS 10429at 'rl0-13 ters." (E.D.N.Y.July ll, 2001).Reed appealed again. We then vacated the district court's decision and re- Appellees brought this action to obtain declaratory and injunctive relief under Section 43(a) of the

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87 Fed.Appx.2O8 FoR EDUCATIONAL UsE ONLY 87-Fed. Appx . 208, 2004 wL Page2 249s80 (c-q. z iN. v. ll (Not Setected for publication in the ieae.j R"po.te.; (Cite as: 87 Fed.Appx.2O8,2004 WL ZaSsdOrc.A.2(N.y.;;; mandedthe case for "the reconsideration,directing that disrrict courr should considerpoweltl i impact fonthe e_ssape clause]... in the first instance.,, Mar- shak v. Reed.34 g, Feci.Appx. t0 (2d Ci..:OO:f.O" remand, the district court held that powell did not tjlCS".r the, escape clause in the Stiputaiion. See !!ar:la!, 22eF.Supp.2d at 185. Reea'ffiareo ro. thethird time.

rhegrant I11]^:.r.1'ew of a morionfor summary Juogmentde ttot,o. Mttrio y. p & C Fotx! klttrk<:ti, lnr:., 313 j()3 lr.3d 7.58. (2d Cir.2002).We affirm tbr substantiallythe reasonsstated by the district court in its Februaryl,2O0l and November1,2002 orders. See Marshqk, 2O0I WL 92225,2001 U.S. Dist. LEXIS BE}; Marshak, 229 F.Supp.2ct flg. We have consideredReed's remaining'arguments andfind themtcl be withoutmerit.

c.A.2 (N.Y.),2004. Marshakv. Reed 87 Fed.Appx.208,2004 WL 249580(C.A.2 (N.y.))

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UYITEDSTATES DISTRICT EASTERI\ COURT DrsTRrCT o F-ft ;;;RX LARRYMA RsnA;;;;ilii,;;ffi;, "- RICKY \VILLIAMI and THE FIVE PLATTERS, INC., Plainriffs,

. against_ I.YJTINCTIO,T

HERB REED; e6 cv 22e2(Nq (MLO) Defendant.

-__--__-_- .___------x CERSHON, UniredSlafes Disrricf Julge;

Thecotrrl having grantcd plaintiffs'rnorion for surnmsry iudgment,incrudipg lheir rcquesf for injuncrivcrelief pursuant to FederalRule ol'Civil Procedurc 65,bymernorancrurnanrJorder datedFebnrary 1,2001:

A. DefendantHerb Reed, his agents andaltorneys, and all tlose acringin concerlrvilh him archereby enjoined frop;

l) illlerfcringrvilh thc rrseb1'pr;rirrrifl-1'rre FiYe r)rirrrers, Inc,(,,Fp[,,), nrrd iF agenrs, Iicenseesand assignees incrrrdingbut not rimitedro prainriffLarry Marshak, of rrrendme ,,The ": '_1_::" g JIar-llglgdc$rPla{lsF".'-I_._.11::lecincany.serrorrh_rn_parasraph-B; ::":: ' -- .-t 7)-itilerfering e with lhc useby plainriffsHelen wiiliamsahd RLky wiiliarns(,,the wjrriams plaintiffs")and each of theirtgents, ljcensecs and tssignees includingbur not lirnircdto Larrv "The Marshak,of thenarne Jeny Williamsptatrers,, rvhilelhe.yldl-iCmC plaintiffs 3gejcri*g_*rthhe__ agrecrncnt, license,authorization or consenlof FpI;

3) performingor otherwiseu5ing the name "The pratters" or anyother hame that incrudes "Plaltersn in thefurnishing of entcrlainmcntservices, exccpt as specificallyscr forth in paragraphB.

40862 ruuS 4:4/Ptil F',. L . tvl0 0 r e 1\A,Jtt4

B. DefendantHerb Reedis not barredfrom: l) performing or entcrrainingin anyplace andrr.ith any mediur4 oih.r rhon commercial rccordings(including phonograplric recordings,audio or r.ideo.recorclingsof any kind and contnrercials)as"Herb Reedanrj lhe Flalters"in conlornrance u,ithreasonabre stancJards usecr and setby FPIand comrnun jcated in rr,riling to defendrnrHerb Reed; 2)performing or entertaining in anYform or in any ,,Herb rnediurnas forHcrbcrtlReed of theOriginal Platters" ,,FIerb or as [or Herbefl]Reed,,.

SO ORDERED. /,hdLt* NINA GERSHCiN UnitedStlfes District Judge Drled: Brooklyn,Nerv york FebruaryI,200I

A0863 EXHIBIT L .r!il.r/. luuY 4:4/l[1 H.C.Moore - f,10,92241,, 4

AGREEMENT This agreernerf ctrective * of the fi -dsy ofDac-.',ber 1996,by and betq/eea:-l:i trive'Pl^Ettef;s'rn1' ': ?i"ttoos'1,_ffibrni" -'T: corporetion*iti,'iiJp.i"rrp"r pleceof busincsoet 1450 vog'E, w*iaibpr'd. porgonarity ProductiqnsJot'lgmnockDdvg !," .CtT*oatrt)')' t Ncrad;corporationwith its pti""iilolace of business 8t l4J0 constock Drive,r-es vegss,Nwada q?rot, andLar.1 Mershak individud (.Marshrk'), an residiugar69-4I 26Irt SrrEet'Floralparlg blf I I004. ' WI'IEREAS, io APtil 1982Tbe FivcPlrrters wers granted .rjudgrnsnl rgsinsr Tonv willin" in tbe Supreme 'T'Iew Cow of tf,e Starcof Ne; fork for liee/'yort Courty (the York Cotrn'l witichjudFntorpemaoeotly enjciinedrony Williamsfrom.dng ftre na.ne'nThePlaftcts," tt'd

uttIREAS, in Jauueryl9t8 the tlnitel.StetesCoun of Appeaisfor the\inth Circuit ia rowrsing a decision or'tho urritcd statesDi*ria Courr, (D. cA I9t6) ruted tbat the New judgment York Court agginstTouy'ltillhms wts larcr in time than judgncut thrrc a California 41d theNcw york Cout judgnem would d", ,sd \I/rrEREAs- or Iune 9. I9t9 in the caseofRobi v. Jeilr Eennecet al, the UuitedStates Distfict Court fprtlre CeEEsIDigtict ofcalifornia ruJedtbat the Fiveplatrcriqrer prchibited&on commelfingto otherrthat Robi hadao righrs10 the Dsrue.The platters,,, 8xd

WHEREAS, the United SEtcsDinrict Coun fo; tbe CentralDimia of Califomia latcr aruardcdthejudgalat EEEinFttheFive Plsttersto catcel the Five plsircrs trade'ark for Thc Plstmr'f rnd

WIIEREAS,lWafst8kiD 1995crrere& lorL.r. dccriJe agteerhgru with Heleu WIIisru, Ridcy lViilirnc sd tbc EststeofTony WilliErs ro usethe naroe'The ptartet=", and (Ioay Vtrlians Phttsrt sDd

wrIERE 4"S,otr Jure 28, 1996in Robiv. Beu.aett (D. cA June28, 1996)the Uuitd StatcsDiffia Courtforttre eqffial Disrria of Californiaheld that itr its carlier decisiouirvolvbgtlrcFnrc Platterr it did'trotmake a dacrmination thal the Dsfendrnrs (FivePhtters)were not cnddcdh',:lett' 11-6 r1 Dlcnenand

WIIEREAS, tleFrvePlafien audPenonality ard l\dershk desireto cmqr into an lgrccrndrt resolving tleir rlifFsTcnccs;

Now, THEREFOR& in conridention of tlre foregoingsnd ofrhe Errtrrs!;:omisos hacinaftcr set forth the partier E€reerr follows: or: L @ rLlUl 1:4rplvl ri,u,[400re l,|a,v111P, I

l. P{YI{ENT oF LE*AL F.EES, Upoutbe signineof thisAgreemen! l'f.rsbsk agreesro ps,y;o Mcbi,clMaciit in Tnrs thc surnof 6r log&lfccl.

2. vAqr"tTIN,c OF JPszIrrpG{ENT Five Pbtters-86d-Ioan 8qo egteeto wcsr€ thGinjuucdon prwiourly grrecd tbc by supresrocourt for the stto of New vort nr Njw vof, cousty ,g.fort'ft wfirarn, to sld ""*t{: snyppl* nece''''y ro iffie tbdi"ago*iv;$ed aod-to o'thorrrisccoo?rrat' with -vusrk rad hir coullcl iir'aohg ro 3. FivePhttere rad Penoaalityagrco Dot tthtffirFsy with rle grut€d liccole bytho Ertsto of TooyWilliamg ard l{eleo Wiltiarng BrdRjcfu w1garu io Marshnf.lC usc thg nrr'6 -ftcPlfttCrg,"

4, In the eve$ thEt& courtof cornpctcntj*iroiqtioo dgrorminestftat Fivs platrers 'Tho or Personalityis not eatitledto us€tbe name pldters,',Merstu! sbaltgrant to Frve psl36nqiity PlEtten*6 a! s(cluEivsnonrensfc'rsble nrbliceuse to usethl naneru Phfierlt for a tcrm of 6ve yeerswith fwo, 2 yceroptioff. This rublica15eshEll bc grsqted to FivoPlattcn andPanonrlity byMar$luk d c sostof tzSO.oOpErpcrfomurco. 5. GRAITToF LJ-CEI{SEro r,faRsr{AK Five Plancrr and Pcrtulity hacby grust to lvlar:shnlra [censefor a term of fve "Tbc y88n with fsto,2 yecr epdsusto use the narnc Plattsr8-" Thc liccoso fre sbrll bc 02'000.00 (Two ltou*ryl,DollsrE) pcrEoutlL withthe 310,000 psyrnd in Srtioa I sPPqcdtowu-ils'.!r Srst fvc scst!.; of this liocnsc.In aCCitic:'.,ttis licwrsq-ty bcu tqqrdnd?d hvlv{rrsbak upo! Mttlhsk dving Frve PIBttst lnd Penoudity !D( (6) urolils Wnrteoqgo!/n. fn the event t'tarehak elects to termlnate this license provlded ebover --1t lg understood ehat llarshk w1ll not f,ierd a 6.ou+tlTr'sTAtrDABps Platters group wlthout flrst 1'' ff3'*l*:tins lvf.rshalr bas provided FirroPlsttorr, Luc.rnd Fivo Plrttlr+ Luc.br! providd L'Ierbrlwith s vidootli;d ugryle oftlqb rcrpcstiv" group'r perforauf,cci. gorl pcttior rSrqc tbtt thc quaiity q$iqghbtldt pqfornslce ir of a high rtandardthar nedr the qudity rtuClr$ oftbC6tbTi' ,

?c {'oF ( W

-: Exhibit ExhibitD C ExhibitE ltrUY 4:1UPlvl H.U.llloore I'la.t1/1 t. b

ra_menuc.leour of e.odrcan -B ;; fh.crg as ute Efln tqr:rln "i* roco op€rars i" tx"il;;;;:; fi; ;fr";rffiffiAa. .,,=

,"" "J|ffffi?*ffie irnerpretedaccor,Jins tothe rcws of tho 9. -r'ais constil633-'f'.';-l Asreemal a4ershakrelating bcrwcerplatlers andpergonality ,o tl. ,tw"i,r", u:d :ubject,"ril1..g uy .irr* p:rnyh6r€ro ora breach pcr'umrr ;#"HH"rtt.uH#,X':""^:ttr-"'j.q;;;JrHbsequcotbreocb.aorasxorriricadonofsuch provision-. r ru_;r;;frl;:;T::fl..tnffih?'. nodifisd'or s'nycovenalf or provisioii.r*r*riiot^rii.p1'ry ansgreer:rent in*rjrinc.

IN q[TNEss wr{EREoF, theparties hereto rr havecaused this .Agreementto be of tbc day andycar f,rst abo"i *ftr;' executed

LARRY I{ARSHAK

PERSONAIIY PRODUCTIONS,INC,

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P(= ( sF ( EXHIBITM J'_rr,ti.2Lrt9 4:4gPl/ H,c,Moore llo.9'1 11 l , t Lowel.rB. Davrs ATIORNEY AT LIW

oNE Ot-o coulJTRY no^o CIRLE PL.AC€.xEyyv9nK r rsle TELEFHONET -_. ut 6I ?r6.71a1 Aor{lTft: r,_;rrgr aen TELECOP|ER:tlt Ot r4.r,gIoA Apri L 26, 1996

M=, fr,rc:

De;:. :4T- Williams:

This letter rs rnt€nded to anend prst/i'ousrv the rlcense agieement entered lnto among Rlclcy wlr].iamJ;-ir;i"; nlrrrlanrs La=1r Marshal< and ... __ r t is ny understanding that you and previousry ]rcur mother h.rr" entered lnto a *ransfeia-ble lliense is;"*o*t wlth Le==y Marshak for the perfoxnlng "Tr{E " name ?omy frIl,r,raus Pr ATTERS ( Pr,ATTEas), -wlth the [suat and custoeary qua].lty c:ln'E;o1 slandards- In considerafion for the foreg6tng !dr- Marshak pr=tr{ cusly agrre.d to pay you the suu of s250. oo For Each and €rr-ElJ pgrfol1ndnCB.. - ...... ,_ . . : . -' .:::.'-'-.- .._--t:;_::.. ., '" ' , .,.i-'l: .:i:rr: ii*i,r;1*',:._!__$.., , It Is mY understanding that yau trave euthorizia l.lr.-l.rarsha_l<, .t= .have th.:-s office prepa=e"-tlrts. letter, on. be.tralf_ of _the_.,.::Af=,,., 1r ronsors,- which the partles lntend to reJ.y upon as "ro u"iidr-";;;: to tne prior license agtreement, by adding lhe additloneL terms- ,..-1' he.-e:.nafter set forl-t..- ,/

rn consideratlon for Marshak undertaking to pay all legal fees,. costs and expenses, arising out of Ms-both-aefenalng a11d br:nging actlons to enforce, protect and secure the narne, you ha're agreed to extend the term of the license agrreement foi ftve ItAi r< l----.

If the foregoing accurateIy reflects your agrreenent .urd ls sat:sfactory to rzou, please acknorrJ-edge same by afflxingr yaur sionature to this letter and returning a copy of same to eittrer Mr. Marshak or the undersigned. Very c.uLy yours, AL- Larry Marshak

Hel.en ttll.].l-i.ams EXHIBITN Dafe; June4s, aooo To; LarryMarshak From: Helea Wiltr'auls Re: Fr.nalpayrnenf,onplafirersnans nanofcr Thrs lrafl con-firrn, wl'ohsharrcansnr ute wrrrianrs'ilaii;:n::r.*dil;",ff;:ffi:T*fjffl:T:i"tffiirH'rr$-36'J50'00;i[l]*****i***i****ili,m* tbc.raranceorrhe three,yrlrbhe?er;ffi #i.ffi1;:l#,ffij.,yil;;;",,.Ttri:d",;;;;;;mydearh, trmesanaudltyfo, rh;;;;;ffi;n:bnm 5turnay ur'rire d;"##ilirprutt"", ,,pto

Iavy MarEhA