Trademarks/State Laws Another Los Angeles doo-wop group, the Coasters, first performed together in 1955, Federal Plaintiff Challenging and this group also experienced significant turnover. Former Platters member Gunter ‘Truth in Music’ Act Was Entitled performed with the Coasters from 1958 to 1961. to Attorneys’ Fees In 1963, Gunter split off to form another Coasters group, usually known as “The Fabulous plaintiff challenging a state’s “Truth in Coasters.” Gunter was murdered in 1990 but Music” statute in federal court was a several of his fellow band members continued to Aprevailing party eligible for an award of use variations of these names. attorneys’ fees, the U.S. Court of Appeals for the In 2007, Live Gold Operations Inc., an Third Circuit ruled Aug. 5 (Singer Management entertainment management company, was Consultants Inc. v. Milgram, 3d Cir., No. 09- managing two acts performing under the names 2238, 8/5/10). “The Platters” and “The Cornell Gunter Vacating a district court’s refusal to Coasters.” Live Gold planned a concert featuring award attorneys’ fees, the appellate court noted its Platters and Coasters to be held in Atlantic that the lower court had issued a restraining City, N.J. order preventing the disputed statute’s enforcement, and that the state attorney general New Jersey Statute. Jon Bauman is a had agreed to accept the plaintiff’s interpretation vocalist who from 1970 to 1983 performed with of the statute. the musical group Sha Na Na under the name A dissenting opinion rejected the court’s “Bowzer.” For several years, Bauman, as ruling, emphasizing that the court never awarded chairman of the Vocal Group Hall of Fame’s judgment in the plaintiff’s favor, and thus the Truth in Music Committee, has been lobbying plaintiff could not be a prevailing party. legislatures to adopt laws restricting the use of musical group names when none of the original Doo-Wop Groups Founded in 1950s members of the group are any longer active. Still Active. The Platters were a Los Angeles- Such “truth in music” legislation has been based popular doo-wop music group that first adopted in 33 states, including New Jersey. performed under that name in 1953 with lead The New Jersey Office of the Attorney vocalist Cornell Gunter (also known as Cornell General informed Live Gold that its use of the Gunther). Over the years, the group’s lineup names “The Platters” and “The Cornell Gunter changed several times. By the 1960s, there were Coasters” might be in violation of the New several groups performing under the name “The Jersey Deceptive Practices in Musical Platters” or a derivation. A 2002 court decision Performances Statute (Truth in Music Act), N.J. gave five different groups the right to perform Stat. § 2A:32B0-1, et seq., which states: under a derivative name. A person shall not advertise or conduct According to the court, forcing Live a live musical performance or Gold to label its acts as tribute acts interfered production through the use of an affiliation, connection or association with its rights under the First Amendment and between the performing group and the the Lanham Act, among other things. recording group unless: Subsequently, at a preliminary (a) The performing group is the injunction hearing, the New Jersey Office of the authorized registrant and owner of a Attorney General agreed to accept Live Gold’s federal service mark for the group interpretation of the statute such that use of an registered in the United States Patent unregistered mark with express authorization of and Trademark Office; or an original group member would not be (b) At least one member of the prohibited. The court found that this performing group was a member of the interpretation would not run afoul of Live recording group and has a legal right by virtue of use or operation under the Gold’s free speech and other rights and thus group name without having abandoned vacated the TRO and granted no further relief. the name or affiliation of the group; or The court ruled that Live Gold’s claim was now (c) The live musical performance or moot and granted the state’s motion to dismiss. production is identified in all Live Gold then sought an award of advertising and promotion as a salute or attorneys’ fees as a prevailing party under 42 tribute; or U.S.C. § 1988(b). The court, however, ruled that (d) The advertising does not relate to a Live Gold was not a prevailing party and denied live musical performance or production the motion. taking place in this State; or Live Gold appealed. (e) The performance or production is expressly authorized by the recording Plaintiff Won Relief on the Merits. group. After reviewing the events of the preliminary

injunction hearing, Judge Jane R. Roth held that Live Gold asserted that it held licenses “Live Gold obtained ‘judicially sanctioned’ authorizing use of the names as unregistered relief ‘on the merits’ so that it was a prevailing trademarks and thus its use was valid under party,” as defined in Buckhannon Board and subsection (e). The attorney general’s office Care Home v. West Virginia Department of advised the venue, the Hilton Atlantic City, that Health and Human Resources , 532 U.S. 598 the use of the names might violate the state law (2001). because it did not allow for the use of “By virtue of the TRO, the State was unregistered marks by a licensee, and so the prohibited from enforcing its interpretation of Hilton advertised the concert as a tribute or the Truth in Music Act, and Live Gold’s groups salute, as provided for in subsection (c). were able to perform without having to identify

themselves as tribute groups,” the court said. Lower Court Retrains Enforcement. “This alone may have been enough to confer Singer Management Consultants Inc. and Live prevailing party status, as the TRO did more Gold sued the New Jersey attorney general in than preserve the status quo and arguably the U.S. District Court for the District of New afforded Live Gold all the relief it sought.” Jersey, arguing that the statute as enforced was The court emphasized that the state’s unconstitutional, and sought, among other change in stance regarding its interpretation of things, a temporary restraining order and a the statute was “impelled” by the district court’s preliminary injunction preventing enforcement rejection of its arguments and its declaration that of the state statute. the state would be “bound” by its concession Following a hearing, Judge Dickinson regarding treatment of unregistered marks. This R. Debevoise ruled that Live Gold had constituted “the complete relief that Live Gold demonstrated a likelihood of success on the sought,” the court said. merits of its claim and granted a TRO. The court remanded the case with the instruction to the district court to award fees. The court’s opinion was joined by Judge similar laws “that they need to tread cautiously Ruggero J. Aldisert. in how they go about interpreting this statute.” Charron, in an article published in 2009 by Dissent: No Judgment in Plaintiff’s BNA, argued that the “truth in music” laws were Favor. Dissenting, Judge Thomas L. Ambro unconstitutional (78 PTCJ 548, 8/28/09). argued that Live Gold was not a prevailing party If attorneys general in other states fail to because the district court had not awarded a give equal standing to the use of registered and judgment on the merits of Live Gold’s claim. unregistered trademarks by vocal groups, then Ambro pointed out that TROs and preliminary they face “a real risk of having to pay the other injunctions are determined using a different side’s attorneys’ fees when all is said and done,” standard, one that requires demonstration of a according to Charron. “likelihood” of success on the merits, or a “What it means is that the Truth in probability, and this does not guarantee ultimate Music acts are superfluous or redundant and that success at the conclusion of a full evidentiary the law is as it was before these acts came into hearing and application of relevant law. existence,” Charron said. Groups using names of According to the dissent, the majority older musical acts “need to be mindful of the opinion represented an “attempt to circumvent” federal Lanham Act, they need to be mindful of the standard set forth in Buckhannon . Ambro federal trademark laws. If they satisfy federal said: laws then they can go about their business This should end the analysis: without harassment from the states under these Buckhannon holds that if the plaintiff Truth in Music laws.” “achieves the desired result because the Charron told BNA of his surprise at the lawsuit brought about a voluntary attorney general’s about-face when near the end change in the defendant’s conduct,” it of the preliminary injunction hearing, she agreed does not “prevail.” …To hold that Live Gold prevailed because the State to accept the plaintiff’s interpretation of the New changed its legal position, my Jersey statute. colleagues resurrect the “catalyst “I’ll never forget it; I’ll probably never theory” that was laid to rest in see anything like it again,” he said. “The district Buckhannon . court was rejecting every argument she made…. Furthermore, Ambro said, even though It was almost painful to watch…. And then she the state’s change of stance might have been did a complete 180. She just gave in.” “prompted” by the court, it was not ordered by Live Gold was represented by William the court. The key is that the state’s change was L. Charron of Pryor Cashman, New York. The voluntary, he said. State of New Jersey was represented by Anne Milgram, the New Jersey attorney general, States on Notice Regarding ‘Truth in Newark, N.J. Music’ Laws. William L. Charron of Pryor Cashman, New York , counsel for the plaintiff, BY ANANDASHANKAR MAZUMDA told BNA that the outcome of this case “is really a warning” to other states that have enacted