240 F.3d 184 (3rd Cir. 2001), 99-5614, Marshak v Treadwell

Docket Nº:No: 99-5614
Citation:240 F.3d 184
Party Name:LARRY MARSHAK, APPELLANT, V. FAYE TREADWELL; TREADWELL DRIFTERS, INC; THE DRIFTERS, INC.; BOWEN AGENCY LTD/ADMIRAL TALENT
Case Date:February 09, 2001
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit
 
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240 F.3d 184 (3rd Cir. 2001)

LARRY MARSHAK, APPELLANT,

V.

FAYE TREADWELL; TREADWELL DRIFTERS, INC; THE DRIFTERS, INC.; BOWEN AGENCY LTD/ADMIRAL TALENT

No: 99-5614

United States Court of Appeals, Third Circuit

February 9, 2001

Argued: January 13, 2000

On Appeal from the United States District Court for the District of New Jersey District Court Judge: The Honorable Nicholas H. Politan (Dist. Ct. No. 95-CV-03794)

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Stephen B. Judlowe, Esq. (argued) Lisa M. Ferri, Esq. Eve Kunen, Esq. Vincent A. Sireci, Esq. Hopgood, Calimafde, Kalil & Judlowe, Llp 60 East 42nd Street New York, New York 10165, Kenneth D. McPherson, Jr., Esq. Mark J. Ingber, Esq. Waters, McPherson, McNeill 300 Lighting Way P.O. Box 1560, 7th Floor Secaucus, New Jersey 07096, Attorneys for Appellant

James P. Flynn, Esq. (argued) Epstein Becker & Green, P.C. Gateway Two 12th Floor Newark, New Jersey 07102, Joshua Levine Law Office of Ira Levine 0-99 Plaza Road P.O. Box 2777 Fair Lawn, New Jersey 07410, Attorneys for Appellees

Before: Alito and Barry, Circuit Judges, and Aldisert, Senior Circuit Judge

OPINION OF THE COURT

Alito, Circuit Judge

This is an appeal from orders entered by the District Court after a trial concerning the right to use the mark "The Drifters" for a singing group. Larry Marshak, who acquired a federally registered service mark for "The Drifters" name in 1978, brought this action against Faye Treadwell and others, claiming that they were infringing his mark. The defendants contended that Marshak's federally registered mark had been procured by fraud and that Marshak was infringing senior common-law rights. After a trial and post-trial motions, the District Court ordered that Marshak's federally registered mark be canceled, permanently enjoined Marshak from using the mark in commerce, and required an accounting of all profits received by Marshak since he began using the mark. Marshak then took this appeal. We affirm in part and dismiss in part for lack of appellate jurisdiction.

I.

The Drifters were one of the classic popular singing groups of the 1950s and early 1960s. Among their well-known hits were "Under the Boardwalk," "On Broadway," and "Save the Last Dance for Me."

The Drifters first appeared in 1953 and came under the management of George Treadwell the following year. From then until his death in 1967, George Treadwell managed the group through The Drifters, Inc., a New York corporation that he formed. George Treadwell hired and paid salaries to the members of the group, who changed continually over the years. He also scheduled the group's performances, negotiated their recording contracts, and chose their music and arrangements.

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In 1959, George Treadwell released all of the then- current members of the group and signed the former members of a group called the Five Crowns to perform as The Drifters. The new members included Charlie Thomas, Elsbeary Hobbs, and Dock Green. Like all other members of the Drifters, Thomas, Hobbs, and Green signed contracts that provided in pertinent part as follows:

The Artist agrees that the name THE DRIFTERS belongs exclusively to the employer and that he will not at any time use the name of The Drifters or any name similar thereto or any name incorporating The Drifters. In the event the employee leaves the employ of The Drifters he will not in any way advertise or attempt to publicize the fact that he had been a member of a singing group known as The Drifters and will not associate his name in any manner with The Drifters; and he further acknowledges that the name, The Drifters, is a valuable property and any violation of this paragraph could not be adequately compensated by money damages and he therefore agrees that the employer shall be entitled to an injunction in any Court of competent jurisdiction to enjoin any violation or threatened violation of the contract by the Artist.

App. at 1264.

When George Treadwell died, his wife, Faye Treadwell, whom he married in 1955, became the sole shareholder of The Drifters, Inc., and she took over the management of the group. She later formed Treadwell's Drifters, Inc., a New Jersey corporation, and all of the assets and contractual rights of The Drifters, Inc. were transferred to the new corporation.

By the time of George Treadwell's death, Hobbs and Green had already left the group. Charlie Thomas left shortly thereafter, but other members continued to perform under Treadwell's direction. By the late 1960s, however, the popularity of "The Drifters" and similar groups had waned in this country, and Treadwell focused her efforts on Europe, where the group remained popular. After 1970, the Drifters made few live appearances in this country, but the group's classic recordings continued to be played on the radio, and Atlantic Records continued to pay royalties to The Drifters, Inc. or Treadwell's Drifters, Inc. See App. at 720.

Larry Marshak's involvement with The Drifters began in 1969. CBS radio had recently changed from a contemporary to an "oldies" format. To generate enthusiasm for its format change, CBS approached Rock Magazine and proposed a partnership to reunite old singing groups to perform live concerts. Marshak, who was an editor at Rock Magazine, was given the task of reuniting some of these groups for the first revival concert at the New York Academy of Music. Among the groups that Marshak attempted to reunite was "The Drifters." Marshak contacted several former members of the group, including Thomas, Hobbs, and Green, all of whom agreed to perform for Marshak. The revival concerts were a success, and the reunited members agreed to continue per forming under "The Drifters" name. In 1972, Thomas, Hobbs, and Green signed an exclusive management contract with Marshak.

Soon after the revival group began per forming, Marshak received a letter from Treadwell's attorney asserting that Marshak was infringing her right to use the group's name. App. at 244. The letter pointed out that the former members of the group had signed contracts with The Drifters, Inc. in which they had given up any right to use the group name. Id. Despite this warning, Marshak persisted in his efforts to promote and market his group.

In 1971, Treadwell brought an action against Marshak in state court in New York. Treadwell's request for a preliminary injunction to prevent Marshak and his group from using "The Drifters" name was denied, and the suit was eventually

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dismissed in 1973 because Treadwell "willfully defaulted and failed to answer interrogatories propounded by defendants." App. at 1245. At the trial in the current case, Treadwell testified that she and her group stopped performing in the United States in part because she did not have the financial resources to defend her mark against Marshak through extended litigation. See App. at 598.

Marshak, in contrast, benefitted from a renewed interest in "The Drifters" in the United States that had resulted from a wave of nostalgia for the early days of rock and roll. Throughout the 1970s, Marshak's group made recordings, appeared on television, and gave live performances.

Marshak began to litigate against other groups that used the name "The Drifters" or a variant. In 1976, Marshak learned that "The Platters," another revived 1950s singing group, had been successful in preventing others from using their name by registering their service mark, and Marshak urged Thomas, Hobbs, and Green to do the same. Marshak convinced the trio that if they agreed to assign their rights to the name to him, he would continue as their manager and prevent others groups from using "The Drifters" name. In December 1976, Thomas, Hobbs, and Green, acting as a partnership, filed an application with the United States Patent & Trademark Office (PTO) to register "The Drifters" as a service mark for a singing group, and they assigned their rights to Marshak. See App. at 1267. In their registration application, Thomas, Hobbs, and Green each attested that

no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods of such other person, to cause confusion, or to cause mistake, or deceive.

See 15 U.S.C. S 1051 (1976).

Marshak filed the present action in 1995, following the publication of Faye Treadwell's book, Save the Last Dance for Me, in which Treadwell claimed to be the sole owner of the Drifters mark. See App. at 875. Named as defendants were Faye Treadwell, The Drifters, Inc., Treadwell's Drifters, Inc., and a booking company. Marshak alleged that the defendants had infringed his mark and had threatened to continue to do so by offering Treadwell's book for sale and by engaging a group to perform as The Drifters. He asserted a claim under Section 32 of the Lanham Act, 15 U.S.C. S 1114(a), for infringement of his federally registered mark, as well as a claim under Section 43(a), 15 U.S.C.S 1125(a), and under the statutes of New York for violation of his common-law rights. He sought declaratory and injunctive relief and treble and punitive damages.

In their answer, the defendants claimed that Treadwell's Drifters had a superior common-law right to the mark, and they asserted as an affirmative defense that Marshak's federal registration had been procured by fraud. As a counterclaim, Treadwell's Drifters repeated the allegation of fraudulent procurement. In addition, alleging that Marshak had infringed and continued to infringe its common-law right to the mark, Treadwell's Drifters asserted a claim...

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