Baker v. Parris, 86 Civ. 1283 (WK).

• Decision Date: 12 November 1991
• Docket Number: No. 86 Civ. 1283 (WK).,86 Civ. 1283 (WK).
• Citation: 777 F. Supp. 299
• Parties: William Mullen BAKER, Plaintiff, v. Frederick R. PARRIS and Ernie Martinelli, Defendants.
• Court: U.S. District Court — Southern District of New York

777 F. Supp. 299

William Mullen BAKER, Plaintiff, v. Frederick R. PARRIS and Ernie Martinelli, Defendants.

No. 86 Civ. 1283 (WK).

United States District Court, S.D. New York.

November 12, 1991.

Michael Greene, Pollack & Greene, New York City, for defendants.

Albert Silbowitz, Cedarhurst, N.Y., for plaintiff.

OPINION AND ORDER

WHITMAN KNAPP, District Judge.

Plaintiff and defendants both claim the right to use the service mark "The Five Satins," a "doo wop" vocal group,¹ based on their original affiliation with that group. Defendants move for summary judgment dismissing plaintiff's claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq., the Sherman Act, 15 U.S.C. § 1 et seq., and the common law, and for summary judgment granting their own counterclaims under the Lanham Act, New York State law, and common law. For the reasons that follow, both motions are granted.

BACKGROUND

Sometime in 1955, five teenagers from New Haven, Connecticut gathered together to perform a new genre of music: doo wop. Defendant Parris,² though then also performing with another group called the "The Scarlets," was the first lead singer of this new group, "The Five Satins." Pl. 3(g) ¶¶ 3-4; Def. 3(g) ¶¶ 1-3; Pl. Exhs. B, E, & F.³ Parris enlisted in the Army sometime in mid-1955, but while on leave before being stationed in Japan for most of 1956-57, wrote and performed lead vocals on a New Haven church basement recording for the Standord Record label of "I'll Remember," which very shortly became known as "In the Still of the Night." Pl. 3(g) ¶¶ 4, 5; Def. 3(g) ¶¶ 4, 5. This song has since become one of the most popular "oldies" ever. It is also "The Five Satins" signature song and greatest hit. Pl. Exh. F; Def. Aff. ¶ 30.

Parris returned from the Army in late 1957, and by 1958⁴ began performing as lead singer for, among other groups, the one billed as "The Five Satins." Since then, Parris has continuously used that name — or some variation thereof, such as "Fred Parris and the Five Satins," "The Five Satins, featuring Fred Parris," or "The Five Satins." Parris' performances under "The Five Satins" name include those in "oldies revival shows" throughout the 1970s and in various hotels starting in or about 1977. Def. 3(g) ¶¶ 17, 18. In 1973 Parris applied for and received a trademark registration on "The Five Satins" from the United States Patent and Trademark Office. In his application he declared that "the service mark was first used ... in June 1955; was first used in the sale or advertising of services rendered in commerce among the several states in June 1955 and is now in use in such commerce." Pl. Exh. H. The mark lapsed in 1981. Two years later Parris applied for a second registration, which he received in 1984. Def. 3(g) ¶¶ 15, 22. Parris, since at least 1983, has consistently asserted that he owns the exclusive right to the service mark "The Five Satins" and, by informing people in the music industry of that claimed exclusive right, has sought to prevent Baker from using the name. Pl. 3(g) ¶ 19; Def. 3(g) ¶¶ 27-29.

In early 1956 when Parris was in the army, plaintiff Baker joined "The Five Satins" and within two months became the group's lead singer. During his tenure "The Five Satins" released several records including the successful "To The Aisle," was pictured on the cover of Rhythm & Blues magazine, and toured widely. Pl. 3(g) ¶¶ 9, 10; Def. 3(g) ¶ 9; Pl. Exhs. B, E. Baker left "The Five Satins" in 1958, and until the late 1970s or early 1980s performed with a number of different bands, including "The Chestnuts" and "David and Goliath," and using his own name. Pl. Exhs. D, E, & F.

With respect to his status between the late 1950s and late 1970s or early 1980s, Baker has submitted: (a) his own affidavit; and (b) a variety of documents. Two paragraphs of his affidavit are relevant. Paragraph 12 provides:

After the dissolution in 1959 of "The Five Satins," I continued performing under my name, as well as with other groups and individuals. Throughout the 1960s, 1970s, and to the present day I have always and continuously utilized the name "The Five Satins" in billing, promoting and advertising my performances and in attempts to obtain performing engagements.

On the other hand, paragraph 15 asserts:

By the late 1970s, I was being billed as "Bill Baker" or "Bill Baker of the Original Five Satins," or "Bill Baker's Fabulous Satins" ... The public and concert promoters, however, still associated me with "The Five Satins" and, as a result, my performances would typically be publicized as "Bill Baker of The Five Satins," "Bill Baker's Satins" or simply "The Five Satins" despite my repeated remonstrances. By 1982, my new group was increasingly referred to as "Bill Baker's Five Satins" ... and in response to continuing demands by my audiences and concert promoters, I adopted that name ... and have continuously performed under such name to date."

(emphasis added).

The documents (which are attached as Exhibit E to Baker's opposition papers) include a 1975 magazine article about Baker by Victor Pearlin that reads in relevant part:

Few people are aware that Bill Baker was the lead singer for the Five Satins in 1956-57. A New Haven native, Bill is heard on five Ember record label for "The Five Satins" releases. Of these, only "To The Aisle" achieved any commercial success.

When Fred Parris returned from the Army in 1958, Bill stopped recording for a couple of years. In 1960, he recorded two records ... Bill was accompanied on these by the Chestnuts.

...

Finally in 1966, Bill teamed up with Roger Koob ... recording as David and Goliath.

The remaining documents, insofar as they seem to us to be at all relevant, are the following:

— An undated business card for "The Connecticut All-Star '50s & '60's Review," on which below Baker's name appears "The Chestnuts/The Five Satins";

— An undated guest pass to a performance by a group called "The Originals"⁵ that featured members of "The Five Satins," "The Chestnuts," and "The Scarlets." The card nowhere mentions Baker, and it is unclear whether he or Parris performed at that show;

— An undated promotional card for "Bill Baker" on which it is noted, in the smallest print appearing on the card, "as featured with the Five Satins";

— A promotional release for the "Connecticut All-Star Fifties & Sixties Revue, Starring Roger Koob and Bill Baker," on which it is stated that "Other songs this show band performs, formerly recorded by groups which included Bill Baker, are: ... — `Chestnuts'; ... `The Five Satins'; and one of the biggest selling records in recorded history `In The Still Of The Night'";

— An event schedule with the entry dated November 21, 1980 adverting to a "50's Hop, featuring Roger Koob of Premiums and Bill Baker of Five Satins"; and

— A September 5, 1971 program for the Connecticut Cancer Crusade that lists among the performers "Bill Baker," with no mention of "The Five Satins."

DISCUSSION

a. Parris' Motion for Summary Judgment Dismissing Baker's Claims

We hold for later discussion Baker's count VI (requesting punitive damages), counts III and IV (alleging Sherman Act violations), and counts II, VII, and VIII (seeking cancellation of Parris' Lanham Act registration). The remaining counts I and V (claiming Lanham Act and common law trademark infringement) require that Baker, as an initial matter, establish two things: (a) that he was the originator — i.e. first user — of the mark; and (b) that he has been a continuous user of the mark — i.e., that he did not abandon it by failing to use it over any considerable period of time. See Rick v. Buchansky (S.D.N.Y.1985) 609 F.Supp. 1522, 1531 (it is axiomatic that "rights in a trademark or service mark are acquired through appropriation and use of the mark in commerce"), Kingsmen v. K-Tel Int'l Ltd. (S.D.N.Y.1983) 557 F.Supp. 178, 181. For the definition of abandonment, see 15 U.S.C. § 1127 ("A mark shall be deemed `abandoned' — (a) when its use has been discontinued with intent not to resume.... Nonuse for two consecutive years shall be prima facie abandonment"); see also Rick, 609 F.Supp. at 1540, Kingsmen, 557 F.Supp. at 183.

There is clearly room for dispute as to whether Baker or Parris was the originator or first user of the mark. Accordingly, if that were the only issue we should have to deny Parris' motion for summary judgment. However it is beyond dispute that Baker can show no use of the mark from the time he left "The Five Satins" in 1958 to when "by 1982" he "adopted" the name. While in the first of the two quoted paragraphs of his affidavit Baker claims to have "continuously utilized" the name during the 1960s and 1970s, this claim is refuted in the second quoted paragraph. The latter paragraph specifically assures us that any pre-1980 use of his name in connection with that of "The Five Satins" was over his "repeated remonstrances." Moreover, the documents Baker submits are consistent with the second rather than the first of these paragraphs. The magazine article specifically fixes his connection to "The Five Satins" as occurring in 1956-58. It further observes that after Parris' return from the army, Baker "stopped recording for a couple of years" and then associated himself with other names and organizations. The remaining submitted items do nothing to negate these clear assertions.

Thus it is apparent from the evidence submitted by Baker that he cannot establish use of the mark during the period between the late 1950s and late 1970s or early 1980s, and therefore can make no claim to the mark that Parris could have infringed. Accordingly, we grant Parris' motion to dismiss counts I and V.

b. Parris's Counterclaims

Parris claims that he holds the exclusive right to the service mark "The Five Satins" and that Baker infringed on it by holding himself out to the music industry and public as "The Five Satins." Such infringement, he asserts, both confuses the public as to which of "The Five Satins" groups...