Far Out Production v. Oskar

• Decision Date: 04 April 2001
• Docket Number: No. 99-56739,99-56739
• Citation: 247 F.3d 986
• Parties: (9th Cir. 2001) FAR OUT PRODUCTIONS, INC., a California corporation, Plaintiff-Appellee, v. LEE OSKAR; MORRIS DICKERSON; BRAN AITCHISON; BRUCE SOLAR, individually and d/b/a ABSOLUTE ARTISTS, Defendants, and HOWARD SCOTT, Defendant-Counter-Claimant-Appellant, HAROLD BROWN,Plaintiff-Cross-Defendant-Appellant, v. JERRY GOLDSTEIN, Defendant-Appellee
• Court: U.S. Court of Appeals — Ninth Circuit

Page 986

247 F.3d 986 (9th Cir. 2001)

FAR OUT PRODUCTIONS, INC., a California corporation, Plaintiff-Appellee, v. LEE OSKAR; MORRIS DICKERSON; BRAN AITCHISON; BRUCE SOLAR, individually and d/b/a ABSOLUTE ARTISTS, Defendants, and HOWARD SCOTT, Defendant-Counter-Claimant-Appellant, HAROLD BROWN,Plaintiff-Cross-Defendant-Appellant, v. JERRY GOLDSTEIN, Defendant-Appellee.

No. 99-56739

UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

Submitted April 4, 2001, ^*

Filed April 24, 2001

[Copyrighted Material Omitted]

[Copyrighted Material Omitted] Matthew L. Pepper, The Law Offices of Pepper, Moore & Smith, New Orleans, Louisiana, for the defendant-counter-claimant-appellant and plaintiff-cross-defendant-appellant.

Jay M. Coggan, Law Offices of Jay M. Coggan, Beverly Hills, California, for the plaintiff-appellee and defendant-appellee.

Appeal from the United States District Court for the Central District of California. William D. Keller, U.S. District Judge, Presiding. D.C. No. CV-96-01382 WDK.

Before: Warren J. Ferguson and Barry G. Silverman, Circuit Judges, and Charles R. Breyer, ^** District Judge.

BREYER, District Judge:

Far Out Productions, Inc. filed suit against Howard Scott, an original member of the musical group "WAR, "and other artists with whom Scott was performing, alleging infringement of the federally-registered trademark "WAR. "Scott responded by filing a counterclaim alleging, inter alia, fraud, conversion, and trademark infringement. Harold Brown, another original member of the group, filed a direct action against Far Out Productions and its president Jerry Goldstein (collectively, "the appellees"), alleging that the appellees had obtained the trademark fraudulently. The cases were consolidated, and Scott and Brown ("the appellants") appeal the district court's orders: (1) denying the appellants' motion for summary judgment; (2) granting the appellees' motion for summary judgment; and (3) denying the appellants' motion for a new trial. We have jurisdiction pursuant to 28 U.S.C. 1291, and we affirm.

I. BACKGROUND

A. Factual Background

In the late 1960s, the appellant Jerry Goldstein, Steven Gold, and Eric Burdon, the former lead singer of a British band known as The Animals, formed Far Out Productions, Inc., Far Out Music, Inc., and Far Out Management, Ltd. (collectively, "the Far Out entities"). In January 1969, Goldstein, Gold, and Burdon met with members of a band known as "The Night Shift," whose members included the appellants, to discuss forming a band. The parties agreed to form a band known as "Eric Burdon and WAR."

On June 8, 1969, the group performed commercially for the first time at a nightclub known as Mother Lizard's Ball in San Bernardino, California. The band began production of its first album, entitled "Eric Burdon Declares WAR," soon afterward, and the album was released in March 1970. The album became very successful, and the original members of the band eventually signed exclusive recording and publishing agreements with the Far Out entities.

Burdon eventually lost interest in the group. Goldstein then decided to produce a second album with the musicians who had previously been Burdon's backup band. According to Goldstein, he decided to permit the group to use the name "WAR" on the album.

A long series of lawsuits and settlements soon followed. In 1979, the members individually signed a set of contracts with the Far Out entities, including an agreement that transferred ownership of the trademark "WAR" to Far Out Productions. On July 2, 1979, soon after executing those contracts, Far Out Productions filed an application for the service mark "WAR" with the United States Patent and Trademark Office ("PTO"). The PTO issued Trademark Registration No. 1,169,651 to Far Out Productions on September 15, 1981.

B. The Florida Judgment

In November 1982, four of the five remaining original members of the band, including Brown and Scott, sued the Far Out entities, Gold, and Goldstein in Florida state court. The appellants alleged that the Far Out entities had breached the 1979 contracts and that the Far Out entities had fraudulently secured the 1979 agreements by promising the appellants that the appellants would retain ownership of the trademark. Brown later voluntarily dismissed himself from the action. In an affidavit allegedly filed with the Florida court, Brown indicated that the suit was without merit and was filed fraudulently in order to terminate the 1979 agreements. Meanwhile, the Far Out entities were in deep financial trouble. Far Out Productions and Goldstein filed for bankruptcy under Chapter 11 on June 19, 1984.

On October 11, 1984, the Florida trial court entered an order and a partial final judgment in favor of the appellant Scott and the band members. The court deemed as established the material allegations of the complaint, including that the trademark "WAR" was procured by fraud. However, the court noted that its orders did not impact upon Far Out Productions in a manner inconsistent with the Federal Bankruptcy Code. In a final judgment entered on January 10, 1986, the court also noted that the claims against Goldstein and Far Out Productions were severed by virtue of the appellees' pending bankruptcies.

C. Proceedings After the Florida Judgment and Before the Present Suits

In 1985, the appellant Scott and other band members filed a petition for cancellation of Far Out Productions' mark "WAR" with the PTO. That proceeding was halted due to the bankruptcy stay. Meanwhile, in 1986, the appellees licensed Brown to perform publicly as WAR. When the appellees learned that Scott and some of the other band members were also performing as WAR, the appellees applied to the bankruptcy court for permission to bring suit to enforce the trademark. After receiving permission to bring suit, Far Out Productions filed an action for trademark infringement that was nearly identical to its present complaint.

Shortly after the suit was filed, Far Out Productions entered into a global settlement with the appellants and the other band members. On April 1, 1987, each of the band members signed written agreements that agreed to dismiss with prejudice any and all lawsuits, even if the lawsuit had been reduced to a final judgment. The contracts also reaffirmed Far Out Productions' exclusive ownership in the name "WAR." Scott also eventually executed joint stipulations to dismiss with prejudice and vacate the Florida judgment.

On August 24, 1987, Goldstein filed an incontestability affidavit with the PTO on behalf of Far Out Productions. The affidavit declared that Far Out Productions was the owner of the mark and that the mark had been in continuous use for five consecutive years. The declaration also indicated that there had been no final decision adverse to the registrant's claim to ownership of the mark and that there were no proceedings pending in any court.

D. The Procedural History of the Present Suits

From 1987 to 1995, the parties intermittently attempted to work out an arrangement under which the band members would perform using the name "WAR," but those efforts were ultimately unsuccessful. On February 28, 1996, Far Out Productions filed the present suit against the appellant Scott and the other band members, alleging unfair competition and trademark infringement. Far Out Productions later amended the complaint to add Brown as a defendant.

In response to Far Out Productions' complaint, Scott filed a counterclaim against Far Out Productions and Goldstein alleging fraud, trademark infringement, and conversion. Brown filed a direct action against the appellees seeking to cancel the trademark registration, to have ownership of the trademark returned to the appellants, and to obtain damages for copyright infringement and breach of contract.

On March 21, 1997, Scott moved for summary judgment on Far Out Productions' complaint on two grounds: (1) that the Florida judgment precluded the appellees from relitigating the ownership of the trademark; and (2) that the appellees' failure to disclose the Florida judgment in the incontestability affidavit rendered the affidavit false and the trademark registration invalid. The district court denied Scott's motion, finding that there were triable issues of fact as to whether the Florida judgment applied to Far Out Productions and Goldstein.

On February 2, 1999, the appellees filed a motion for summary judgment. The district court held a hearing on March 16 and 17, 1999 and granted the appellees' motion. On June 10, 1999, the district court issued a judgment and a permanent injunction, finding that Far Out Productions was the sole owner of the registered trademark "WAR" and that the appellants had infringed upon the mark.

On June 28, 1999, the appellants filed a motion for a new trial pursuant to Federal Rule of Civil Procedure 59(a) and a motion to amend the judgment pursuant to Federal Rule of Civil Procedure 52(b), claiming that there was newly discovered evidence and that the appellees' counsel had submitted false testimony to the court. On August 19, 1999, the district court heard oral argument and denied the motion. In a written order entered on August 20, the court observed that much of the evidence the appellants presented in their motion was already before the court at the summary judgment hearing. The court regarded the appellants' evidence of misconduct and false testimony as unconvincing and found that the appellants' "new" evidence was procedurally and substantively defective.

II. STANDARD OF REVIEW

A. The Summary Judgment Orders

The Ninth Circuit reviews a district court's summary judgment order de novo. See Robi v. Reed, 173 F.3d 736, 739 (9th Cir.), cert. denied, 528 U.S. 952, 145 L. Ed. 2d 293, 120 S. Ct. 375 (1999). Accordingly, the appellate court's review is governed by the same standard used by the district court under Federal Rule of Civil Procedure 56(c). See Meade v. Cedarapids, Inc., 164...