Five Platters, Inc. v. Purdie

• Decision Date: 09 July 1976
• Docket Number: Civ. No. 73-462-B.
• Citation: 419 F. Supp. 372
• Parties: The FIVE PLATTERS, INC. v. Bernard PURDIE et al.
• Court: U.S. District Court — District of Maryland

419 F. Supp. 372

The FIVE PLATTERS, INC. v. Bernard PURDIE et al.

Civ. No. 73-462-B.

United States District Court, D. Maryland.

July 9, 1976.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Carl P. Fogel, Rockville, Md., Jules P. Kirsch, New York City, for plaintiff.

Bruce C. Bereano, Baltimore, Md., James I. Burkhardt, Alexandria, Va., for defendants.

MEMORANDUM

BLAIR, District Judge.

"The Platters" was the name of one of the most popular singing groups in the nineteen fifties. The plaintiff, Five Platters, Inc., claiming that it owns the exclusive right to use of the Platters name in association with a musical entertainment group, has sued Bernard Purdie and others claiming that the defendants have infringed its service mark and unfairly competed. Damage issues were tried to a jury which concluded, in effect, that the defendants were guilty of piracy. The court concurs in the jury's canvass of events and will now assess the equitable claims for relief.

Five Platters, Inc. is a California corporation with its principal place of business in Las Vegas, Nevada. The principal defendants are Bernard Purdie, the leader of the defendants' singing group; Van Pressley, Jr., a long-time member of Purdie's singing group; Alva Ford Thompson, an entertainment booking agent headquartered in Alexandria, Virginia; Metropolitan Talent Agency, Inc., a Virginia corporation operated by Thompson; and New Century Corporation, also a Virginia corporation which manages the business of Purdie's singing group. Purdie and Thompson are principal shareholders of New Century Corporation as well as the president and chief executive officer, respectively. Thompson is the principal officer and owner of Metropolitan Talent. None of the individual defendants are citizens of either California or Nevada and no corporate defendant is incorporated in or has its principal place of business in either California or Nevada.¹

The original complaint invoked the court's diversity jurisdiction and requested declaratory and injunctive relief as well as an accounting, compensatory and punitive damages for alleged violations of common law trademark rights and unfair competition. Certain defendants filed a counterclaim with their answer seeking declaratory relief, damages and a preliminary injunction against the plaintiff. After hearing, the defendants' motion for preliminary injunction was dismissed by the court on October 12, 1973. On May 15, 1973—six days after the suit was filed—plaintiff obtained registration of "The Platters" name as a service mark upon the Principal Register of the United States Patent and Trademark Office. Plaintiff thereafter filed a supplemental complaint alleging that in addition to the common law violations asserted in the original complaint the continuing acts of the defendants now violated the Lanham Act, 15 U.S.C. § 1051 et seq. Defendants broadened their counterclaim in response to the supplemental complaint so as to seek a cancellation of plaintiff's registration of the service mark.

As the court has already found, the parties are of diverse citizenship. Plaintiff has spent approximately $250,000 in efforts to protect and preserve its rights to the name "The Platters." Notwithstanding the fact that the jury assessed damages for the plaintiff in the amount of $3,001, the value of the rights in controversy is clearly in excess of $10,000, exclusive of interest and costs. Glenwood Light and Water Co. v. Mutual Light, Heat and Power Co., 239 U.S. 121, 36 S.Ct. 30, 60 L.Ed. 174 (1915). Subject matter jurisdiction exists therefore by virtue of diversity of citizenship. 28 U.S.C. § 1332. Additionally, the court has subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Some of the defendants were personally served in the State of Maryland. The remaining defendants were properly served under the Maryland Long Arm Statute, Annotated Code of Maryland, Courts and Judicial Proceedings, § 6-103, as persons transacting business in the state or persons deriving substantial revenue from services provided in the state. Thus, the court concludes that it has both subject matter and personal jurisdiction over the suit and the defendants.

Since both the supplemental complaint and the counterclaim sought damages, the court submitted those issues which were common to damages and the equitable claims to a jury for resolution. See Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962); Beacon Theaters, Inc. v. Westover, 359 U.S. 500, 79 S.Ct. 948, 3 L.Ed.2d 988 (1959). The jury's verdict upon special interrogatories is attached to this memorandum as Appendix A. In substance, the jury determined that the plaintiff had a valid service mark in the name "The Platters," that the name was properly registered in the Patent Office, that the defendants had infringed plaintiff's mark, that defendants had engaged in unfair competition with the plaintiff, and that the plaintiff was entitled to recover both compensatory and punitive damages. The court views the verdict as binding on those common issues which were submitted to the jury for resolution. See 9 Wright & Miller, Federal Practice and Procedure: Civil, § 2338 at 135-137 (1971). Whether binding or not, the court is in complete accord with the resolution of the issues by the jury and adopts the answers that the jury gave.² There remain, however, issues of a purely equitable nature which the court must decide and for that purpose the evidence will be summarized briefly.

The lengthy history of "The Platters" need not be set forth in extenso. In 1953, Tony Williams, a young singer, sought the services of Buck Ram, a well-known and already established composer and arranger of popular music. Ram, who was impressed by Williams' voice, evinced an interest and Williams returned with three other young men with whom he was performing under the name "The Platters." Soon, one of the four men was replaced by another singer and at Ram's suggestion a young woman was added. Ram collected material for the new singing group, wrote songs for them, supervised their rehearsals and appearances, and made efforts to obtain engagements. On March 25, 1955, these efforts led to a contract between the singing group and Mercury Records under which they were to record as "The Platters." The first two releases of the group, "Only You" and "The Great Pretender," were extraordinarily successful, both selling millions of records and receiving industry recognition through the award of "Gold Records." With these two releases, "The Platters" as then composed³ received broad recognition and attained success in the music field.

Throughout the remainder of the 1950's, the original Platters continued to be successful and performed and were recognized nationally and internationally as "The Platters." The group was distinctive because of its carefully choreographed performances and ballad style of singing. Ultimately the group recorded 15 songs which sold over one million records each.

In early 1956, the Five Platters, Inc. was formed as a California corporation and the five members of the group became the exclusive equal shareholders of the new corporation and exchanged their rights to the name "The Platters" in return for their stock interest. Shortly thereafter in 1956, each original Platter signed an employment contract with Five Platters, Inc. which also recognized the corporation as the sole and exclusive owner of the name "The Platters." In the early 1960's, the fortunes of the group declined for several reasons. One by one the members of the group left and the last to leave was Herbie Reed who departed in 1969. Each departing member was replaced and the group continued to perform as "The Platters" continuously until the present time. Four of the original Platters sold their shares in the corporation to Ram or Personality Productions, Inc., an artists management firm operated by Jean Bennett, an associate of Ram's and the current president of Five Platters, Inc. Each stock sale agreement acknowledged the corporation's exclusive right to use the name "The Platters" with a limited right reserved to the selling member of the original Platters to bill his or her individual performance as a person "formerly of The Platters." The group has continued under the musical direction of Ram and today uses the same general format for its performances as did the original Platters.

In the late 1960's and early 1970's, the nostalgic appeal of the music of the fifties caused a resurgence of popular interest in "The Platters" and the number and quality of the group's bookings increased. The renewed commercial success of "The Platters" has led to the formation of a number of imitation groups using the same format, singing the same songs, and billing themselves by the same name, or confusingly similar variations thereof, as the original Platter group. Since 1967, plaintiff has been in a constant battle to stem the tide of proliferating imitators. Bennett, acting on behalf of the plaintiff, has written over 250 registered letters to club owners and booking agents throughout the country asserting exclusive rights to the name "The Platters" and warning of others illegally using the name. Where indicated, these letters were followed up by telephone calls and personal visits by Bennett or plaintiff's attorneys and ultimately by numerous lawsuits in state and federal courts. In all, Five Platters, Inc. has spent in excess of $250,000 in efforts to preserve its right to the name "The Platters."

Among the imitators was a group in Canada under the management of a Bill Cunningham which billed itself as "The Fabulous Platters." In 1967 and 1968, this group hired the defendant Bernard Purdie as one of its members. Purdie eventually became the road manager for the group but then broke away and formed his own group of "The Fabulous Platters."⁴ In 1970, Purdie contacted Bennett of Personality Productions, Inc., ...