Freed v. Farag, 1:96 CV 2192.

• Decision Date: 08 December 1997
• Docket Number: No. 1:96 CV 2192.,1:96 CV 2192.
• Citation: 994 F.Supp. 887
• Parties: Lance FREED, et al., Plaintiffs, v. Henry FARAG, et al., Defendants.
• Court: U.S. District Court — Northern District of Ohio

994 F.Supp. 887

Lance FREED, et al., Plaintiffs, v. Henry FARAG, et al., Defendants.

No. 1:96 CV 2192.

United States District Court, N.D. Ohio, Eastern Division.

December 8, 1997.

Lisa D. Summers, Painesville, OH, for Lance Freed, Alana Freed, Alan Freed, Jr., Sieglinde Freed, Inga Freed Masken.

Thomas L. Meros, Cleveland, OH, for Henry Farag, Omar Farag, Street Gold Records, Ltd., Moondog Coronation Ball Corp.

James B. Niehaus, Elizabeth B. Wright, Suzanne Bretz Blum, Elizabeth A. Costigan, Thompson, Hine & Flory, Cleveland, OH, for Dean Thacker, OmniAmerica Group.

Suzanne Bretz Blum, Thompson, Hine & Flory, Cleveland, OH, for WMMS 100.7 FM Radio Station, WHK 1420 FM Radio Station.

Hugh M. Stanley, Jr., Arter & Hadden, Cleveland, OH, James B. Niehaus, Suzanne Bretz Blum, Thompson, Hine & Flory, Cleveland, OH, for Nationwide Communications Corp.

MEMORANDUM DECISION ON SUMMARY JUDGMENT

GWIN, District Judge.

On July 10, 1997, Defendants OmniAmerica Group and Dean Thacker moved this Court for summary judgment [Doc. 42]. OmniAmerica and Thacker say they are entitled to summary judgment because the Freed family does not own the service mark to "Moondog Coronation Ball,"¹ and they are entitled to judgment in their favor on all claims stated by the plaintiffs.

On September 24, 1997, Defendant OmniAmerica Group and Third-Party Defendant Nationwide Communications Inc.² filed a motion for summary judgment [Doc. 48] as to the amended cross-claim³ made by Defendants and Cross-Claimants Henry Farag, Omar Farag, Street Gold Records, Ltd., Canterbury Productions/Farag, and Moondog Coronation Ball Corp. (collectively "Defendants Farag").⁴ For the reasons which follow, the Court grants Defendant OmniAmerica Group's motions for summary judgment as to the claims of Plaintiffs and the amended cross-claim of the Defendants Farag, but denies their motion for summary judgment as to the third-party complaint of Defendants Farag.

I

Summary judgment is just as appropriate in a trademark infringement case as in other litigation and is granted or denied on the same principles. WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir. 1983); SCI Systems, Inc. v. Solidstate Controls, Inc., 748 F.Supp. 1257, 1260 (S.D.Ohio 1990). A party is entitled to summary judgment on a claim when the pleadings, depositions, and answers to interrogatories and to admissions show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). Rule 56 "mandates" that summary judgment be entered against a party who fails to make a sufficient showing to establish an element essential to a party's case, and on which party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

Although the Court draws all reasonable inferences in favor of the nonmoving party, "the mere existence of a scintilla of evidence in support of plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Smith v. Ameritech, 129 F.3d 857, 863 (6th Cir.1997) (quoting Anderson v. Liberty Lobby, 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). A party opposing the grant of summary judgment may not rest upon the mere allegations or denials of the pleadings, but must come forth with some probative evidence supporting its claim showing that there is a genuine issue for trial. Otherwise, summary judgment is appropriate. Fed.R.Civ.P. 56(e); Huizinga v. U.S., 68 F.3d 139, 143 (6th Cir.1995).

II

Plaintiffs Freed brought this action claiming that defendants violated their rights to a service mark in the phrase "Moondog Coronation Ball." Defendants say that Plaintiffs had no right in the phrase and they are entitled to judgment.

Alan Freed was a Cleveland radio disk jockey. In January 1965, he died in California. In October 1996, more than 30 years after his death, his heirs filed this mark infringement suit. They claim that in March 1952, Freed used the phrase "Moondog Coronation Ball," that such phrase became a service mark and that they have a right to the ownership of this mark.

Plaintiffs make claim against Defendants Farag. The Farag Defendants are musical concert promoters in the Cleveland area and against certain defendants associated with Cleveland radio stations WMJI, WHK and WMMS.⁵

Plaintiffs Freed claim a right to ownership of "Moondog Coronation Ball" through Alan Freed. Alan Freed came to the Cleveland radio scene in 1951 as a disc jockey playing classical music. Near July 11, 1951, Freed changed the radio program and began using a rock n' roll format. In this new format, Freed used a recording in 1951 called "Moondog Symphony."⁶ After a positive response, Freed began calling himself "Moondog."

Alan Freed's show became popular with the teenage listening audience. In response, Freed and others formed a partnership to promote a dance billed as the "Moondog Coronation Ball." The partnership scheduled the dance for March 21, 1952. At the dance, mayhem ensued when an unruly crowd outside the filled arena rushed the doors and Cleveland police closed the dance before midnight. Plaintiffs Freed claim rights to the service mark "Moondog Coronation Ball" from this date. Plaintiffs Freed say the defendants, and their predecessors in interest, were not authorized to use this mark in connection with several rock n' roll promotions in the Cleveland area in 1986, 1992, 1993, 1994, 1995, 1996, and 1997.⁷

III

In their complaint, Plaintiffs Freed claim Defendants made false designation of origin and false description of representation under Section 43(a) of the Lanham Act.⁸ Plaintiffs Freed also claim service mark infringement (Count Two), common law theft and conversion of the mark (Count Three), a violation of Ohio's Deceptive Trade Practices Act Ohio Rev.Code § 4165.02 (Count Four), unlawful promotion and production of the 1997 concert (Count Five), and a per se violation of Ohio Rev.Code § 1329.56(C) and (D) (Count Six).

Defendants OmniAmerica and Thacker deny that Plaintiffs had rights in the service mark to the phrase "Moondog Coronation Ball." Principally, these defendants say Alan Freed never established such a service mark. Even if established, these defendants say the Plaintiffs Freeds' enforcement of the service mark is stopped by the doctrine of laches.

"Estoppel by laches" occurs when trademark holder inexcusably delays its attempts to prevent infringing use to the prejudice of innocent users. Lanham Trade-Mark Act, § 32(1), 15 U.S.C. § 1114. In this Circuit, the statute of limitations applicable to analogous actions at law is used to create a "presumption of laches." This principle "presumes" that an action is barred if not brought within the period of the statute of limitations and is alive if brought within the period. Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 365 (6th Cir.1985), cert denied, 476 U.S. 1158, 106 S.Ct. 2277, 90 L.Ed.2d 719 (1986).

As the events which gave rise to this action occurred in Ohio, the Court looks to that state's relevant statute of limitations. Federal courts have found the analogous statute in infringement cases to be Ohio's two-year statute of limitations for injury to persons and personal property found in Ohio Rev.Code § 2305.10.⁹ Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 963 (6th Cir.1987);¹⁰ SCI Systems, Inc., 748 F.Supp. at 1261.

All material facts show that Plaintiffs Freed knew of Defendants' use of the phrase "Moondog Coronation Ball" more than two years prior to the filing of this complaint. The Freeds delayed in asserting their claims and acquiesced in defendants' use of the mark. David Freed, the DJ's brother, was aware of the use of the mark in 1986. In 1992, both David Freed and Lance Freed were interviewed in relation to WMJI's promotion of the 1992 concert. Having failed to protect any rights in the service mark within two years, the heirs of Alan Freed did nothing to protect their rights before this October 9, 1996, suit. As such, the Plaintiffs are stopped from claiming against Defendants.¹¹

Having failed to timely claim against Defendants, and because Plaintiffs Freed have acquiesced in the use of the service mark by others, they are estopped from claiming damages from these defendants.

However, a finding that laches bars a plaintiff's suit for damages under the Lanham Act does not end our inquiry because plaintiffs asked for injunctive relief as to future conduct. Prospective relief in an infringement action is not barred by a finding of laches. SCI Systems, Inc., 748 F.Supp. at 1261-62.

To defeat a suit for injunctive relief, a defendant must also prove elements of estoppel which requires more than a showing of mere silence on the part of a plaintiff; defendant must show that it had been misled by plaintiff through actual misrepresentations, affirmative acts of misconduct, intentional misleading silence, or conduct amounting to virtual abandonment of the trademark. Id. (citing TWM Mfg. Co., Inc. v. Dura Corp., 592 F.2d 346, 350 (6th Cir.1979), cert. denied after remands, 479 U.S. 852 (1986)).

Under Ohio law as well a party invoking laches, to be successful, must show that the person for whose benefit the doctrine will operate has been materially prejudiced by the delay of the person asserting the claim. State, ex rel. Caspar v. Dayton, 53 Ohio St.3d 16, 20, 558 N.E.2d 49 (1990).

OmniAmerica claims that the Freeds abandoned the mark, if they ever had any interest in it, because Alan Freed did nothing to show use of the mark in commerce from the mid-1950s until his death in 1965 and his heirs took no steps to protect and use the mark in commerce from 1986 until the filing of this suit ten years later.

The parties agree that Alan Freed created the phrase "Moondog Coronation Ball" for a single concert in 1952. The evidence is clear that...