Gallina v. Giacalone

• Decision Date: 14 February 1997
• Citation: 655 N.Y.S.2d 317,171 Misc.2d 645
• Parties: Lawrence J. GALLINA et al., Plaintiffs, v. Paul GIACALONE, Defendant.
• Court: New York Supreme Court

Page 317

655 N.Y.S.2d 317

171 Misc.2d 645

Lawrence J. GALLINA et al., Plaintiffs, v. Paul GIACALONE, Defendant.

Supreme Court, Kings County.

Feb. 14, 1997.

Jack S. Chrisomalis, Brooklyn, for plaintiffs.

Mark E. Alter, Mineola (Sandra M. Radna, of counsel), for defendant.

FRANK VACCARO, Justice.

Upon the court's own motion, the decision/order in this matter, dated December 9, 1996, is hereby recalled and the following is substituted in its place.

Plaintiffs seek an order preliminarily enjoining defendant from making allegedly false statements about their musical enterprise that they contend are destructive of their business. Defendant cross-moves for an order, pursuant to the General Business Law, enjoining the plaintiffs from billing themselves as "The Fireflies" in their musical performances, dismissing the plaintiffs' complaint, and seeking sanctions.

In 1959, defendant Paul Giacalone, using his stage name of Paul DeMaya, together with three other individuals, created a musical group named "The Fireflies." ¹ In their four-year tenure, they achieved a measure of money and fame for their "doo-wop" sound. ² The two major "hit" records of the Fireflies were "You Were Mine" and "I Can't Say Goodbye," both composed by defendant Giacalone.

In 1962-1963, defendant Giacalone's three fellow band members left the Fireflies. Acting on his own behalf and on behalf of the Fireflies, from 1962 to date, Giacalone receives all the royalties for the record sales and radio air play of recordings of the Fireflies.

Thirty years later, in 1992, an individual named John Muro asked Giacalone to give an audition to three musicians, the plaintiffs herein: Lawrence Gallina, Charles Marrone, and Frank Pionegro, in an effort to reconstitute the Fireflies. Giacalone agreed. The defendant and the plaintiffs gave only one performance, and Giacalone decided that he no longer wanted the three plaintiff musicians to perform with him.

Prior to the break-up of their short-lived association, in 1993, plaintiffs and defendant applied to register the service mark of the Fireflies. The United States Department of Commerce Patent and Trademark Office denied the request, finding that an individual already held a registered mark for the name "The Firefly" in the grammatically singular form.

After Giacalone's decision to terminate his association with them, the plaintiffs, nevertheless, continued to seek singing engagements and performed, billing themselves as the Fireflies. In numerous advertisements, announcements, posters, and appearances, the plaintiffs claimed that they would perform "their smash hits of 'You Were Mine' and 'I Can't Say Goodbye' " (emphasis added).

The plaintiffs also, at one point, allegedly entered into and allegedly renewed a license agreement with the registered owner of the mark of "The Firefly," allegedly claimed to be authorized as a mark for use in entertainment services. Plaintiffs, however, have failed to attach to the papers on the instant motions a copy of the alleged licensing agreement that would disclose its terms and duration, or a copy of the registration certificate for the mark "The Firefly" that would reveal its intended use and purpose. The plaintiffs, furthermore, in a published interview with the Daily News (Apr. 22, 1994), a widely read daily newspaper in New York City, claimed that defendant withdrew from the Fireflies and that plaintiffs had acquired a trademark for the name.

In response to plaintiffs' conduct, Giacalone has repeatedly communicated with various journals, concert and event sponsors, and radio stations that he, not the plaintiffs, represents the Fireflies, and defendant further warned that he will initiate a civil action against anyone who permits the plaintiffs to bill or call themselves or perform under the name "The Fireflies."

The plaintiffs, in their motion, seek to enjoin Giacalone's actions, arguing that his repeated threats to promoters, newspapers, and disc jockeys are defamatory and are resulting in substantial loss of income. Giacalone, in his cross motion, seeks to enjoin the plaintiffs from using the name "The Fireflies."

In order to obtain a preliminary injunction, a party must demonstrate a "probability of success [on the merits], danger of irreparable injury in the absence of an injunction, and a balance of the equities in [its] favor" (Aetna Ins. Co. v. Capasso, 75 N.Y.2d 860, 862, 552 N.Y.S.2d 918, 552 N.E.2d 166; Grant Co. v. Srogi, 52 N.Y.2d 496, 517, 438 N.Y.S.2d 761, 420 N.E.2d 953; Graziano v. Turiano, 231 A.D.2d 674, 647 N.Y.S.2d 996 [2d Dept]; Board of Dir. of Exec. House Owners, Inc. v. E.H. Assocs., 230 A.D.2d 816, 646 N.Y.S.2d 631, 632 [2d Dept]; Yeshiva Univ. v. Greenberg, 228 A.D.2d 494, 644 N.Y.S.2d 313, 314 [2d Dept]; Patti v. Cohen, 227 A.D.2d 602, 643 N.Y.S.2d 389 [2d Dept] ).

The discussion of plaintiffs' motion regarding the legality of defendant calling promoters to say that he, and not the plaintiffs, can use the name "The Fireflies" and threatening legal action if the plaintiffs perform under that name involves the same issue as that contained in Giacalone's cross motion seeking to enjoin plaintiffs from using the name: which of the parties can perform under that name. The court will therefore first discuss defendant's cross motion. ³

The law of trade and service mark protection advances two goals. First, it protects consumers from false and misleading representations concerning the source, quality, and identity of a product. Second, it protects the rights of the owner of the trade or service mark to have his or her product or service identified by a distinct name or label (Birthright v. Birthright, Inc., 827 F.Supp. 1114, 1133 [D.N.J.1993]; Estate of Presley v. Russen, 513 F.Supp. 1339, 1362 [D.N.J.1981] ).

Under appropriate circumstances, both Federal and New York statutory law can protect even an unregistered mark. The Federal Lanham Act (15 U.S.C. § 1125[a] ) proscribes "any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which" "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her ... services ... by another person" (15 U.S.C. § 1125[a][1][A] ). The section further provides for injunctive relief and, in certain cases, for other relief (id., § 1125(c)[2] ) and is the only provision of the Lanham Act that is available to protect an unregistered mark (Centaur Comm. Ltd. v. A/S/M Comm., Inc., 830 F.2d 1217, 1220 [2d Cir.1987]; Simon & Schuster, Inc. v. Dove Audio, Inc., 936 F.Supp. 156, 160 [S.D.N.Y.1996] ).

Under our State's statutes, General Business Law § 368-d, also known as the Anti-Dilution statute, states that the "[l]ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement or of a mark registered or not registered ..." The term "dilution" in § 368-d is based upon the idea that a name or mark can lose its ability, through an unauthorized use, of unmistakably distinguishing one source (Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 506 [2d Cir.1996] ).

Section 133 of the General Business Law, in addition, permits a State court possessing jurisdiction to issue an injunction to prevent an entity from adopting a name for advertising and trade purposes that would "deceive or mislead the public ... as to the connection of such [entity] with any other [entity]," even without requiring proof that any person has in fact been misled or deceived. ⁴

For nearly 100 years, beginning with Messer v. "The Fadettes", 168 Mass. 140, 46 N.E. 407 [1897], courts in this country have protected the right of a musical group to its name from predatory encroachment by rival entertainers (see, Annotation, Trademark Protection Under Lanham Act [15 USCS §§ 1501 et seq.] of Name of Musical Group, 115 A.L.R.Fed. 171 [1993]; see, e.g., Cash v. Brooks, 906 F.Supp. 450 [E.D.Tenn.1995]; Apple Corps Ltd. v. A.D.P.R., Inc., 843 F.Supp. 342 [M.D.Tenn.1993]; Baker v. Parris, 777 F.Supp. 299 [S.D.N.Y.1991]; Grondin v. Rossington, 690 F.Supp. 200 [S.D.N.Y.1988]; Rick v. Buchansky, supra, 609 F.Supp. 1522 [S.D.N.Y.1985] ).

Applying the foregoing legal principles to the present case, the court finds that the plaintiffs have unfairly capitalized upon the work of defendant Giacalone and have essentially attempted to pirate the name of the Fireflies. Giacalone was a founding member of the group in 1959. He wrote the Fireflies' two most famous songs, which plaintiffs' own publicity describes as "Smash Hits." From 1962 to the present, Giacalone has been recognized by the record industry as the sole person qualified to represent the Fireflies by virtue of sending royalties to Giacalone for "The Fireflies." During that period, Giacalone continuously accepted payments for the Fireflies.

In 1992, defendant Giacalone sought to reconstitute the group for the purpose of performing. He, with the help of his son, has attempted to re-form the "Fireflies," since his break-up and dissatisfaction with the plaintiffs, but has been prevented from doing so because of the plaintiffs' illegal expropriation of the Fireflies' name.

The court has reviewed the extensive exhibits attached to both the motion and cross motion. It is readily apparent that the plaintiffs, who, concededly, did not arrive on the scene until 1992--33 years after "The Fireflies" were first formed--and who performed only once with one of its founding members, embarked upon a course of conduct to expropriate the group's name and to mislead the public into believing that they are the original "Fireflies." The court's review of the exhibits, and of plaintiffs' publicity efforts, shows that they are deceptive or misleading, attempting to take credit as "The Fireflies" f...