Greene v. Sha-Na-Na

• Decision Date: 23 May 1986
• Docket Number: Civ. A. No. N-84-628 (RCZ).
• Parties: Frederick Dennis GREENE, Plaintiff, v. SHA-NA-NA, a partnership, An Evening With Sha-Na-Na, a partnership, Leonard J. Baker, Scott J. Simon, Donald W. York and John F. Marcellino, Defendants.
• Court: U.S. District Court — District of Connecticut

637 F. Supp. 591

Frederick Dennis GREENE, Plaintiff, v. SHA-NA-NA, a partnership, An Evening With Sha-Na-Na, a partnership, Leonard J. Baker, Scott J. Simon, Donald W. York and John F. Marcellino, Defendants.

Civ. A. No. N-84-628 (RCZ).

United States District Court, D. Connecticut.

May 23, 1986.

William R. Murphy, Leonard C. Boyle, Tyler Cooper & Alcorn, New Haven, Conn., Philip R. Hoffman, Pryor, Cashman, Sherman & Flynn, New York City, for plaintiff.

William H. Clendenen, Jr., David M. Lesser, Clendenen & Lesser, New Haven, Conn., Lee Calligaro, Casson, Calligaro & Mutryn, Washington, D.C., for defendants.

RULING ON DEFENDANTS' MOTION TO DISMISS

ZAMPANO, Senior District Judge.

The plaintiff, Frederick Dennis Greene, also known as Denny Greene and formerly a member of the rock and roll band and partnership known as "Sha-Na-Na," instituted this suit for injunctive, monetary, and other relief against four of his former partners in "Sha-Na-Na": Leonard J. Baker, Scott J. Simon, Donald W. York, and John F. Marcellino (collectively referred to as the "individual defendants"). This suit arises from Greene's expulsion from and the dissolution of the "Sha-Na-Na" partnership and another partnership, "An Evening With Sha-Na-Na," by the individual defendants, and their subsequent formation of two new partnerships under the same names. The new partnerships are also defendants in this suit.

Pending is the defendants' motion to dismiss for lack of in personam jurisdiction and improper venue pursuant to Fed.R. Civ.P. 12(b)(2) and (3). Three of the individual defendants are citizens of California and one is a citizen of Massachusetts, while the plaintiff is a citizen of Connecticut. The partnership defendants were formed under the laws of California. The complaint alleges both diversity and federal question subject matter jurisdiction.

In addition to the pleadings, the record before the Court on defendants' motion to dismiss consists of memoranda and supporting affidavits, as well as answers to interrogatories and documents exchanged by the parties after the Court, at oral argument, authorized jurisdictional discovery.

FACTS

The record reveals that in 1969, the plaintiff, along with defendants York and Marcellino and various other individuals, formed a rock and roll band and entered into an oral agreement in New York to form the "Sha-Na-Na" partnership (hereinafter referred to as "the Original Sha-Na-Na"). Defendants Baker and Simon joined the band and partnership in 1970.

Between 1969 and October 1984, the Original Sha-Na-Na, specializing in music of the 1950's, performed at numerous concerts, recorded several albums, appeared in motion pictures and on TV variety shows, and had their own syndicated TV series.

In 1978, after application to the United States Patent and Trademark Office, the service mark "Sha-Na-Na" was registered (No. 1,094,764) in the names of the plaintiff and the individual defendants as joint owners for "musical entertainment services rendered by a group." In 1981, the group entered into an oral agreement whereby a second partnership known as "An Evening With Sha-Na-Na" (hereinafter referred to as "the Original An Evening With Sha-Na-Na") was formed.¹

The plaintiff contends that at or about the time of a performance at the Woodstock Music and Performing Arts Festival in August 1969, the Original Sha-Na-Na agreed that, in view of its rapidly growing reputation, all of its efforts would be concentrated upon performing only in concert settings in the top rated music halls, arenas, and auditoriums and only for amounts of money commensurate with their reputation.

Fifteen years later, in August 1984, the Original Sha-Na-Na received an offer to perform for one week in August at the Sands Hotel in Las Vegas, Nevada for compensation representing approximately ten percent of the amount the band customarily received for such performances. Despite the lower than usual compensation, the Original Sha-Na-Na agreed to perform at the Sands Hotel as a "showcase" to promote further bookings at amounts commensurate with its usual compensation. However, the plaintiff claims that, at the same time, the Original Sha-Na-Na reaffirmed its agreement of 1969 that, after this "showcase", it would continue to concentrate its efforts on performing only in top-rated settings for money befitting its reputation.

In October 1984, without consulting the plaintiff, the individual defendants entered into another agreement to perform at the Sands Hotel over a two-week period beginning on October 16, 1984, for a small fraction of the Original Sha-Na-Na's usual compensation. At a meeting of the partnerships in Las Vegas on October 11, 1984, the plaintiff informed the individual defendants that the second booking at the Sands Hotel was a violation of the original partnership's agreement and practice over the years to perform only for much higher rates of compensation. The individual defendants responded that they would perform at the Sands Hotel beginning on October 16, 1984, with or without his consent or participation. Moreover, they informed the plaintiff that they had also entered into agreements to perform in New Orleans, Louisiana for two weeks in late December, and in Dallas, Texas for two weeks in January 1985, for less than the band's usual pay, and that they would go forward with these performances with or without his consent.

On October 15, 1984, the individual defendants telephoned the plaintiff in Connecticut and told him that if he did not perform at the Sands Hotel in Las Vegas on October 17, 1984, he would be expelled from the original partnerships. The next day, a telegram confirming the message was sent to the plaintiff in Connecticut. That same day the plaintiff responded with his own telegram, informing the individual defendants that he would not appear at the Sands Hotel engagement, that he was not withdrawing as a partner, and that he would be available for concerts subsequent to the Sands Hotel performance. Nonetheless, by a letter dated October 22, 1984, the individual defendants informed the plaintiff that on October 17, 1984, they had filed a notice of dissolution of the Original Sha-Na-Na and the Original An Evening with Sha-Na-Na partnerships in California and had formed two new partnerships in California under the same names (hereinafter referred to as "the New Sha-Na-Na" and "the New An Evening With Sha-Na-Na"). This lawsuit followed.

In effect the plaintiff contends that, since October 1984, the defendants have been unlawfully using the registered service mark "Sha-Na-Na" and wrongfully holding themselves out as the Original Sha-Na-Na. He seeks injunctive relief and compensatory damages based on breach of contract, wrongful dissolution of the original partnerships, statutory and common law service mark infringement, unfair competition, and misappropriation of property.

Subsequent to the commencement of the instant action, the New York Post, a newspaper sold in Connecticut, featured an advertisement stating that Sha-Na-Na would be appearing at Grossinger's in upstate New York on December 27, 1984. Above the name Sha-Na-Na was a picture of the Original Sha-Na-Na, including the plaintiff. In addition, on January 13, 1985, defendants appeared as the Sha-Na-Na on nationwide television as part of the "Weekend With the Stars Telethon for Cerebral Palsy." The program, which originated in California, was telecast over one Connecticut television station, Channel 30, WVIT, the NBC affiliate in Hartford, and was cable-cast throughout the country and in Connecticut on Superstation WOR.

DISCUSSION

A. Personal Jurisdiction

The plaintiff attempts to sustain his burden of establishing that the defendants are subject to the personal jurisdiction of this Court, Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2 Cir.1985), by reference to three provisions of the Connecticut "long-arm" statute governing personal jurisdiction over nonresident individuals and foreign partnerships. Conn.Gen. Stat. § 52-59b.² In diversity and federal question lawsuits, before a federal court can properly assert personal jurisdiction over such defendants, it must make two inquiries. First, it must determine whether the state's long-arm statute authorizes the exercise of jurisdiction. See United States v. First National City Bank, 379 U.S. 378, 381, 85 S.Ct. 528, 530, 13 L.Ed.2d 365 (1965); Arrowsmith v. United Press International, 320 F.2d 219, 223 (2 Cir.1963) (en banc); Bross Utilities Service Corp. v. Aboubshait, 489 F.Supp. 1366, 1370 (D.Conn.), aff'd mem., 646 F.2d 559 (2 Cir. 1980); Lombard Bros. v. General Assessment Management Co., 190 Conn. 245, 250, 460 A.2d 481 (1983). Second, the court must decide whether the statutory authority comports with due process. See, e.g., International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 158, 90 L.Ed. 95 (1945), and its progeny.

Section 52-59b(a)(1)

Section 52-59b(a)(1) of Connecticut's long-arm statute extends jurisdiction over nonresidents and foreign partnerships if they "transact any business" within Connecticut and if the present cause of action arises from the transaction of such business. Plaintiff argues that his causes of action for service mark infringement and unfair competition arise from the defendants' transaction of business in Connecticut in the form of "solicitation" through the December 21, 1984 ad in the New York Post advertising their appearance at Grossinger's, and through their January 15, 1985 nationwide telethon appearance.³

It is well established that jurisdiction is to be determined by examining the conduct of the defendants as of the time of service of the complaint, Connecticut Artcraft Corp. v. Smith, 574 F.Supp. 626, 630 (D.Conn.1983) (citing Lachman v. Bank of Louisiana in New Orleans, 510 F.Supp. 753, 757 (N.D.Ohio 1981)), which in this case occurred on November 29, 1984. As such, the plaintiff's causes of action cannot be...