Kassbaum v. Steppenwolf Productions, Inc.

• Decision Date: 29 December 2000
• Docket Number: No. 99-55656,99-55656
• Citation: 236 F.3d 487
• Parties: (9th Cir. 2000) NICHOLAS KASSBAUM, aka Nick St. Nicholas, Plaintiff-Appellant, v. STEPPENWOLF PRODUCTIONS, INC.; STEPPENWOLF, INC.; JOACHIM FRITZ KREUDELDAT, aka John Kay, Defendants-Appellees
• Court: U.S. Court of Appeals — Ninth Circuit

Page 487

236 F.3d 487 (9th Cir. 2000)

NICHOLAS KASSBAUM, aka Nick St. Nicholas, Plaintiff-Appellant, v. STEPPENWOLF PRODUCTIONS, INC.; STEPPENWOLF, INC.; JOACHIM FRITZ KREUDELDAT, aka John Kay, Defendants-Appellees.

No. 99-55656

UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT

Argued and Submitted September 11, 2000

Filed December 29, 2000

Allen Hyman, Law Offices of Allen Hyman, North Hollywood, California, for the plaintiff-appellant.

Leonard S. Machtinger, Kenoff & Machtinger, Los Angeles, California, for the defendant-appellee.

Daniel J. Quisenberry, Kirtland & Packard, LLP, Los Angeles, California, for the amicus curiae.

Appeal from the United States District Court for the Central District of California Lourdes G. Baird, District Judge, Presiding. D.C. No.CV-97-08691-LGB

Before: Harry Pregerson, William A. Fletcher, and Ronald M. Gould, Circuit Judges.

GOULD, Circuit Judge:

This case raises the issue of whether a contract between the parties or section 32(1)(a) of the Lanham Trade-Mark Act, 15 U.S.C. 1114(1)(a) ("Lanham Act"), bars Nicholas Kassbaum ("Kassbaum"), a former member of the rock band "Steppenwolf," from referring to himself in promotional materials for a new band as "formerly of Steppenwolf," an "original member of Steppenwolf," or an "original founding member of Steppenwolf."

Kassbaum filed a complaint in federal district court seeking a declaration that he is not barred by any contract or by the Lanham Act from referring to himself as a former member of Steppenwolf. The district court (1) dismissed Kassbaum's complaint for declaratory relief; (2) granted Steppenwolf Productions, Inc. ("SPI") and Steppenwolf, Inc.'s ("SI") motion for summary judgment on both the complaint for declaratory relief and SPI's counterclaim for breach of contract;¹ (3) granted SPI and SI's request for a permanent injunction; and (4) denied Kassbaum's motion for reconsideration. Kassbaum appeals. We have jurisdiction pursuant to 28 U.S.C.S 1291 and reverse. The district court erred by (1) granting summary judgment to SPI and SI; (2) dismissing Kassbaum's complaint for declaratory relief; and (3) granting SPI and SI's motion for a permanent injunction. We hold that Kassbaum is not barred by contract or by the Lanham Act from truthfully referring to himself, in promotional materials or otherwise, as a former member of Steppenwolf.

FACTS AND PROCEDURAL HISTORY

In 1967, John Kay, Jerry Edmonton, Michael Monarch and Goldie McJohn formed a musical band called "Steppenwolf." In 1968, Nicholas Kassbaum, who is professionally known as "Nick St. Nicholas," joined Steppenwolf as a bass player. That year, the band members entered into a partnership agreement whereby the members became co-equal partners and owners in Steppenwolf, and agreed to share equally the band's expenses and income. Also in 1968, the band members signed a recording agreement with Dunhill Records both as partners and as Steppenwolf band members.

From late 1968 until late April 1970, Steppenwolf, with Kassbaum as its bass player, toured the world in concerts and recorded Steppenwolf 's well-received music. Kassbaum appeared prominently on Steppenwolf record album covers and authored Steppenwolf compositions. In 1971, John Kay, who had asserted control over Steppenwolf, excluded Kassbaum from the band.

In 1975, after Kassbaum and Michael Monarch had been excluded, and John Kay had stopped performing as Steppenwolf, Kassbaum and Goldie McJohn began to perform as "The New Steppenwolf." This began a series of legal disputes over the different band members' use of the name Steppenwolf.

In 1976, Kassbaum filed a complaint against SI and SPI to obtain an order prohibiting SPI from interfering with Kassbaum's performances as The New Steppenwolf. In 1977, Kassbaum paid $17,500.00 to John Kay and SPI in exchange for their agreement to grant Goldie McJohn and Kassbaum the exclusive right to the use of the name Steppenwolf for the purposes of live performances and recordings.

In 1979, Kassbaum entered into a second agreement whereby SI and SPI granted The New Steppenwolf, Inc. the exclusive right to use the name Steppenwolf until 1981 in connection with recording, production, manufacture, sale and distribution of records and tapes containing performances ofa musical group. Kassbaum performed as Steppenwolf from 1977 through 1980.

On May 27, 1980, Kassbaum, The New Steppenwolf, Inc., SI and SPI entered into a third contract ("the 1980 contract") which states, in relevant part:

ACKNOWLEDGEMENT [sic] AND WAIVER.

[KASSBAUM], THE NEW STEPPENWOLF, INC. and GEOFFREY EMORY hereby acknowledge and agree that [SI] and [SPI] own all right, title and inter est in the name "STEPPENWOLF ". [KASS BAUM], THE NEW STEPPENWOLF, INC., and GEOFFREY EMORY hereby acknowledge and agree that [SI] and [SPI] have the sole and exclusive right to use the name "STEPPENWOLF " in connec tion with the production, manufacture and distribu tion of phonograph records, in live, in-concert performances of a musical group, and all other uses of the name "STEPPENWOLF " in the entertain ment industry. [KASSBAUM], THE NEW STEP PENWOLF, INC. and GEOFFREY EMORY now and forever, waive, relinquish and release any and all of their individual or collective rights in the name "STEPPENWOLF " or any other word or phrase incorporating the name "STEPPENWOLF " for any purpose whatsoever. [KASSBAUM], THE NEW STEPPENWOLF, INC. and GEOFFREY EMORY hereby agree to waive, relinquish and release any trademark, trade name, service mark, or service name rights any or all of them may have in the name "STEPPENWOLF." [KASSBAUM], THE NEW STEPPENWOLF, INC. and GEOFFREY EMORY further agree to transfer or assign all such trademark, trade name, service mark or service name rights they may have in the name "STEPPENWOLF " to[SI] and [SPI]. Notwithstanding anything to the contrary in the foregoing, nothing contained herein shall be deemed an acknowledgment on the part of [SI] and [SPI] that [KASSBAUM], THE NEW STEPPEN WOLF, INC., and/or GEOFFREY EMORY, ever acquired or held any such trademark, trade name, service mark or service name right in the name "STEPPENWOLF."

The contract also provided that, in exchange for this acknowledgment and waiver, "[SI] and [SPI ] agree to pay [KASSBAUM], THE NEW STEPPENWOLF, INC. and GEOFFREY EMORY the sum of THREE THOUSAND DOLLARS ($3,000.00)."

From 1980, when the contract was executed, until 1996, Kassbaum performed as "Lone Wolf." During that time, without objection from the parties to the 1980 contract, Kassbaum referred to his historical association with Steppenwolf,describing himself as a "former member of " or "previous member of " Steppenwolf.

From 1996 until the present, Kassbaum has performed in a group called World Classic Rockers. The group is comprised of former members of various musical groups well known to rock music fans including: Randy Meiser, a former member of "Wings;" Spencer Davis, a former member of the "Spencer Davis Group;" Bruce Gary, a former member of "Knack;" and Michael Monarch and Kassbaum, former members of Steppenwolf. While performing as the World Classic Rockers, Kassbaum and the other band members often identified themselves by referring to their former musical associations. For example, one advertisement identifies Kassbaum as "NICK ST. NICHOLAS former member of Steppenwolf." Kassbaum also promoted himself as being a "Former Original Member of Steppenwolf," "Original Founding Member of Steppenwolf," and "Formerly of Steppenwolf."

In response to these promotional claims, SPI and SI sent Kassbaum cease and desist letters asserting that Kassbaum's historical references to Steppenwolf violated federal trademark law and the 1980 contract. Kassbaum then filed a complaint in federal district court seeking a declaration that he is entitled to refer to himself as "Formerly of Steppenwolf," an "Original Member of Steppenwolf," and an "Original Founding Member of Steppenwolf." SPI answered and filed a counterclaim alleging trademark infringement, unfair competition and breach of contract.² Thereafter, SPI and SI moved for summary judgment on Kassbaum's complaint for declaratory relief and SPI's counterclaim for breach of contract. SPI and SI also sought permanently to enjoin Kassbaum and his agents from using the name Steppenwolf.

The district court granted SPI and SI's motion for summary judgment on Kassbaum's complaint for declaratory relief, granted SPI's counterclaim for breach of contract, dismissed Kassbaum's complaint for declaratory relief, and granted SPI and SI's request for a permanent injunction forbidding Kassbaum from using the designations "Formerly of Steppenwolf," "Original Member of Steppenwolf " and "Original Founding Member of Steppenwolf," in promotional materials.

Kassbaum appeals, contending that the district court erred. We agree, and we reverse and remand.³

DISCUSSION

I. Summary Judgment and Dismissal of Declaratory Judgment Complaint

We must decide whether either the 1980 contract or the Lanham Act bars Kassbaum from referring to himself as a former member of Steppenwolf.

A. The Contract

As described above, the parties entered into the 1980 contract on May 28, 1980. We must decide whether, by the terms of the contract, Kassbaum agreed that he would not identify himself, for promotional purposes or otherwise, with a true statement that he is a former member of the band Steppenwolf.

We review decisions to grant or deny declaratory relief de novo. Tashima v. Admin. Office of the U.S. Courts, 967 F.2d 1264, 1273 (9th Cir. 1992). Contract interpretation is a question of law we review de novo. Mendler v. Winterland Prod., Ltd., 207 F.3d 1119, 1121 (9th Cir. 2000). We also review grants of summary judgment de novo. Robi v. Reed , 173 F.3d 736, 739 (9th Cir. 1999). "Summary judgment is appropriate when the contract terms are clear and unambiguous, even if the parties disagree as to their meaning." United States v. King...