Marshak v. Green, 79 Civ. 3458.

• Decision Date: 26 January 1981
• Docket Number: 79 Civ. 3458.
• Citation: 505 F. Supp. 1054
• Parties: Larry MARSHAK, Plaintiff, v. Doc GREEN, John Doe "1", John Doe "2", Bernard Jones, David Rick and Sandy Wolfe, Defendants.
• Court: U.S. District Court — Southern District of New York

505 F. Supp. 1054

Larry MARSHAK, Plaintiff, v. Doc GREEN, John Doe "1", John Doe "2", Bernard Jones, David Rick and Sandy Wolfe, Defendants.

79 Civ. 3458.

United States District Court, S. D. New York.

January 26, 1981.

COPYRIGHT MATERIAL OMITTED

Marcus & Marcus, New York City, for plaintiff; Clark A. Marcus, New York City, of counsel.

Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, trial counsel for plaintiff; Stephen B. Judlowe, New York City, of counsel.

Walter Hofer, New York City, for defendants Doc Green and David Rick; Jeffrey L. Ringler, White Plains, of counsel.

Paul B. Morofsky, New York City, trial counsel for defendants Doc Green and David Rick.

OPINION

FINDINGS OF FACT AND CONCLUSIONS OF LAW

EDWARD WEINFELD, District Judge.

The defendant Doc Green, together with Charles Thomas and Elsbeary Hobbs (not named as defendants), filed on December 17, 1976 in the United States Patent and Trademark Office a service-mark application in the name of "The Drifters," a partnership composed of all three. The Drifters, as the aforesaid applicants, assigned to plaintiff Larry Marshak all their right, title and interest in the pending application. The registration was issued by the Patent Office on January 3, 1978 and covers the mark "THE DRIFTERS" used for "ENTERTAINMENT SERVICES — NAMELY A SINGING GROUP." Marshak has been the manager of The Drifters musical group which included defendant Green since 1971.

In July 1979, Marshak commenced this action against Doc Green and David Rick, the manager of a singing group formed shortly before and using the name The Drifters. Plaintiff charges that such use by the defendants constituted an infringement of the registered service mark,¹ unfair competition,² and dilution of the mark.³ He seeks injunctive relief against defendants' continued use of the mark to represent their services and in the promotion thereof, as well as damages and an accounting of defendants' profits. Defendants, in addition to contending that the assignment of the registration application on which plaintiff bases his ownership is invalid and that plaintiff does not have a right to the exclusive use of the mark, seek cancellation of the registration. Further, they counterclaim for an accounting of monies allegedly owed defendant Green by plaintiff from the time Green performed for plaintiff as a Drifter.

After a thorough review of the trial testimony, including the transcript of the hearing on a preliminary injunction, exhibits and an evaluation of the credibility of witnesses, the Court finds that the plaintiff has sustained his burden of proof as to his respective claims and is entitled to relief; likewise, the defendants have failed to meet their burden on the counterclaims, which are dismissed.

Events Prior to 1970

A group known as "The Drifters" originally achieved prominence in the late 1950s and early 1960s. Green, Hobbs and Thomas were part of The Drifters when the group was most successful at the end of the 1950s and early 1960s and they recorded popular hit songs such as "There Goes My Baby" and "Save The Last Dance For Me." During this period they were under the management of George Treadwell. In addition to Thomas, Hobbs and Green, who were publicly recognized as part of The Drifters, there were others who at times played with the group. Although the membership of the group was not constant, the evidence establishes that Thomas, Hobbs and Green recorded on all or most of The Drifters' hit records, and their pictures appeared on the covers of several albums that have been continuously available to the public since then. The Drifters continued to record hit songs through 1966; by that time Thomas, Hobbs and Green, as well as others who had participated in the hit songs, had for various reasons stopped singing actively with the group.

The Period Subsequent to 1970

Thomas, Hobbs and Green resumed performing together under the name of The Drifters in 1969 and have been managed by plaintiff Marshak since 1971. During the 1970s, Thomas, Hobbs and Green now and then performed along with one or two others and continued to be recognized by the public as "The Drifters." Under the plaintiff's direction, they made records, tapes, appeared on television and performed live concerts throughout the country (including one at the White House).

There is no evidence that during this decade any other group was so identified by the public as The Drifters, or that any other group had an unrestricted right to the name, although defendants sought to prove that plaintiff's group was not the exclusive user of the name "The Drifters."⁴ Thus, they suggested that Faye Treadwell, George Treadwell's widow, has continued to manage a group of Drifters since his death, and that this group had at least as great a right as plaintiff to "The Drifters" name. But the evidence was insufficient to support this claim. The evidence establishes that following a 1971 infringement suit brought by Mrs. Treadwell against Marshak in New York State Supreme Court, she had agreed to restrict her group's performances to Europe. Further, defendants asserted that Bill Pinckney, a former member of the group, currently performs under "The Drifters" name. Again, defendants offered no direct evidence substantiating this position; to the contrary, the proof establishes that Marshak has an agreement with Pinckney licensing Pinckney to use "The Drifters" name only in the South.

Typical of defendants' efforts in support of their position that plaintiff's use of "The Drifters" is not exclusive is the testimony of James Hudson, a rock manager and producer. He testified that, throughout the 1970s, he booked plaintiff's group and understood The Drifters to include Thomas, Hobbs, Green and another. Although he heard of others using the name, he was not personally familiar with them nor did he know if they had any right to the name. This vague and inconclusive testimony fails to support defendants' claim that plaintiff's group did not have exclusive use of the service mark prior to applying to register it in 1976.⁵

In 1976, after reading that another singing group, The Platters, had, because of their service-mark registration, been successful in preventing others from using its name,⁶ plaintiff urged Thomas, Hobbs and Green to apply to register "The Drifters" to protect their right to the exclusive use of the name. Marshak agreed that, if they assigned their rights under the application to him, he would continue as their manager and be vigilant in stopping others from using "The Drifters" name. The three considered plaintiff's offer out of his presence and for their mutual benefit signed both the application and the assignment of their own free will and with the understanding that the purpose was to protect their right to the name.⁷ As already noted, the service mark was finally registered on January 3, 1978. Since then, Marshak has been active in policing the mark and instituted several lawsuits based on alleged infringement.

Thomas, Hobbs and Green continued to perform together under plaintiff's management until June 1979, when Green, claiming dissatisfaction with the group's financial arrangements, broke away and formed another group, managed by defendant Rick, also using the name "The Drifters." Green's group, which performs in the same style as plaintiff's, has appeared in many of the same locations as plaintiff's and solicited trade through many of the same agents and clubs.⁸

The essence of plaintiff's infringement and unfair-competition claims, under both federal and New York law, "is that the use of the infringing term creates the likelihood of consumer confusion; the facts supporting both are also substantially the same. The essential inquiry is whether an appreciable number of ordinarily prudent prospective customers are likely to be confused or misled."⁹ Several factors are considered, including the strength of the prior user's mark, the degree of similarity, and the defendants' good faith in adopting the mark.¹⁰

Plaintiff has clearly shown a likelihood of confusion. Defendants' group has performed in the same areas and in the same style as plaintiff's; they use the same name; they are in direct competition. Green himself testified that the public, in buying tickets to a concert, was likely to be confused as to which group was performing. Further, producer Hudson, called as a witness by defendants, testified that, whenever he booked defendants' group, he could not guarantee that plaintiff's group would not appear in the same area.

Defendants in their own promotional material make no attempt to distinguish between the groups. In one such example, a flyer, defendants describe Green as an original member of The Drifters and as having appeared with the group in concerts, on television, and on records, none of which refers to defendants' group. The flyer lists eleven hit recordings, including "There Goes My Baby" and "Save The Last Dance For Me," all of which were recorded well before 1979, when Green's group was formed. Finally, it designates defendant Rick as the person to contact to book the group.¹¹ Defendants in promoting their own group were thus trading on the name and goodwill of plaintiff's group.

Moreover, defendant Rick evinced an express intention to capitalize on plaintiff's goodwill. Having been sought out by Green for help in forming a new group after Green left plaintiff's group, Rick chose the name The Drifters precisely because "the only thing that draws is a name that is well known or halfway known or whatever," and that The Drifters is such a name.¹² In short, defendants intended to capitalize on plaintiff's right to the use of "The Drifters." They deliberately used the name aware they had no right thereto, with consequent confusion of the public.

Plaintiff has affirmatively established that "The Drifters" is a valuable name that has been well known both within the industry and to the...