Rick v. Buchansky, 82 Civ. 3906 (RJW).

• Decision Date: 03 June 1985
• Docket Number: No. 82 Civ. 3906 (RJW).,82 Civ. 3906 (RJW).
• Citation: 609 F. Supp. 1522
• Parties: David RICK, Plaintiff, v. Sheldon BUCHANSKY, Edward Pardocchi, James Spinelli, Frankie Graziano, Charles Garone, Vito Balsamo and Charles Garone d/b/a Stellar Productions, Defendants.
• Court: U.S. District Court — Southern District of New York

609 F. Supp. 1522

David RICK, Plaintiff, v. Sheldon BUCHANSKY, Edward Pardocchi, James Spinelli, Frankie Graziano, Charles Garone, Vito Balsamo and Charles Garone d/b/a Stellar Productions, Defendants.

No. 82 Civ. 3906 (RJW).

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

June 3, 1985.

COPYRIGHT MATERIAL OMITTED

Sbeglia & Shames, New York City (Richard Sbeglia, New York City, of counsel), for plaintiff.

Lowell B. Davis, Kew Gardens, N.Y., for defendants.

OPINION

ROBERT J. WARD, District Judge.

This action is brought pursuant to the Trademark Act of 1946, 15 U.S.C. § 1051 et seq. Jurisdiction is based upon 28 U.S.C. § 1338(a) and principles of pendent jurisdiction. Plaintiff, David Rick, a manager and promoter of musical groups, holds the registered service mark for "VITO AND THE SALUTATIONS." The mark, not coincidentally, is the name of a "doo-wop"¹ musical group Rick has managed since its formation in 1961. Defendants Buchansky, Pardocchi, Spinelli, Graziano and Balsamo, all of whom performed at some time in the group managed by Rick, have formed a second musical group that also performs under the name "Vito and the Salutations" and is managed by defendant Garone d/b/a Stellar Productions.

The amended complaint sets forth ten claims for relief, principally for trademark infringement, unfair competition, breach of contract and malicious interference with contractual relations.² The relief sought by plaintiff includes a permanent injunction, an accounting for profits, and both compensatory and punitive damages. Defendants deny plaintiff's claims, assert several affirmative defenses,³ and raise three counterclaims. Defendants' first counterclaim charges plaintiff with infringing on defendant Balsamo's alleged rights in the name "Vito and the Salutations." The remaining two counterclaims pertain to false and fraudulent statements purportedly made by plaintiff in connection with the registration of his service mark.

On July 9, 1982, after a two-day evidentiary hearing, this Court preliminarily enjoined defendants from using "Vito and the Salutations" as the name of their musical entertainment group. During the two and one-half years that followed, the case was actively litigated. After the completion of additional discovery, the parties amended their pleadings, waived a jury trial, and agreed to bifurcate liability and damage issues. The liability stage of the trial began on March 28, 1985 and lasted six days.

The Court, having heard the testimony adduced during the six-day trial as well as at the previous two-day hearing, having examined the exhibits admitted into evidence at both proceedings, having reviewed its contemporaneous trial notes, which include the Court's appraisal of the witnesses and their demeanor, and having evaluated the pertinent legal principles, finds, upon the totality of the testimony and documentary evidence adduced at trial, that plaintiff is entitled to a permanent injunction and that defendants are not entitled to relief on their counterclaims. The Court reserves decision on plaintiff's contract and tort claims pending receipt of additional evidence at the ensuing trial on the issue of damages. The following opinion constitutes the Court's findings of fact and conclusions of law in accordance with Rule 52(a), Fed.R.Civ.P.

BACKGROUND

In its oral decision rendered July 9, 1982 on plaintiff's motion for a preliminary injunction, this Court recounted in detail the facts giving rise to the instant lawsuit. The Court finds it necessary to review, once again, the relevant details and events in the history of the parties' relationship, as further substantiated by the evidence adduced at the recent six-day trial. Familiarity with the Court's decision of July 9, 1982, however, is assumed.

The instant tale of shortlived success in the mercurial world of popular music begins in late summer or early fall of 1961, when David Rick, already an established manager and promoter of modestly successful musical groups, discovered four young men on a street corner in Brooklyn, singing in the popular "doo-wop" style of the time.⁴ Impressed with the group's apparent talent, Rick invited them to an audition in Manhattan. Robert DiPaolo and Barry Solomon, two members of the foursome, accepted plaintiff's invitation and appeared for the audition accompanied by Dominick Mitchell and Vito Balsamo, the latter a friend of DiPaolo's brother Johnny. All four were in their teens. Balsamo, the youngest, was fifteen at that time.

After hearing the group audition, plaintiff offered to act as the group's manager and promoter. The members of the group, after some deliberation, agreed. Various names for the new group were considered. Plaintiff suggested "The Salutations," which met with the approval of the young performers.⁵ On November 18, 1961, plaintiff entered into a management agreement ("1961 Agreement") with DiPaolo, Mitchell, Solomon and Balsamo, collectively described in the agreement as "The Salutations," Shortly thereafter, however, plaintiff decided that the group should not be billed merely as "The Salutations." As this Court explained in its 1982 decision, "doo-wop" groups of the period frequently augmented the name of the group with the first name of a group member, as in "Dion and the Belmonts" or "Jay and the Americans." Having previously discussed the matter with Vito Balsamo, Rick suggested to the group that it should be named "Vito and the Salutations." All agreed.⁶

In the years that followed, "Vito and the Salutations" tasted briefly of commercial success and popular acclaim. "Gloria," one of the first songs recorded by the group, became a "hit" in the New York area. In 1963 the group recorded "Unchained Melody," which climbed the popular music charts nationwide. The group made several live concert appearances during the early 1960s and also performed on television. Nevertheless, with the "British invasion" of the United States by such popular musical groups as the Beatles, the Dave Clark Five, and the Rolling Stones, and with the rising popularity of such Motown recording artists as Smokey Robinson and the Miracles, the Temptations, and the Supremes, the "doo-wop" era came suddenly to an end. "Vito and the Salutations" never made a commercially successful record after 1963, although plaintiff managed to book engagements for the group through the remainder of the 1960s and into the 1970s.

"Vito and the Salutations" experienced frequent turnovers in personnel almost from its inception. Within a year of its formation, three of the group's original members — DiPaolo, Mitchell and Solomon — had left. Vito Balsamo, the fourth original member, left the group several times during the 1960s for brief periods, working at one time in a factory. He rejoined the group in 1972 and remained until 1974. Since 1974, Balsamo has not performed in the group under plaintiff's management. Until 1978 he worked with various bands in the New York area, after which he moved to South Carolina, where he remained through 1979.

During the 1960s and 1970s, approximately twenty-two different persons performed in the group at one time or another. The group's continued ability to secure bookings for live performances despite the rapid turnover must be attributed largely to the management and promotional efforts of plaintiff. In the 1982 decision on plaintiff's preliminary injunction motion, this Court likened plaintiff's task in managing the group to that of the producer or director of a long-running Broadway play, who must constantly find new performers to fill established roles without substantially altering the nature of the show itself. So Rick, as manager and promoter of "Vito and the Salutations," conceived of the group's performance as an "act" in which each member played a particular role. As individuals left the group, others were found to replace them and to assume their respective parts.

The lead singing role in the group, for example, was that of "Vito." Until 1974, this part was played customarily by Vito Balsamo. However, other individuals had occasion to play the role of "Vito" during this period, either because Balsamo was unable to perform or because he had left the group for a time. After Balsamo's departure in 1974, a number of individuals performed as "Vito." It is estimated that at least ten persons in addition to Balsamo played the role of "Vito" in "Vito and the Salutations" during the 1960s and 1970s.

Perhaps the most hotly contested factual issue in this case has been plaintiff's role as manager of "Vito and the Salutations." The testimony adduced at trial on the issue varied widely and reflected, in large part, the self-interest of the individuals testifying. Plaintiff and Barry Solomon, one of the original "Salutations" and a witness for plaintiff, testified that Rick not only made booking arrangements and handled promotional and financial matters for the group, but that he selected songs, taught vocal and dance technique, and paid all of the group's expenses, including the purchase of stage apparel, meals and lodging. In contrast, defendants Graziano, Buchansky and Balsamo, who had each performed in the group under Rick's management at some time, testified that they had received no vocal or dance training from Rick, and that the group had paid its own expenses.

After the two-day evidentiary hearing held on plaintiff's preliminary injunction motion in 1982, this Court concluded that in his role as manager of "Vito and the Salutations," plaintiff had not acted simply as an agent for the group, but had functioned much like the producer of a theater company or owner of a sports team. The testimony and documents proffered by defendants at trial has not persuaded the Court differently. While the Court would not go so far as to endorse plaintiff's characterization of himself as the artistic wellspring of "Vito and the Salutations," it remains clear that he was far from a mere booking agent....