Singer Management Consultants, Inc. v. Milgram, Civ. No. 07-3929 (DRD).
| Decision Date | 07 April 2009 |
| Docket Number | Civ. No. 07-3929 (DRD). |
| Citation | 608 F.Supp.2d 607 |
| Parties | SINGER MANAGEMENT CONSULTANTS, INC. and Live Gold Operations, Inc., Plaintiffs, v. Anne MILGRAM, Attorney General of the State of New Jersey, Defendant. |
| Court | U.S. District Court — District of New Jersey |
George W. Wright & Associates, LLC, George W. Wright, Esq., Narinder S. Parmar, Esq., Hackensack, NJ, for Plaintiffs.
Pryor Cashman LLP, William L. Charron, Esq., New York, NY, for Plaintiffs only as to the Appeal from Magistrate Judge Salas's Order.
Anne Milgram, Attorney General of New Jersey, Jeffrey Koziar, Esq., Lorraine K. Rak, Esq., Division of Law, Newark, NJ, for Defendant.
On August 16, 2007, Singer Management Consultants, Inc. ("Singer Management") and Live Gold Operations, Inc. ("Live Gold") (collectively, "Plaintiffs") filed this action against the Attorney General of the State of New Jersey, Anne Milgram, (the "Attorney General" or the "State") seeking a temporary restraining order and preliminary and permanent injunctive relief. Plaintiffs allege that the State's action under the Deceptive Practices in Musical Performances Statute, N.J.S.A. 2A:32B-1 et seq. () is preempted by the Lanham Act, 15 U.S.C. § 1125, and violates their rights under the takings clause, equal protection clause and the First Amendment to the U.S. Constitution. The State now moves, pursuant to Federal Rule of Civil Procedure 12(b)(6), to dismiss the Complaint. Additionally, the Plaintiffs now appeal Magistrate Judge Salas's December 29, 2008 Order (the "December 29 Order") denying their request for an award of attorneys' fees and costs pursuant to 42 U.S.C. § 1988(b). For the reasons set forth below, the State's motion to dismiss will be granted and the Plaintiffs' appeal of the December 29 Order will be denied.
Live Gold claims to hold exclusive rights to the unregistered marks "The Platters" and "The Cornell Gunter Coasters," and manages and promotes singing groups by those names. Singer Management claims to hold exclusive rights to the unregistered mark "The Elsbeary Hobbs Drifters" and previously managed and promoted a singing group by that name. In their Complaint, Plaintiffs allege that the Defendant specifically purported to exercise authority under the Truth in Music Act "to restrain promotion for a collective group performance of The Platters, The Cornell Gunter Coasters and the Elsbeary Hobbs Drifters at the Hilton Hotel in Atlantic City (the `Hilton Show') scheduled to take place on August 18, 2007 and for two weeks thereafter." (Compl. ¶ 9.) Plaintiffs claim that they attempted to work in good faith with the Defendant by voluntarily producing evidence of their rights to these unregistered marks and explanations of why they should be considered in compliance with the Truth in Music Act, but that the Defendant refused to recognize those rights and permit promotion for the Hilton Show to continue. (Id. ¶ 10.)
Plaintiffs' First Count alleges that the Truth in Music Act conflicts with the Lanham Act, and thus violates the Supremacy Clause, because the Lanham Act protects registered and distinctive unregistered trademarks equally and the Defendant's enforcement of the Act prevents the fulfillment of the objective of the Lanham Act. (Id. ¶¶ 49-52.) Plaintiffs' Second Count alleges a violation of the takings clause of the Fifth Amendment to the U.S. Constitution in that Defendant's enforcement of the Truth in Music Act effects a taking of the Plaintiffs' property rights in their unregistered trademarks without compensation. (Id. ¶¶ 56-59.) Plaintiffs' Third Count alleges a violation of the right to free speech under the First Amendment to the U.S. Constitution in that it prevents holders of unregistered but valid trademarks from causing their musical groups to perform, to be promoted and to speak. (Id. ¶¶ 63-64.) Plaintiffs' Fourth Count alleges a violation of the equal protection clause of the Fourteenth Amendment to the U.S. Constitution. Plaintiffs allege that Defendant's enforcement of the Truth in Music Act "between performing groups with registered trademarks (who may perform) and performing groups with unregistered trademarks (who may not perform unless they receive some additional approval or involvement from `recording groups')." (Id. ¶ 67.) In Counts One through Four, Plaintiffs ask the court to preliminarily and permanently enjoin the Defendants from enforcing the Truth in Music Act against Plaintiffs. In their Fifth Count, Plaintiffs seek a declaratory judgment either that the Truth in Music Act must be construed to recognize Plaintiffs' rights and that Defendant's enforcement of the Act is unconstitutional, or that Defendant may not enforce the Act because it is unconstitutional. In Count Six, Plaintiffs allege that Defendant, acting under color of state law, has deprived Plaintiffs of rights secured by the U.S. Constitution and the law of the United States in violation of 42 U.S.C. § 1983. Plaintiffs seek equitable relief on all counts except for the alleged violation of 42 U.S.C. § 1983, for which they seek damages, including but not limited to attorneys' fees and costs incurred in connection with this case. (Compl. ¶ 76.)
The Truth in Music Act, which became effective May 4, 2007, provides:
A person shall not advertise or conduct a live musical performance or production through the use of an affiliation, connection or association between the performing group and the recording group unless:
a. The performing group is the authorized registrant and owner of a federal service mark for the group registered in the United States Patent and Trademark Office; or
b. At least one member of the performing group was a member of the recording group and has a legal right by virtue of use or operation under the group name without having abandoned the name or affiliation of the group; or
c. The live musical performance or production is identified in all advertising and promotion as a salute or tribute; or
d. The advertising does not relate to a live musical performance or production taking place in this State; or e. The performance or production is expressly authorized by the recording group.
N.J.S.A. 2A:32B-2. As used in the statute, "performing group" means "a vocal or instrumental group seeking to use the name of another group that has previously released a commercial sound recording under that name." N.J.S.A. 2A:32B-1. "Recording group" is defined as "a vocal or instrumental group,' at least one of whose members has previously released a commercial sound recording under that group's name and in which the member or members have a legal, right by virtue of use or operation under the group name without having abandoned the name or affiliation with the group." Id. "Sound recording" means "a work that results from the fixation on a material object of a series of musical, spoken or other sounds regardless of the nature of the material object, such as a disk, tape or other phono-record, in which the sounds are embodied." Id.
On August 17, 2007, one day before the Hilton Shows were to commence, this court, on emergency application of the Plaintiffs, issued an order to show cause with a temporary restraining order against the Attorney General's enforcement of the Truth in Music Act against Plaintiffs, including a restraint against any interference with live performances at the Hilton Hotel in Atlantic City, New Jersey, by the Plaintiffs' respective groups and the marketing and promotion thereof. On September 7, 2007, after the parties had fully briefed the issues, the court held a hearing on Plaintiffs' motion for a preliminary injunction.
In its opposition to the Plaintiffs' motion for a preliminary injunction, the State maintained that, under the Truth in Music Act, a performing group that has an unregistered trademark must bill itself as a tribute group. At the hearing, however, the State indicated that the sentence in its brief regarding this interpretation of the Act was "inadvertently put into the brief." ( The State agreed with this court's statement that "the State's position is that once a holder of a common law trademark establishes its right to that trademark, they're in the same position as the holder of a registered trademark." (Id. at 27:22-28:7.) In other words, "If there's a valid common law trademark under the Lanham Act, and if whoever has possession of it can establish a right to that possession, he is to be treated—or she is to be treated in the same way as the holder of a registered trademark." (Id. at 31:14-18.) Because of the State's agreement on this point regarding the treatment of common law marks, this court found that the basic legal problems—equal protection, First Amendment and due process—were resolved. This court therefore vacated the temporary restraining order and did not grant a preliminary injunction. (Id. at 36:2-16.)
At the March 16, 2009 hearing on the motion to dismiss and the appeal of the December 29 Order, the State again confirmed that it interprets and will apply part (a) of the Truth in Music Act to include common law trademarks rather than just registered marks, thereby providing equal protection to holders of registered trademarks and common law trademarks. Both the Plaintiffs and the State again confirmed that the Plaintiffs' constitutional claims were resolved by this interpretation of the Act. Indeed, in Plaintiffs' brief in support of its appeal of the December 29 Order, Plaintiffs stated that this court "will not be called upon to further address the parties' constitutional arguments on the merits—because Ms. Milgram agreed to be bound by her office's representation at the preliminary injunction hearing that Ms. Milgram would no longer...
To continue reading
Request your trial
-
Dewey v. Volkswagen of Am., Civil Action Nos. 07-2249(FSH)
...in legal relationships lacks the requisite judicial imprimatur of a court-ordered change." Singer Mgmt. Consultants, Inc. v. Milgram, 608 F.Supp.2d 607 (D.N.J.2009) (internal citations and quotation marks omitted). Because no court-ordered change in the legal relationship between the partie......
-
Wyeth v. Abbott Laboratories, Civil Action No. 08-230 (JAP).
...A ruling is contrary to law if the magistrate judge has misinterpreted or misapplied applicable law. Singer Management Consultants, Inc. v. Milgram, 608 F.Supp.2d 607, 611-12 (D.N.J.2009). B. Whether the Magistrate Judge's Decision was Clearly Erroneous or Contrary to In this District, ques......