As defined by the Lanham Act, (4) a service mark is a mark used in the sale or advertising of services to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.(5)    

Ownership of a service mark is established by using the mark in connection with offering the services,(6) or by filing a federal registration application based upon a bona fide intent to use followed by actual use in commerce.(7)    

 
Under traditional trademark theory, a designation may function as a mark even if the public is ignorant of the source of the goods or services it symbolizes.(8)   But because service marks used by performing artists are often their public personae as well, two characteristics distinguish them from other marks: (1) the consumer generally knows the source of the services, and (2) the services are unique to the performers.(9)  The unique nature of service mark rights in the names of musical performing groups gives rise to a number of special problems: selecting and registering these marks,(10) determining who owns them,(11) and protecting them against unauthorized use.(12) This Article is intended to provide an overview of these issues and to demonstrate that courts have relied on vague and uncertain notions of reputation and public consciousness rather than construct more mechanical tests that would facilitate predictability.

Federal Trademark Registration—Money for Nothing    The key to federally registering an aspect of personal identity as a trademark or service mark is proper use in a way that the aspect of identity does the traditional job of identifying and distinguishing one source of goods or services. Thus, one cannot federally register aspects of one’s identity or “persona” per se. Only if those aspects are used as a trademark or service mark is there something to register.(13)   

Individual performers may register their names as a service mark if the application for registration is accompanied by proof, such as advertisements, showing use of the name.(14)  The purpose is not mere identification of the individual, but rather identification of the services rendered in commerce.(15)  Just as individual entertainers can register their names as service marks, service mark rights in a performing group name for entertainment services can also be registered.(16) Whether a trademark for a group’s recordings can be registered, however, presents a thornier question.(17)   

For example, in In re Polar Music International AB,(18) the Swedish musical group ABBA sought to register its name as a trademark for sound recordings. The United States Patent & Trademark Office [hereinafter “PTO”] acknowledged the validity of ABBA as a service mark, but refused registration of ABBA as a trademark for records and tapes.(19)   The Trademark Trial and Appeal Board [hereinafter “Board”] concluded that “ABBA does [no] . . . more than inform purchasers of the name of the group of artists whose performance is contained on the sound recordings to which the designation is applied.”(20)  

The Board rejected the group’s arguments that the name ABBA qualified as a trademark which indicated to the public the source of the records and served as a guaranty of quality.(21)  ABBA relied on its record contract with Atlantic Recording Corp., to argue that because the group ABBA was obliged to deliver a completed master recording to Atlantic, ABBA was solely responsible for the quality of the finished product.(22) The Board gave little weight to this argument, and concluded that purchasers would not know the group actually controlled the quality of the recordings.(23)   

ABBA appealed the Board’s decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reversed, finding:   "Phonograph records and tapes are much more than “pieces of plastic.” They are the embodiment of sound. People purchase sound recordings because of the sounds they contain; it is sound that gives a recording its uniqueness. The quality of a sound recording encompasses both the quality of the sounds themselves and the quality of material on which the sounds are recorded." (24)  

The court further held that the circumstances presented in this case supported the conclusion that the mark, ABBA, functioned as a trademark for sound recordings.(25)  The court based its decision on evidence that the group released many albums displaying the ABBA mark.(26)   From this evidence, the court concluded: “The public has come to expect and associate a certain quality, not just the sounds but of how the sounds are produced on the record and the physical qualities of the record itself, with the mark ABBA.”(27)   The court then stated:  "Where . . . the owner of the mark controls the quality of the goods, and where the name of that recording group has been used numerous times on different records and has therefore come to represent an assurance of quality to the public, the name may be registered as a trademark since it functions as one."(28)   

The Board applied this rule in In re Peter Spirer,(29) and refused to register the group’s name, Toyz, as a trademark for phonograph records because the name merely noted the performers appearing in the record.(30)   The court found that Toyz did not note the source of the records(31)   In contrast to the ABBA case, the name had appeared on only one record.(32)   

In holding that ABBA is a trademark, and in denying registration for Toyz, the Federal Circuit and the Board implicitly likened the names of recording groups or performers to descriptive trademarks and service marks.(33)   Such marks describe the characteristics or attributes of the goods or services that bear them.(34)  Under well established principles of trademark law, descriptive marks are neither registerable nor protectable as trademarks unless the owner’s use of its mark has been continuous and deliberate, rather than sporadic or transitory.(35)   The mark has acquired “distinctiveness,” and has a “secondary meaning” in addition to its primary descriptive meaning.(36)   

The rule set forth in Polar Music is a curious one. A group that has produced a single sound recording under its name cannot register the group name as a trademark because the name served only to “describe” the record’s contents.(37) The name is eligible for protection as a trademark only after a group uses its name numerous times on different records and therefore has acquired “secondary meaning.”(38)   

The requirement that a group’s name appear on numerous different sound recordings to qualify for protection as a trademark is difficult to explain.(39)   Many other types of trademarks, such as suggestive marks(40) and fanciful marks,(41) are entitled to trademark protection immediately upon application or use on a single product.(42)   There is no sound policy reason to treat names of musical groups or performers differently.   

Moreover, there is little doubt that a musical group can obtain trademark registration for its name when the name is applied to a single article of clothing, such as a T-shirt.(43)  No requirement exists that numerous clothing items feature the group mark before it is eligible for registration as a trademark for clothing.(44)  Nor is the group required to show that it actually controls the quality of the clothing items to which its mark is affixed.(45)  Denial of registration of a group name when used as a trademark for a sound recording is therefore inconsistent with a grant of registration for clothing.

Ownership of Mark: I Am He And You Are She and We Are All Together    Unauthorized use of a musical performing group’s name can have far-reaching consequences for the group’s professional reputation and earnings. For example, ticket sales would probably be adversely affected if two groups with similar names were concurrently performing in the same area.(46)   Club owners, fearing audience confusion, would be unwilling to book different acts with the same name.(47)  Additionally, record buyers may be less inclined to purchase a group’s previously released sound records after seeing a live performance by an ersatz group performing under a confusingly similar name.(48)   

The most frequent difficulties with group-name service marks concern ownership issues and the rights of former group members to use the name.(49)   Conflicts arise because many entertainers do not take the necessary steps to secure their ownership rights.(50)  Yet, even as trademark sophistication increases among musicians, these rights are no less difficult to determine.   

Problems often ensue when musicians perform under a collective name, such as U2, rather than under a combination of their surnames, such as Emerson, Lake & Palmer, because former members later use the group’s name in promoting their subsequent careers. Departing performers who fail to achieve success on their own are often tempted to trade off the residual fame of the band they left behind. For example, after several months of trying to make it on his own, and nearly four years as a hospital security guard, Rick Sheppard named his new band after the one he left, The Drifters.(51)   

Performers who have left a once-famous group often blame their newfound obscurity on a lack of name recognition rather than on a lack of talent.(52)   For example, a personal manager testified he could not book his new band unless it used the name The Drifters.(53)  When asked by the court whether new performers could develop their own names and reputations, he flatly replied “No.”(54)   

Whether or not the names of musical performing groups are federally registered in the United States Patent and Trademark Office, they are protected by the Lanham Act.(55)  Group name owners can sue unauthorized users of registered marks in federal district court pursuant to 5 U.S.C. section 1114(I).(56)  In addition, owners can sue unauthorized users of unregistered marks for unfair competition, in particular, misappropriation of trade name and false designation of origin.(57)   

Parties, to prevail on the merits, must establish that “the mark is valid and protectable, that they own the mark; and that use of the mark by the opposing party is likely to confuse the public.”(58)   The primary issue is whether any likelihood exists that the mark in question will mislead or confuse significant numbers of usually careful consumers as to the source of the goods.(59)   

Service mark infringement suits between former bandmates are unlike other infringement suits. First, the likelihood of confusion is rarely in question because departing members usually adopt identical group names. Second, parties often raise the issue of service mark abandonment.(60)   This issue, however, is rarely determinative because courts generally find that a band’s reputation survives through airplay and record sales, even if it no longer performs together or releases new records.(61)   

For example, in Kingsmen v. K-Tel International Ltd.,(62) The Kingsmen were able to protect their name, even though they performed together for only five years and had not recorded new material in the sixteen years after disbanding.(63) The court found that neither circumstance constituted abandonment(64) and emphasized that record royalties still being received by individual members negated any intent to abandon the mark.(65)    

Although courts are often willing to resolve questions of abandonment quickly, the issue of ownership of the group name or service mark represents a legal quagmire. Ownership disputes frequently center on the validity of an assignment of a group name or service mark. Entertainment service marks and individual performance styles may be so intertwined that they cannot be assigned.(66)   This is because the assignee’s performances would be qualitatively different from the assignor’s and would consequently confuse the public.(67)   Despite the general rule prohibiting assignment, parties can validly assign and enforce entertainment service marks if there is continuity in either the personal management or the style and quality of music.(68)   Nevertheless, courts are willing to scrutinize assignments of entertainment service marks before enforcing rights in the name against former members.(69)   

The rancor and dogged persistence with which assignees pursue their claims to a band’s name are indeed impressive. For example, Larry Marshak, manager of The Drifters since 1971, held an unratified money judgment against David Rick’s unauthorized use of the mark The Drifters for three years.(70)   In a separate action, Rick sought to enjoin former band members from using the registered service mark Vito and The Salutations.(71)   As Rick prepared to go to trial, Marshak blind sided Rick with a court order to attach Rick’s interest in the registered mark Vito and The Salutations to satisfy Marshak’s previous judgment against Rick.(72)   The United States Court of Appeals for the Second Circuit reversed the order for attachment and sale of the mark.(73)   The court found no indication that the successor in interest to the mark could prevent public deception by insuring continuity of either management or musical style and quality.(74) Consequently, “if another group advertised themselves as Vito and The Salutations, the public could be confused into thinking they were about to watch the group identified by the registered trade name.(75)   In contrast, the trial court held that the assignment of the mark The Drifters to Marshak by the members of that group displayed the continuity required for validity.(76)   The court reasoned that because Marshak had managed the group both before the assignment and afterward, all the while presenting a group with the same singing style,(77) transfer of the mark must be supported by the court.(78)    

Dissolution and change of membership of performing groups also present difficult problems of ownership. Entertainment service marks, like the services they represent, are generally unique to the performers.(79)   Professor McCarthy observed that, “[o]wnership of the name of a performing group presents unique problems of joint ownership and rights upon a change in membership.”(80)  In a group of performing musicians, the parties could jointly own the service mark when adopted, thereby giving each member an indivisible right to use the mark individually. Group members appear not to favor joint ownership, however, and to avoid this situation, parties typically assign the service mark of a group to a partnership or corporation to consolidate ownership in a single entity.(81)   

One approach courts use to analyze consolidated ownership is first to identify the characteristics for which the group is known by the public, and second to identify who controls those characteristics.(82)   This two-step test yields logical results in disputes between performers and their personal managers. For example, in Rick v. Buchansky,(83) the court found that the group’s personal manager, rather than its former members, owned the service mark Vito and The Salutations.(84)   Yet, in Bell v. Streetwise Records Ltd.,(85)   members of the group were found to control and own the service mark New Edition.(86)       

In Rick, the trial court listened to a romantic story, all the more strange for being true, of how a doo-wop band was discovered on a Brooklyn street comer in 1961.(87)  Rick, overhearing this group as he walked by, was impressed enough by the singers to offer to act as their manager.(88)  Inspired by a radio personality’s on-air greeting, Rick dubbed the group The Salutations.(89)   Later, Rick augmented this name with that of vocalist Vito Balsamo to form Vito and The Salutations.(90)   

Although the group was inexperienced and untrained, Vito and The Salutations achieved brief fame and fortune with two hit singles, “Gloria” and “Unchained Melody,” in 1963(91) before getting shoved off the charts by the British Invasion and the rise of Motown. Despite the group’s drop in popularity and turbulent personnel changes, Rick managed to book the act through the 1960s and into the 1970s.(92)   The group endured long enough for nostalgia to bring them renewed attention. By 1980, the group consisted of veterans Sheldon Buchansky and Frankie Graziano, who had returned to the group with two relative newcomers, Edward Pardochi and James Spinelli.(93)   Rick entered into a contract with these members to act as exclusive personal manager and agent for each member for one year.(94)   

The relationship soured when Rick refused to permit the group to record with another label.(95)  The singers recorded the album without Rick’s knowledge and succumbed to the charms of another manager, Charles Garone, who welcomed Balsamo himself into the prodigal fold.(96)   When Rick learned of the treachery, he demanded that Garone’s group cease using the name Vito and The Salutations and Rick eventually recruited replacement performers.(97)  By the time Rick’s group was ready to perform, however, the clubs interested in booking “doo-wop” acts had already committed themselves to Garone’s group.(98)    

Vito Balsamo counterclaimed for invalidation of Rick’s rights in the service mark Vito and The Salutations.(99)   The parties agreed confusion was likely between two “doo-wop” groups using the same name.(100)  The crucial issue, therefore, was whether Rick’s or Garone’s group was entitled to exclusive use of the mark.(101)    

The court found that, from the group’s inception, the artistic and managerial helm had been firmly in Rick’s hand. The court concluded that Rick had been more than a mere agent for the group and compared him to a producer of a theatre company.(102)  Consequently, the court found that no one set of performers, including the original four singers, stayed with the group long enough to assert control over its style and direction.(103)   Furthermore, no single performer, not even thirteen-year veteran Vito Balsamo, exercised influence comparable to Rick’s.(104)   As a result, the court concluded that Rick owned the service mark because of his prior and continuous use of the mark in commerce.(105)   

In contrast, the court in Bell v. Streetwise Records Ltd.,(106)   found that the band members, rather than their personal manager, owned the service mark New Edition.(107)  Specifically, the court found that the public primarily associated New Edition with the distinctive personality and performing style of the individual members, characteristics they alone controlled.(108)   

The band members were thirteen years old in 1981 when they caught the attention of Maurice Starr, a local impresario.(109)   Once Starr started working with the band, he discovered that the performers had no formal training, and could not read or write music.(110)   He produced a demonstration tape and used it successfully to gain a recording contract.(111)  After a grueling year of studio work, New Edition released its first single; the group’s first album followed six months later.(112)  Yet, Starr was dissatisfied because he wanted New Edition to be more like The Jackson Five.(113)   Several months after the album was released, the band members renounced their contract with Starr and sued him when he planned to release a new record featuring five different singers under the name New Edition.(114)   

In determining the question of ownership of the mark, the court in Bell articulated a two-part test.(115)   First, the court must identify the characteristic or style which the public associates with the group.(116)  Second, the court must determine who controls that characteristic or style.(117)   The court’s analysis turned on this second prong and focused on whether New Edition was a “concept group.”(118)   The court in Bell found that New Edition was not a concept group and therefore held that the performers owned the name.(119)   

Although the circumstances in Rick and Bell are superficially very similar, important distinctions exist that support the courts’ differing decisions. In Bell, the band had selected and performed under the name New Edition before meeting Starr,(120)   whereas Rick had selected the name Vito and The Salutations.(121)   New Edition continued to give performances without Starr’s direction, while he promoted the demonstration tape and produced the single.(122)   In contrast, Rick was intimately involved in directing live performances of Vito and The Salutations.(123)  New Edition’s membership remained essentially constant, in contrast to the twenty-two changing members of Vito and The Salutations.(124)   New Edition was not cast with replaceable actors, further placing the ownership of the band’s name in the hands of its members.(125)   Moreover, David Rick had worked with Vito and The Salutations for over twenty years,(126) while Maurice Starr worked with New Edition for less than two years.(127)   Starr’s association, therefore, was much more like that of a record producer hired for the duration of a recording project than that of a guiding force which gradually became the persona of the act.   

The Bell opinion failed to address the changes in the music business which occurred during the twenty years separating the events that precipitated Bell and Rick. When Rick first heard Balsamo and his friends singing in 1961, musicians were discovered, cultivated, and often controlled by domineering managers, who customarily paid for the group’s training and living expenses, selected its music, and decided which recording offers it would accept.(128)   By 1981, when New Edition caught Starr’s eye, patronage had declined and musicians had become entrepreneurs, writing their own material, organizing their own tours, and producing their own records.(129)   The reward for taking greater initiative has been greater control over the material and performance style symbolized by their names.(130)   Although there are still strong managers in the business, groups formed in the last ten years are more likely to own service mark rights in their own names.   

The Bell two-part test for determining ownership of entertainment service marks works well in disputes between managers and performers when either one or the other is the rightful owner. The Bell test has produced less predictable results in disputes between the group and its former members because several individuals with conflicting interests can conceivably own the mark. For example, no former member may be entitled to use a group name once it has disbanded. In Fuqua v. Watson,(131) the court held that joint ownership of a trade name is not terminated when a member of a musical group ceases to perform with the band because former members had a right equal to that of the continuing members.(132)   Although this decision will hardly quell audience confusion, there is some fairness in the idea that joint ownership of a service mark is not terminated when a musician leaves a band, as it would be terminated in a partnership. Courts since Fuqua have avoided deciding cases involving the use of a band’s name by former members on the equitable concept of joint ownership. Instead, courts focus on contractual arrangements, such as assignments and corporate transfers, that purport to consolidate ownership of the mark in a single entity.(133)    

Despite assignment or transfer, courts generally uphold the rights of former members to use the name of the groups with which they once played when those members were spotlighted as the key creative force. These grants of use can be referred to as the lead singer exception. For instance, in The Kingsmen v. K-Tel International Ltd.,(134) the court considered whether a vocalist who records a song, but leaves the group before the song becomes a hit, could later be referred to as a member of the group.(135)    

Musicians Lynn Easton, Michael Mitchell, Norman Sundholm, Richard Peterson, and Barry Curtis formed “The Kingsmen” in 1962, and in 1964, recorded the song “Louie, Louie” featuring another original member, lead vocalist Jack Ely.(136)  Almost ten years later, a producer contracted Easton and Ely to re-record “Louie, Louie” and the group’s second most popular song, “Jolly Green Giant.”(137)   None of the other band members participated in the project, and Ely’s performance eventually appeared in 1982 on the defendant’s compilation album.(138)   Entitled “60’s Dance Party,” the album cover credited The Kingsmen with “Louie, Louie” and bore the statement “[t]hese selections are re-recordings by the original artists.”(139)   

The group sued under section 43(a) of the Lanham Act(140) to enjoin the defendants from representing that the version of “Louie, Louie” appearing on the “60’s Dance Party” album had been recorded by The Kingsmen.(141)  The group argued that, although Ely was the lead singer on the original recording, none of the other band members participated in the recording.(142)   Accordingly, the use of the name The Kingsmen, together with the assertion that the song is a “re-recording by the original artists,” created a false impression to consumers that they were purchasing a recording of “Louie, Louie” as performed by the original five person group.(143)   The defendants contended that Ely had the same right as any band member, original or otherwise, to use the group’s name.(144)   In particular they argued that Ely had every right to record “Louie, Louie” under that name because he was the lead singer in the original version.(145)   

The district court issued a preliminary injunction against use of The Kingsmen on the album covers of the re-recorded version.(146)   Although the court stated that it would not object to the use of a statement referring to Ely as “formerly of the Kingsmen,” the court found that the album misrepresented that the song was re-recorded by the individuals collectively known as The Kingsmen and was therefore likely to confuse consumers.(147)   The court found that the public associated the name The Kingsmen with a collective rather than with any individual because the group performed their music as an ensemble. (148)  

The court in Noone v. Banner Talent, Associates, Inc.(149) reached a different conclusion regarding a lead singer’s right to control the mark once the performer has left the group. Peter Noone, former lead singer for Herman’s Hermits brought action against former bandmates Karl Green, Derek Leckenby, and Jan Whitwam for billing themselves as Herman’s Hermits after Noone left to pursue a solo career.(150)  During their collaboration, Noone was identified by the pseudonym “Herman.”(151)   After Noone left the group, the remaining members performed first as the Hermits, but then found in late 1973 that bookings were much easier to get as Herman’s Hermits.(152)    

Noone apparently asked the group to cease using the name Herman’s Hermits and immediately proceeded to organize his own group to perform in England as Herman’s Hermits.(153)  Green and the other members brought an action against Noone in England,(154) while Noone sued his former cohorts in the United States to enjoin use of the name Herman’s Hermits.(155)  Noone alleged that the use of the name Herman’s Hermits was a false description because “Herman” was no longer a member of the group.(156)   The court ruled in favor of Noone, reasoning that the name Herman’s Hermits was perceived by the audience as implying that Noone was still the group’s lead singer and that use of the word “Herman’s” was misleading.(157)   

In 1988, the United States District Court for the Southern District of New York decided another case involving a misleading band name and service mark. In Grondin v. Rossington,(158) a corporation, whose shareholders were the widow of band member Ronnie Van Zant and surviving band members, owned the servicemark Lynyrd Skynyrd.(159) All shareholders had agreed not to use the mark for material recorded after Van Zant’s death.(160)  The widow, Judith Grondin, sought to enjoin the survivors from touring under the mark and from using the mark on their album “Lynyrd Skynyrd Live.”(161)   Although the publicity surrounding Van Zant’s death in 1977 made it unlikely that concert-goers would be deceived into thinking he would be making a personal appearance, the court thought it likely that albums bearing the mark could mislead buyers into believing that the sound recording included material performed by Van Zant.(162)   Consequently, the court ordered the record company to identify the album as a recent recording and not that of the original group Lynyrd Skynyrd.(163)  

Interestingly, the court in Grondin ignored corporate ownership of the mark and treated it as the joint property of Grondin and the survivors.(164)   Even more unusual, however, is how the court decided that a man dead twelve years controlled the character and quality of musical performances without finding that Van Zant had either exercised creative control or had been the band’s leading personality. The court’s silence regarding this matter supports the suggestions in Kingsmen and Noone that current members may not be able to use a group name without consent of central former members.(165)   

Simply organizing the band as a partnership or a corporation does not always eliminate ownership problems with the group’s service mark.(166)   The cases discussed above demonstrate how important the equities of the parties are when the legal result is unclear. Judith Grondin relied primarily on a technically unenforceable “blood oath” among her husband’s colleagues that they would never use the name, Lynyrd Skynyrd, for material Ronnie Van Zant had not recorded.(167)   She was ousted from the corporation when she tried to insist that it be honored.(168)   New Edition manager Maurice Starr’s testimony emphasized his talents as a renaissance man a bit too strongly for the court’s taste, and prevented him from obtaining assignment.(169)  And, The Hermits only resumed using the name Herman’s Hermits when they could not get booked as The Hermits(170)  In these situations, courts are willing to look beyond the written agreements to examine the actual professional relationships between the musicians and their managers.     

More recently, in Cheng v. Thea Pispecker, Inc., 35 U.S.P.Q. 1493 (S.D.N.Y. 1995), the court rejected the claims of three cabaret performers who claimed ownership of the mark “BRAVO Broadway” for a threatrical revue. Although the performers claimed to have originated the show, their agency countered that it had devised and controlled the show, frequently substituting performers for one or more of the plaintiffs. The court declined to grant injunctive relief, finding that the nature and content of the promotional materials for the show emphasized the perofrmance, not the individual performers. Thus, the court found insufficient evidence that the public associated the mark with the plaintiffs personally.   

Over the past few months, Congress has been considering legislation to solidify individual performers’ rights to promote their prior membership in a famous musical group. H.R. 1125 introduced on March 16, 1999 proposes to modify Section 43(a) of the Lanham Act as follows:  "It shall not be a violation of this Act or the statutes or common law of any State for an individual who had been a member of a group under a common famous name in commerce and subsequently terminated any relationship with such group to be able to represent, in any promotions, advertisements, or performing of the same services as those performed by such group during the time such individual was a member of such group, or other services, that such individual had formerly been a member of such group performing under such famous name, if such representations do not tend to deceive or confuse as to the nature, characteristics, qualities, geographic origin, sponsorship, or approval of his or her services with such group."   

The bill would also increase the penalties for misappropriating the names of famous groups, whether or not registered as trademarks, by permitting the recovery of treble damages.   

Coming next month: Part II of The Song: Margaritaville   

Robert D. Litowitz is a seasoned litigator with nearly 15 years experience in litigating trademarks and other intellectual property rights before the courts, the International Trade Commission, and the Trademark Trial and Appeal Board. Before joining Finnegan, Henderson, Farabow, Garrett & Dunner, Litowitz honed his advocacy and intellectual property skills as a trial attorney for the United States International Trademark Commission. Today, Litowitz continues to exercise his expertise in ITC practice. He recently successfully concluded an action brought on behalf of a major U.S. footwear manufacturer.   

Mark Traphagen is a partner at the DC office of Powell Goldstein, specializing in software licensing and related intellectual property matters.   

© 1990 Mark Traphagen and Robert D. Litowitz. © 1999 Robert D. Litowitz   

FOOTNOTES

1    © 1990 Mark Traphagen and Robert D. Litowitz
      © 1999 Robert D. Litowitz

2      Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C.; J.D., 1981, George Washington University, B.A. 1978, Dickinson College.

3      Partner, Powell, Goldstein, Frazer, & Murphy, Washington, D.C.; J.D., 1984, University of Denver, B.A. 1981, University of Dayton.

4      15 U.S.C. § 1051 (1988). The Lanham Act is also referred to as the Trademark Act of 1946. Pub. L No. 489, 60 Stat. 427 (1946). The Lanham Act provides protection for musical groups if their names are not registered trademarks. Grondin v. Rossington, 690 F. Supp. 200, 203-04, 8 U.S.P.Q.2d 1108, 1112 (S.D.N.Y. 1988).
      The purpose of the Act is twofold: (1) it provides national trademark protection to secure the owner's good will and (2) it protects against unfair competition. Rick v. Buchansky, 609 F. Supp. 1522, 1529 (11th Cir. 1984). See also Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 193, 224 U.S.P.Q 327, 331 (1985) (discussing purpose of Lanham Act in relation to infringement action focused on trademark registrant's exclusive right to use mark).

5      15 U.S.C. § 1127 (1988).

6      See infra notes 103-11 and accompanying text (noting events and decision in Bell v. Streetwise Records, Inc., 640 F. Supp. 575, 231 U.S.P.Q 281 (D. Mass. 1986)); Blanchard Importing & Distrib. Co. v. Charles Gilman & Son, Inc., 353 F.2d 400, 401, 147 U.S.P.Q 263 264 (1965) (rejecting plaintiffs' trademark registration for name previously used by defendant in same line of business), cert. denied, 383 U.S. 968 (1966). Furthermore, the mark must be used in a "deliberate" and "continuous" manner to constitute bona fide usage. Bell, 640 F. Supp. at 580, 231 U.S.P.Q, at 285.

7      15 U.S.C. § 1051(b)(1)(A) (1988).

8      See 1 J. McCarthy, Trademarks and Unfair Competition § 15:2 (2d ed. 1984) (cautioning reader that secondary meaning signifies buyer's mental association between mark and single source, but does not mean that buyer knows identity of single source in sense that he or she knows producer's corporate name).

9      Marshak v. Green, 746 F.2d 927, 929, 223 U.S.P.Q. 1099,1100 (2dCir. 1984) (holding that assignment of rights to use name of musical group would constitute fraud on consumers due to public's recognition of trade name).

10      See infra notes 10-40 and accompanying text (discussing trademark registration).

11      See infra notes 43-163 and accompanying text (examining consequence of mark ownership conflicts).

12      See infra notes 168-94 and accompanying text (discussing trademark protection).

13      J. McCarthy, The Rights of Publicity and Privacy § 6.18[A] (1989) (noting that distinction may be made between person and persona for commercial purposes).

14      See In re Carson, 197 U.S.P.Q 554, 555 (T.T.A.B. 1977) (weighing evidence, i.e., specimens attached to registration application, in determining that "Johnny Carson" identifies entertainment services as well as name of entertainer).

15      Id. (holding that "Johnny Carson" is used not only as name to identify himself. but also as service mark to identify services rendered in association with his name).

16      J. McCARTHY, supra note 10, § 5.3[B] (recognizing theoretical similarity between performer and performing group is even stronger in Case Of Musical group).

17      Id. Under certain circumstances, individuals can register a trademark for group recordings. See In re Polar Music Int'l AB, 714 F.2d 1567, 1568, 221 U.S.P.Q. 315, 316 (Fed. Cir. 1983) (finding insufficient evidence of use of picture for trademark purposes).

18      714 F.2d 1567, 221 U.S.P.Q. 315 (Fed. Cir. 1983).

19      In re Polar Music Int'l AB, 714 F.2d 1567, 1568, 221 U.S.P.Q. 315, 316 (Fed. Cir. 1983).

20      Id. at 1571, 221 U.S.P.Q. at 317.

21      Id.

22      Id. at 1568-69, 221 U.S.P.Q. at 316.

23      Id. at 1571, 221 U.S.P.Q., at 317. The Board did not indicate who it thought the public would perceive had control over the quality of the recordings, if not the artists themselves. Id.

24      Id. at 1572, 221 U.S.P.Q. at 318.

25      1d. at 1573, 221 U.S.P.Q. at 319.

26      Id. at 1569, 221 U.S.P.Q. at 316 (stating that "in addition to use on sound recordings, the mark 'ABBA' has been used in the United States in connection with entertainment services on a variety of products"). In its decision, the Federal Circuit analogizes this situation to the title of a series of records or books which may qualify for trademark registration. Id. at 1572, 221 U.S.P.Q. at 318. See In re Cooper, 254 F.2d 611, 615, 117 U.S.P.Q. 396, 400 (C.C.P.A. 1958) (holding that name for services of books has trademark function indicating that each book of series comes from same source); In re First Nat'l City Bank, 168 U.S.P.Q. 180, 181 (T.T.A.B. 1970) (holding that name associated with series of annually distributed record albums functions as service mark under same theory as Cooper).

27      In re Polar Music Int'l AB, 714 F.2d 1568, 1570, 221 U.S.P.Q. 315, 318 (Fed. Cir. 1983).

28      Id.

29      225 U.S.P.Q. 693 (T.T.A.B. 1985).

30      In re Peter Spirer, 225 U.S.P.Q. 693, 695 (T.T.A.B. 1985).

31      Id. at 694. Consequently, the name Toyz was not a trademark within the meaning of sections 1, 2 and 45 of the Lanham Act. 15 U.S.C. §§ 1051, 1052, 1127 (1988).

32      Spirer, 225 U.S.P.Q. at 694 (noting that where group's name, such as ABBA, has been used numerous times on different albums, it becomes associated with assurance of particular quality which is not true for name merely used one time).

33      e Polar Music, 714 F.2d at 1572. 221 U.S.P.Q. at 317, and Spirer, 225 U.S.P.Q. at 694.

34      Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 541, 547 (1920) (holding that trademark with combination of descriptive and fanciful design should be registered if applicant disclaims right to its exclusive appropriation).

35      Bell v. Streetwise Records Ltd., 640 F. Supp. 575, 579- 80, 231 U.S.P.Q. 281, 285 (D. Mass.1986).

36      Coca-Cola Co. v. Koke Co. of Am., 254 U.S. 143, 146 (1920) (describing term "secondary meaning" as when product secures its own singular character). See 1 J. McCarthy, Trademarks And Unfair Competition § 4:3 at 121 (2d ed. 1984) (discussing secondary meaning).

37      Polar Music at 1572, 221 U.S.P.Q. at 318.

38     In re Peter Spirer, 225 U.S.P.Q. 693, 694 (T.T.A.B. 1985).

39      But see Polar Music at 1572, 221 U.S.P.Q. at 318 (noting that series of records and series of books function similarly in that title to series of either records or books may function as or be registered as trademark).

40      See J. McCarthy, supra note 10, § 11:4, at 440 (noting suggestive marks include words, symbols, pictures, etc., common in languages, but do not describe any ingredient, quality, or characteristic of the goods and services).

41      See id. § 11:3, at 436 (inventing totally new combination of letters or symbols resulting in mark with no prior use in the language).

42      See id. §§ 11:3, 11:4, at 436-37, 441-42 (stating that suggestive and fanciful marks are "strong" marks earning instant and wide-spread protection).

43      In re Paramount Pictures Corp., 213 U.S.P.Q. 1111, 1112 (T.T.A.B. 1982) (holding that name on T-shirt may function as trademark when it inherently communicates source of T-shirt secondary to manufacturing source).

44     See generally id. (stating that mark need only serve as identifier of secondary source).

45     See generally id. at 1115 (holding that focus is on mark itself and not on vehicle carrying it).

46      Marshak v. Sheppard, 666 F. Supp. 590, 602, 3 U.S.P.Q.2d 1829, 1838 (S.D.N.Y. 1987) (acknowledging that potential ticket sales are lessened by concurrent performances of two groups with same name in same vicinity due to consumer confusion between the two).

47      Rick v. Buchansky, 609 F. Supp. 1522, 1529, 226 U.S.P.Q. 449, 452 (S.D.N.Y.) (pointing to Rick's problems in obtaining bookings resulting from club owner's unwillingness to book more than one group with same name), appeal dismissed, 770 F.2d 157 (2d Cir. 1985).

48      Grondin v. Rossington, 690 F. Supp. 200, 204, 8 U.S.P.Q.2d 1108, 1112 (S.D.N.Y. 1988) (noting that consumers will be confused and buy new albums believing them to be old or will be less inclined to buy old albums when new ones are available); see infra notes 155-60 (noting events and holding in Grondin).

49      See generally Note, Trademarks and Unfair Competition 4 Loy. Ent. L.A.L.J. 281, 309 (1994).

50      See id.

51      Marshak v. Sheppard, 666 F. Supp. 590, 594, 3 U.S.P.Q.2d 1829, 1832 (S.D.N.Y. 1987).

52      See Marshak v. Green, 505 F. Supp. 1054, 1059, 212 U.S.P.Q. 493, 497 (S.D.N.Y. 1981) (asserting name draws crowd).

53      Id.

54      Id.

55      Grondin v. Rossington, 690 F. Supp. 200. 203-04, 8 U.S.P.Q.2d 1108, 1112 (S.D.N.Y. 1988) (noting that plaintiff contended that although she was unable to contract successfully to protect Lynyrd Skynyrd name, Lanham Act provides her with remedy by prohibiting use of protected mark in manner that would cause consumer confusion).

56      15 U.S.C. § 1114(I) (1988); see, eg., Marshak v. Sheppard, 666 F. Supp. 590, 592, 3 U.S.P.Q.2d 1829, 1830 (S.D.N.Y. 1987) (alleging infringement of registered mark); Rick v. Buchansky, 609 F. Supp. 1522, 1525, 226 U.S.P.Q. 449, 449 (S.D.N.Y. 1985) (discussing trademark infringement and unfair competition between two musical groups performing under identical name); Marshak v. Green, 505 F. Supp. 1056, 1056 n. 1, 212 U.S.P.Q. 494. 494 n.1 (S.D.N.Y. 1981) (examining trademark infringement action between manager and per forming group): HEC Enter. Ltd. v. Deep Purple, Inc., 213 U.S.P.Q. 991, 994 (C.D. Cal. 1980) (holding that defendant's use of name and mark New Deep Purple as name of musical group infringed plaintiff's right in mark Deep Purple); Griffin v. Gates, 205 U.S.P.Q. 1150, 1151 (N.D. Ill. 1979) (allowing plaintiff to institute civil action for unlawful infringement because license was illegally obtained).

57      15 U.S.C. § 1125(a) (1988); see Grondin v. Rossington, 690 F. Supp. 200, 201, 8 U.S.P.Q.2d 1108, 1109 (S.D.N.Y. 1988) (discussing consumer confusion under section I I 25(a) when band produced live album without member of musical group): The Kingsmen v. K-Tel Int'l Ltd., 557 F. Supp, 178, 179-80, 220 U.S.P.Q. 1045, 1046-49 (S.D.N.Y. 1983) (enjoining defendants from representing "Louie, Louie" as sung by The Kingsmen when only lead vocalist from group performed with other musicians unrelated to Kingsmen); Noone v. Banner Talent Assocs., Inc., 398 F. Supp. 260 (S.D.N.Y. 1975) (discussing false generations of origin and false descriptions proscribed by section 1125(a) in conflict between bands with similar names); Rare Earth, Inc. v. Hoorelbeke, 401 F. Supp. 26, 28, 42, 187 U.S.P.Q. 291, 292-93, 307 (S.D.N.Y. 1975) (determining which faction of divided band has corporate control over name and mark under section 1125(a)).

58      Bell v. Streetwise Records, Ltd., 640 F. Supp. 575, 579, 231 U.S.P.Q. 281, 285 (D. Mass. 1986) (stating test for prevailing on merits in context of proving likelihood of success on merits in action for injunctive relief).

59      Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47, 199 U.S.P.Q. 65, 68 (2d Cir. 1978), cert. denied, 439 U.S. 1116 (1979). Whether the complainant bases the lawsuit on trademark infringement or unfair competition, the unauthorized user is liable if its name is likely to confuse the public about the source of the live or recorded musical performance. Rick v. Buchansky, 609 F. Supp. 1522, 1530, 226 U.S.P.Q. 449, 453 (S.D.N.Y. 1985).

60      The Lanham Act provides that a trademark or service mark may be presumed to have been abandoned (and can no longer be enforced) when use of the mark has been discontinued for two years, without intent to resume. 15 U.S.C. § 1127 (1988).

61      Giammarese v. Delfino, 197 U.S.P.Q. 162,163 (N.D. Ill. 1977).

62      557 F. Supp. 178, 220 U.S.P.Q. 1045 (S.D.N.Y. 1983).

63      Kingsmen v. K-Tel Int'l Ltd., 557 F. Supp. 178, 180, 220 U.S.P.Q. 1045, 1046 (S.D.N.Y. 1983).

64      Id. at 183, 220 U.S.P.Q. at 1049 (stipulating that "non-use" and "intent not to resume use" are two elements needed to prove abandonment under Lanham Act).

65      Id. The court also noted that:

        Id.

66    1 J. McCarthy, Trademarks And Unfair Competition § 10:14(C), at 361 (2d ed. 1984). It is well established that in certain professions, the name of a group may represent only the personal goodwill of an individual or group. Id.

67      Id. § 16:14(D), at 754-55.

68      Marshak v. Green, 746 F.2d 927, 223 U.S.P.Q. 1099 (2d Cir. 1984) (holding registered trade name of manager and promoter not subject to attachment, execution, and sale without these continuity exceptions).

69      See infra notes 131-45 and accompanying text (discussing case in which court examined right of band members to enjoin lead singer from using group's name).

70      Marshak v. Green, 505 F. Supp. 1054, 212 U.S.P.Q. 493 (S.D.N.Y. 1981).

71      Marshak v. Green, 746 F.2d 927. 928, 223 U.S.P.Q. 1099, 1099 (2d Cir. 1984) (reversing district court's order to sell at public auction Rick's proprietary interest in registered trade name).

72      Id.

73      Id.

74      Id.

75      Id. at 930, 223 U.S.P.Q. at 1101.

76      Marshak v. Green, 505 F. Supp. 1054, 1061, 212 U.S.P.Q. 493, 499 (S.D.N.Y. 1981).

77      Id. The court further observed, "[t]he essence of what (Marshak) acquired was the right to inform the public that [he] is in possession of the special experience and skill symbolized by the name of the original concern, and of the sole authority to market its services." Id. (quoting Levitt Corp. v. Levitt, 593 F. Supp. 463, 469, 201 U.S.P.Q. 513, 516 (2d Cir. 1979)).

78     Marshak v. Green, 505 F. Supp. 1054, 1061, 212 U.S.P.Q. 493, 4999 (S.D.N.Y. 1981).

79      Marshak v. Green, 746 F.2d 927, 929, 223 U.S.P.Q. 1099, 1100 (2d Cir. 1984) (reasoning that use by assignee of trademark in manner different from assignor would result in fraud on public expecting same product).

80      1 J. McCarthy, Trademarks & Unfair Competition § 10:14(C), at 361 (2d ed. 1984).

         As the District Court of the Southern District of New York noted:

Trademarks and trade names associated with musical performing groups present potentially difficult legal problems. Imagine, for example, a group which lawfully acquires the "Beatles" trademark and performs without one or more of John, Paul, George or Ringo or "Jimmy Dorsey's Orchestra" without Jimmy Dorsey. Could the corporate owner of the "Rolling Stones" mark replace the present members of the group and continue to sell out Madison Square Garden?  In short, can the public consciousness of and secondary meaning acquired by a performing group's trade name survive personnel changes?

        Rare Earth, Inc. v. Hoorelbeke, 401 F. Supp. 26, 36 n.17, 187 U.S.P.Q. 291, 299 n.17 (S.D.N.Y. 1975).

81     Rare Earth, 401 F. Supp. at 37 n.19,187 U.S.P.Q. at 298-99 n.17 (raising controversy associated with assignment of mark to corporation due to public's recognition of group comprising specific personnel, i.e., what happens when Beatles, Inc., advertises concert, but John was replaced).

82      Bell v. Streetwise Records, Ltd., 640 F. Supp. 575, 581, 231 U.S.P.Q. 281, 286 (D. Mass. 1986).

83      609 F. Supp. 1522, 226 U.S.P.Q. 449 (S.D.N.Y.), appeal dismissed, 770 F.2d 157 (2d Cir. 1985).

84      Rick v. Buchansky, 609 F. Supp. 1522,1532,226 U.S.P.Q. 449,455 (S.D.N.Y.), appeal dismissed, 770 F.2d 157 (2d Cir. 1985) (characterizing manager's rules as instigator of group and provider of continuity).

85      640 F. Supp. 575, 231 U.S.P.Q. 281 (D. Mass. 1986) (distinguishing five members of New Edition from four-person Vito and The Salutations which had twenty-two different performers).

86      Bell v. Streetwise Records Ltd., 640 F. Supp. 575, 582, 231 U.S.P.Q. 281, 286 (finding that group manager owned registered service mark Vito and The Salutations).

87      Rick, 609 F. Supp. at 1526 n.4, 226 U.S.P.Q. at 450 n.4 (finding that, although defendants disputed this story and compared it to "romantic stories . . . from 'Schwabb's' drug store in Hollywood, where a disproportionate number of young starlets were discovered in the 1950s," two out of the four street singers corroborated Rick's testimony). Id.

        A New York disc jockey testified that "doo-wop" was "barbershop harmony with a beat." Id. at 1526-27, 226 U.S.P.Q. at 450-51. "Doo-wop" music experienced a short-lived popularity. The court in Rick noted that the rapid decline of "doo-wop" was caused by the "British Invasion" of the United States, represented by groups such as The Beatles and The Rolling Stones, and by the rising popularity of Motown music. Id.

88      Rick v. Buchansky. 609 F. Supp. 1522, 1522 n.1, 226 U.S.P.Q. 449, 449 n.l.

89      Id. at 1522 n.5, 226 U.S.P.Q. at 450 n.5. Rick later augmented this name with that of vocalist Vito Belsamo to form Vito and The Salutations after the style of other "doo-wop" groups like Dion and The Belmonts and Jay and The Americans. Id. at 1522, 226 U.S.P.Q. at 440. It is not clear, however, how Rick created the name "The Salutations." Rick testified that he originally conceived the name. Id. at 1526 n.5, 226 U.S.P.Q. at 450 n.5. On the back cover of one album, however, Rick explained that he Chose the name because a radio disc jockey began his program with "Greetings and Salutations." Id. The court did establish, however, that Rick created the name. Id.

90      Id. at 1526, 226 U.S.P.Q. at 450.

91      Id. at l526,226 U.S.P.Q. at 451.

92      Id. at 1527, 226 U.S.P.Q. at 451. During these two decades, the group experienced a turnover of approximately twenty-two different performers. Id. The court determined that the group's ability to continue to book performances, despite these turnovers, was due to Rick's promotional and managerial efforts. Id.

93      Id. at 1529, 226 U.S.P.Q at 452.

94      Id. at 1528, 226 U.S.P.Q. at 452. Shortly before each member signed this contract, Rick applied to register the service mark Vito and The Salutations with the United States Patent & Trademark Office, perhaps hoping to avoid the problems he had already faced as a defendant in an infringement case involving another of his groups, The Drifters. Id. (citing Marshak v. Green, 746 F. Supp. 930, 223 U.S.P.Q. 1099 (S.D.N.Y. 1984)). The P.T.O. did not oppose the application and granted the service mark a federal application. Id.

95      Rick v. Buchansky, 609 F. Supp. 1522,1528, 226 U.S.P.Q. 451,452 (S.D.N.Y. 1985).

96      Id.

97      Id. (noting that Rick enlisted three returning group members to replace members who left Rick for new manager Garone and used name Vito and The Salutations).

98      Id. The Garone group quickly established itself on the "doo-wop" revival circuit. Club owners, obviously, did not want to book two bands with an identical name.

99        Id.

100      Id.

101      Id. at 1525, 226 U.S.P.Q. at 449.

102      Id. at 1532, 226 U.S.P.Q at 455. Rick had exercised almost complete control over the group's finances and publicity as well as the style and content of the act. Id. He had conceived the group's name, its performance style, and even the role of "Vito," which ten performers other than Belsarno had filled. Id. Over twenty singers had performed as a four-man act over the years. Id.

103      Id.

104      Id.

105      Id. at 1533, 226 U.S.P.Q. at 456.

106      640 F. Supp. 575, 231 U.S.P.Q. 281 (D. Mass. 1986).

107      Bell v. Streetwise Records Ltd., 640 F. Supp. 575, 577, 231 U.S.P.Q. 281, 281 (D. Mass. 1986).

108      Id.

109      Id. The band members performed a medley of "Jackson Five" hits at a local talent show in Boston that Starr had organized. Id. Starr had directed his talents and ambitions into cloning the "Jackson Five" sound of the early 1970s, and New Edition seemed to fulfill the requirements for an updated "Jackson Five" sound replete with synthesizers and rap vocals, hallmarks of what he dubbed "black bubblegum music of the eighties." Id. at 577-78, 231 U.S.P.Q. at 283.

110      Id. at 578, 231 U.S.P.Q. at 283.

111      Id.

112      Id. at 578-79, 231 U.S.P.Q. at 284.

113      Id. Starr attempted to make changes, but the group balked when he suggested they add a fifth member, grow "afro" hairdoos, and change the group name to "The MaJic Five." Id.

114      Id. at 579, 231 U.S.P.Q. at 284.

115      Id. at 581, 231 U.S.P.Q. at 286.

116      Id.

117      Id.

118      Id. Concept groups are formed mainly by independent record companies who assemble a group of musicians as employees to produce a particular type of music. Id. at 581 n.18, 231 U.S.P.Q. at 286 n.18. In effect, concept groups act to fill a niche in the entertainment market. Id. Record companies own the name and control the product. Id. Examples of concept groups include the Monkees and Menudo, a band whose members are retired when they reach the age of fourteen. Id.

119      Id. at 581, 231 U.S.P.Q, at 286. The court found that the individual members of New Edition selected the name and performed under it before meeting Starr. Id. Therefore, the court concluded that both Starr and the members had an identical concept. Id.

120      Id. at 581 n.18, 231 U.S.P.Q. at 286 n.18.

121      Rick v. Buchansky, 609 F. Supp. 1522, 1526, 226 U.S.P.Q. 449,450 (S.D.N.Y.), appeal dismissed, 770 F.2d 157 (2d Cir. 1985).

122      Bell, 640 F. Supp. at 578-79, 231 U.S.P.Q., at 284,

123      See supra notes 99-102 and accompanying text (discussing Rick's role with Vito and The Salutations).

124      Rick, 609 F. Supp. at 1532, 226 U.S.P.Q. at 455 (discussing how the line-up of Vito and The Salutations had been ever-changing).

125      Bell, 640 F. Supp. at 582, 231 U.S.P.Q. at 286. The court additionally observed that the band "may have walked straight into Starr's concept but . . . they seem to have had the same idea he had." Id. at 582 n.18, 231 U.S.P.Q. at 286 n.18.

126      See supra notes 84-89 and accompanying text (describing length of Rick's managerial role within Vito and The Salutations).

127      See supra notes 106-11 and accompanying text (outlining New Edition connection with Starr).

128      See generally Zakarin, Litigation Between Artists and Managers (1988) (discussing relationship between bands and their managers).

129      Bell, 640 F. Supp. at 582, 231 U.S.P.Q. at 286.

130      Id.

131      107 U.S.P.Q. 251 (N.Y. Sup. Ct. 1955), aff'd, 7 A.D.2d 900, 182 N.Y.S.2d 336 (1959).

132      Fuqua v. Watson, 107 U.S.P.Q. 251, 252 (N.Y. Sup. Ct. 1955) (refusing to enjoin member's use of name because plaintiff, another former member, had no individual right in name either), aff'd, 7 A.D.2d 900, 182 N.Y.S.2d 336 (1959).

133      See Giammarese v. Dolfino, 197 U.S.P.Q. 162, 163 (N.D. Ill. 1977) (holding that name of disbanded group was partnership property and former member lacked sufficient proprietary interest to make legal conveyance to new group). The court concluded that ownership of the good will and name of the group resided in the partnership and therefore is property. Id.
          In HEC Enterprises Ltd. v. Deep Purple, Inc., 213 U.S.P.Q 991 (C.D. Cal. 1980). Roderick Evans was an original member of the British group Deep Purple, which the management agency HEC had formed in 1968. Id. at 992. Evans left the group in 1969, and by 1975 only two of the original members remained. Id. In 1976, the group decided to stop performing live. Id. Evans and former members of Steppenwolf formed a group in 1980 under the moniker "Deep Purple" with full knowledge of HEC's rights. Id. at 994. The court found that Evans and his cohorts had fraudulently obtained California and federal service marks. Id. at 994-98. The court held that Evans was guilty of unfair competition and infringement and awarded HEC the defendant's net profits and exemplary damages triple the compensatory award. Id. at 995.

134      557 F. Supp. 178, 220 U.S.P.Q. 1045 (S.D.N.Y. 1983).

135      Kingsmen v. K-Tel Int'l Ltd., 557 F. Supp. 178, 180-81, 220 U.S.P.Q. 1045, 1046-47 (S.D.N.Y. 1983).

136     Id. at 179-80, 220 U.S.P.Q. at 1046. Between the years 1964 through 1967, The Kingsmen toured extensively and made several television appearances. Id. However, Jack Ely. the original lead singer of the group, did not participate in any of these events after he left the group in 1967. Id. Nevertheless, The Kingsmen enjoyed fame and fortune that extended well beyond the group's demise in 1967. Id.

137      Id. at 180, 220 U.S.P.Q. at 1046. The record producer, S.J. Productions, argued that both Easton and Ely represented that they were authorized and entitled to use the group's name with regard to their individual concerts and appearances. Id. The court found that the contracts entered into between Easton and S.J. Productions and Ely and S.J. Productions did not support this contention. Id.
         The court determined, however, that Easton granted the right to S.J. Productions to use the group's name in the marketing of his recording of "Jolly Green Giant." Id. The court derived this conclusion from the contractual language that read "Lynn Easton, a/k/a The Kingsmen." Id. There was no evidence suggesting that Ely made similar contractual representations. Id.

138      Id. (noting defendants compiled previously recorded songs for new release as group's greatest hits).

139      Id.

140      Section 43(a) of the Lanham Act provides, in pertinent part:

           Some courts have taken a narrow view of the reach of section 43(a) in the protection of unregistered marks and symbols. See Halicki v. United Artists Communications, Inc., 812 F.2d 1213, 1215 (9th Cir. 1987) (holding that advertising PG rated movie as R rated is not actionable under section 43(a)).

141      Kingsmen, 557 F. Supp. at 180, 220 U.S.P.Q. at 1046. The defendants included K-Tel International Ltd., K-Tel International, Inc., S.J. Productions, ERA Records, Inc., Stanley Shulman, Dominion Music Corporation, and Key Service Music, Inc. Id. at 178, 220 U.S.P.Q. at 1045.

          K-Tel is a record distributor most commonly known throughout the 1970s and 1980s for its compilation albums of rock n' roll hits of the 1960s and 1970s. Id. at 182, 220 U.S.P.Q. at 1048.

142      Id. at 181, 220 U.S.P.Q. at 1047.

143      Id. at 180, 220 U.S.P.Q. at 1047.

144      Id.

145      Id. at 184, 220 U.S.P.Q. at 1049.

146      Id.

147     Id. The court noted that The Kingsmen, on other occasions, have authorized the use of "Louie, Louie" on other compilation albums, including "Original Rock 'N Roll Hits of the 60's," and received royalties from the sale. Id. at 182. 220 U.S.P.Q. at 1048.

148      Id. The court further observed that "[a]lthough the listener can discern the lead singer from the background vocals and music on a number of The Kingsmen songs, the group's 'sound' is clearly a collective one.  No one member of the group can be singled out as representing the essence of The Kingsmen's performing style." Id. The court went on to note that:

           Id. at 184, 220 U.S.P.Q., at 1049.

149      398 F. Supp. 260 (S.D.N.Y. 1975).

150      Noone v. Banner Talent Assocs., Inc., 398 F. Supp. 260, 260 (S.D.N.Y. 1975).

151      Id. at 261.

152      Id.

153      Id. at 262.

154      Id.

155      Id. The defendants, all citizens of Great Britain, raised the issues of service and personal jurisdiction at the time of the evidentiary hearing. Id. They averred that a foreign plaintiff cannot use section 43(a) of the Lanham Act to assert United States jurisdiction over foreign defendants. Id. The court rejected this argument on the basis that the Act does not limit its applicability to United States citizens. Id. See 4 Callmann, the Law of Unfair Competition, Trademarks and Monopolies § 100- 1(a), at 844 (3d ed. 1970) (noting that foreigners are subject to same rights and duties as United States citizens under the trademark laws).

156      Noone v. Banner Talent Assocs., Inc., 398 F. Supp. 260, 262 (S.D.N.Y. 1975).

157      Id. The defendants argued that the doctrine of "unclean hands" should taint Noone's action because he performed in England using the group's name without their permission. Id. The court dismissed this argument because the group's name was, at one time, attributable to Noone personally. 11 See 4 Callman, Unfair Competition, Trademarks and Monopolies § 87(b) (3d ed. 1970) (outlining requirements of an illegal taint defense for section 43(a) action).

158      690 F. Supp. 200, 8 U.S.P.Q.2d 1108 (S.D.N.Y. 1988).

159      Grondin v. Rossington, 690 F. Supp. 200, 202, 8 U.S.P.Q2d 1108, 1109 (S.D.N.Y. 1988). Ronnie Van Zant and Gary Rossington formed the group "Lynyrd Skynyrd" in the early 1970s. Allen Collinus and the defendants, Leon Wilkeson and Willaim Powell joined shortly thereafter. Id. Between 1975 and 1977, Steven Gaines and Artimus Pyles also joined the group. Id.
           During the mid 1970s, the group achieved great commercial success; they had seven record albums on the market. Id. On October 20, 1977, the plane in which the group was flying while touring the country crashed and Ronnie Van Zant, Steven Gaines, and two other members were killed.

160     Id. Initially, the agreement was an oral, non-use agreement that was later memorialized in writing in the corporate minutes. Id.

161      Id.

162      Id. at 207-10, 8 U.S.P.Q.2d at 1111-14.

163      Id. at 210-11, 8 U.S.P.Q.2d at 1114-15.

164      Id.

165     See Kingsmen v. K-Tel Int'l Ltd., 557 F. Supp. 178, 184, 220 U.S.P.Q., 1045, 1049 (S.D.N.Y. 1983) (concluding, in effect, that lead singer cannot use band name on sound recording featuring none of original members); Noone v. Banner Talent Assoc., Inc., 398 F. Supp. 260, 263 (S.D.N.Y. 1975) (determining that former lead vocalist of group could prevent other original members from using group name).

166      1 J. Mccarthy, Trademarks and Unfair Competition § 16.15(C) (2d ed. 1984) (observing that multiple ownership of single mark creates unique problems which cannot be solved with simple reliance on rules of corporate and partnership law). Such problems, McCarthy stressed, "can only be dealt with adequately by giving weight to customer perception and the identification of source and quality policies of trademark law." Id. at § 16.5(E).

167      Grondin v. Rossington, 600 F. Supp. 200, 202, 8 U.S.P.Q.2d 1108, 1109 (S.D.N.Y. 1988) (stating that "non-use agreement" was entered into in order to prevent capitalization on group's tragedy).

168      Id. at 204, 8 U.S.P.Q.2d at 1110.

169      Bell v. Streetwise Records Ltd., 640 F. Supp. 575, 577 n.7,231 U.S.P.Q. 281, 283 n.7 (D. Mass. 1986) (noting that Starr testified to being able to play "every instrument there is").

170      Noone v. Banner Talent Assocs., Inc., 398 F. Supp. 260, 261 (S.D.N.Y. 1985).

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