(Originally published in the Entertainment Law column in the New York Law Journal on Friday, July 6, 2012)

 

"The Marvelettes" name has joined "The Platters," "The Kingsmen," "Vito and the Salutations" and names of other popular musical groups in which ownership rights have been challeneged and litigated.  Each of those disputes answered a question that often is deferred or ignored by members of newly-formed groups:  Who owns and controls the name of the group?

 

Cross motions for summary judgment in the "Marvelettes" case were decided last month in the Southern District of New York.[1]  The two defendants were an original group member, Katherine Schaffner, and the estate of another, Gladys Horton; both had recorded for Motown and performed in live concerts with the group beginning in the early 1960s. Following a succession of personnel changes, the group disbanded in 1969. The plaintiff was a producer-manager, Larry Marshak, who had booked the group for performances in the late 1960s when he was an editor at Rock Magazine. 

 

Marshak claimed superior common law rights in the name, which he began using on his own in the 1970s with as many as three groups performing under the name at the same time (albeit spelling the group name with a double "l").  He did not tell audiences that his performers, who were women old enough to be contemporaries of Schaffner and Horton, were not members of the group that recorded for Motown in the 1960s.  For reasons we will discuss below, his motion failed and the cross motion of Schaffner and the Estate of Horton succeeded.

 

In addition to group members battling relative latecomers over name ownership, group members have had disputes with other group members and with their founding managers.  We will review illustrative cases, some of which were cited in the "Marvellettes" decision,  that involved the group names mentioned above.  In some instances, but not always, such disputes can be avoided by written agreements addressing name ownership. Several ways of approaching those agreements will be discussed briefly here as well.

 

 

A group member and a music label executive are both credited for the creation of the name, "The Marvelettes."  The original group -- five high school girls from Inkster Michigan that included Katherine Schaffner and Gladys Horton -- called themselves the "Can't Sing Yets."  After one member of the group, Georgia Dobbins, wrote "Please Mr. Postman," Motown offered them a recording contract, but not with that name.  According to Ms. Schaffner, Ms. Dobbins then came up with "The Marvels," which Motown executive Barry Gordy changed to "The Marvelettes." 

 

The original group began substituting members even before its Motown career was launched when Ms. Dobbins's father refused to sign the label's contract and she was replaced.  During the 1960s, when the group recorded for Motown and performed live, there were other personnel changes.  Three of the first five who signed with Motown departed, including Ms. Horton; and with several substitutions along the way, the group performed during this period with two to five members.  In its "final iteration," before disbanding in 1969, the group had three members, still including Katherine Schaffner, plus the member who replaced Georgia Dobbins, and one who replaced Gladys Horton.  

 

The court considered the contracts with Motown, signed in 1961 by Ms. Schaffner and Ms. Horton, which identified "The Marvelettes" as the group's collective name and authorized the label to "sell and deal" records under that name and any other "trademarks, or trade-names or labels" designated by Motown.  Those contracts had terms of four years; "follow-up agreements" with substantially similar language were signed in 1965.  Music recorded by "The Marvelettes" continues to be sold commercially and receive radio play to this day, and original members receive royalty payments from Motown's successor, UMG.

 

According to Marshak, Motown's president told him in the early 1970s that the original group no longer was recording or performing, and Marshak began using the name "The Marvellettes" (spelled with double "l") in the 70s for live performances under his management. He registered the service mark "The Marvellettes" with the United States Patent and Trademark Office in 1978, listing himself as owner. In 2008, that registration lapsed but Marshak's use of the name did not.  At the time of the cross-motions, one group of Marshak's was performing Motown songs, including those of the original "Marvelettes," in Las Vegas.

 

Because Marshak staked his claim of ownership on common law trademark rights, the court held that his success depended upon a showing that he acquired those rights through continuous use since the 1970s and that the "senior user" abandoned rights in the mark through non-use and a lack of intent to resume use in the reasonably foreseeable future (citing 15 U.S.C. Sec. 1127).  The court held, however, that "[r]ights in a mark signifying a singing group are not abandoned by the owner upon the group's disbandment, so long as the owner continues to receive royalties from the sale of the group's previously recorded material."  Accordingly, "Marshak cannot establish ownership rights in the mark because a senior user owned those rights prior to Marshak's first use … and that senior user has not abandoned the mark." 

 

Marshak's presentation of live "Marvellettes" performances without telling audiences that the original group members were not onstage, did not help his cause.  Such use of the mark "encourages potential audience members to believe that they are paying to see the original group whose recordings continue to be sold and receive radio play, rather than a tribute band.  The danger of consumer confusion and deception is manifest, and indeed, has almost certainly been realized in this case." [2]

 

 

Group members don't necessarily prevail in disputes with their former managers, especially if the latter are responsible for the group's formation and continuity.

 

For example, in Rick v. Buchansky,[3] a Southern District of New York decision from 1985, the plaintiff, David Rick, held the registered service mark for "Vito and the Salutations," having created the name and managed the musical group since it was formed in 1961.  The group came together after Rick discovered "four young men on a street corner in Brooklyn, singing in the popular 'doo-wop' style of the time."  He invited them to audition in Manhattan and the two who took him up on it were joined by two additional singers to form the original group. Their hits included "Gloria" and "Unchained Melody," but the "British invasion" soon put an end to the "doo-wop" era and the group had no commercially successful record after 1963.  The plaintiff continued to book engagements for the group, however, into the 1970s. 

 

During that period, the group "experienced frequent turnovers":  approximately 22 different persons "performed in the group at one time or another."  The court found that Rick acted not only as an agent, but also "much like the producer of a theater company or owner of a sports team."   He was responsible for personnel decisions, paid "many if not most" of the group's expenses,  and "oversaw the style and substance of the group's 'act.'"  He "provided continuity to the group" despite personnel changes, and was the "only individual who has used the mark continuously since he first conceived of the name."

 

Defendants in the case who had performed in the group had a falling out with Rick.  They signed with other management and formed a second musical group that performed under the same name, crowding out Rick's reconstituted group from bookings.  The litigation followed. 

 

In holding that Rick was entitled to claim ownership of the mark through prior and continuous use of the mark in commerce,  even though he was not a group member and acted behind the scenes, the court rejected an assortment of arguments by the defendants: (1) that Rick was their employee rather than their employer; (2) that Rick was obligated to obtain a formal assignment from an early lead singer with the given name  Vito, who never made independent commercial use of that name (he joined the renegade group and was a defendant in the action); (3) that the mark "Vito and the Salutations" had become inextricably linked in the public's eye with the personal skill or reputation of the eponymous Vito, even though other singers performed the role of "Vito" both during his tenure with the group and after his departure in 1974; (4) that Rick's service mark registration was invalid; (5) that Rick abandoned whatever rights he acquired by "substantially changing the nature and quality of the entertainment services identified with the mark" by permitting a female performer and a black performer to sing with the group (which began with white males); (6) laches and unclean hands.

 

The court concluded that Rick was entitled to a permanent injunction restraining the defendants from continuing to use the mark.

 

 

Battles over group names also have been fought when group members leave a group and presume to take the name with them.  The prevailing rule in disputes among members of musical groups is that former members have no right to use group names for a new group of their own. 

 

This principle was endorsed, for example, in 1999 in a seminal Ninth Circuit decision, Robi v. Reed [4] involving the name, "The Platters." Defendant Herb Reed founded the group in 1953, acted as the group's manager, and performed as one of the group's four original singers.  In 1954, three of those other singers were replaced -- one by Paul Robi -- and another new member was added.  Reed remained. 

 

Robi "severed his relationship with the group" in 1965 when he was arrested and convicted of felony narcotics possession charges.  He did not return after his release from prison, but he claimed the right to use the "Platters" name on his own and in 1988, not long before his death, assigned that right to his wife, plaintiff Martha Robi.  She then managed, booked and presented a singing group called "The Platters," which lacked any of the original members.  Hoping to establish her exclusive rights to the name, she sued Herb Reed and others in the late 90s.  The district court, however, held that Reed had the right to use the mark to the exclusion of Robi and the Ninth Circuit affirmed.

 

The appellate court based its decision principally on the fact that Reed "has been continuously associated with The Platters since 1953" – both before Robi joined the group and after he left.   Although all group members (including Robi and Reed) at one time owned the mark collectively, Reed asserted his individual claim to the name "at least in the early 1980s," several years before Martha Robi began using it and long after Paul Robi had left the group.  As between Reed and the Robis, Reed "is the person who has maintained continuity with the group and has been in a position to control the quality of its services."  He also was "the only member who has continuously performed with the group."  When Robi left the group "he took no rights to the service mark with him," and therefore had nothing to assign to his wife.  As the only surviving member of the original five singers who continuously performed with the group, Reed retained the right to use the service mark to the exclusion of Robi.  The court also noted that allowing Martha Robi to organize a rival group under the same name would lead to confusion among reasonable consumers, and preventing her from doing so was consistent with the basic purposes of trademark law and the Lanham Act.

 

Other decisions have reached like results, such as a 1983 Southern District decision[5] involving the group name "The Kingsmen."  Jack Ely, the performer who sang the lead vocal for the group's hit "Louie, Louie," was one of the original members when the group was formed in 1962. Ely left the group in 1964 – before "Louie, Louie" became popular and other group members began their "successful musical career."  The group disbanded in 1967.  Nine years later, Ely accepted a proposal to make a new recording of  "Louie, Louie" and it was marketed as a "re-recording" by the original "Kingsmen," even though none of the other former "Kingsmen" members participated.  The five members who comprised "The Kingsmen" during the group's three-year heyday, and continued to receive royalties through the 1980s, obtained a preliminary injunction.  The court held that "[t]hese plaintiffs have no more abandoned their right to protect the name of Kingsmen than have The Beatles, The Supremes or any  other group that has disbanded and ceased performing and recording, but continues to collect royalties from the sale of previously recorded material."   The defendants were restrained from selling their album with any representation that the recording of  "Louie, Louie" was performed by the original "Kingsmen."

 

 

An agreement covering group name ownership among the originators of "The Marvelettes" would not have avoided a dispute with a "stranger" like Marshak.  But such an agreement made by group members and any others involved in a group's creation,  can avoid or mitigate disputes among themselves. 

 

Rather than deal with the limited duration of partnerships, creating a corporation or limited liability company that will own the name (including service mark registrations) and control its use, offers evident advantages.  The written agreement also should provide that a member who leaves the group assigns all rights in the name to those who remain.  If a group splits apart entirely, the agreement could give ownership to an individual, or provide that no one use the name until a majority of those who were members when the group broke up agree to it.  Requiring that every former member must agree risks letting a single member keep the group name in limbo indefinitely – perhaps to a point of abandonment.

 

Alternatively, if there is one group member, or a producer or a promoter/manager, who claims unchallenged ownership of the group name from the outset -- e.g., because he, she or it created the group and remains its creative engine – an agreement with the others should reflect that they concur.

 

 

These cases serve as reminders that the value of a group name can endure for decades, even when original members have gone separate ways.   Attorneys and managers should advise their clients to make a concerted effort to determine group name rights at the earliest time possible with the goal of entering into a written agreement.