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November 12, 1991


The opinion of the court was delivered by: Whitman Knapp, District Judge.


Plaintiff and defendants both claim the right to use the service mark "The Five Satins," a "doo wop" vocal group,*fn1 based on their original affiliation with that group. Defendants move for summary judgment dismissing plaintiff's claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq., the Sherman Act, 15 U.S.C. § 1 et seq., and the common law, and for summary judgment granting their own counterclaims under the Lanham Act, New York State law, and common law. For the reasons that follow, both motions are granted.


Sometime in 1955, five teenagers from New Haven, Connecticut gathered together to perform a new genre of music: doo wop. Defendant Parris,*fn2 though then also performing with another group called the "The Scarlets," was the first lead singer of this new group, "The Five Satins." Pl. 3(g) ¶¶ 3-4; Def. 3(g) ¶¶ 1-3; Pl. Exhs. B, E, & F.*fn3 Parris enlisted in the Army sometime in mid-1955, but while on leave before being stationed in Japan for most of 1956-57, wrote and performed lead vocals on a New Haven church basement recording for the Standord Record label of "I'll Remember," which very shortly became known as "In the Still of the Night." Pl. 3(g) ¶¶ 4, 5; Def. 3(g) ¶¶ 4, 5. This song has since become one of the most popular "oldies" ever. It is also "The Five Satins" signature song and greatest hit. Pl. Exh. F; Def. Aff. ¶ 30.

Parris returned from the Army in late 1957, and by 1958*fn4 began performing as lead singer for, among other groups, the one billed as "The Five Satins." Since then, Parris has continuously used that name — or some variation thereof, such as "Fred Parris and the Five Satins," "The Five Satins, featuring Fred Parris," or "The Five Satins." Parris' performances under "The Five Satins" name include those in "oldies revival shows" throughout the 1970s and in various hotels starting in or about 1977. Def. 3(g) ¶¶ 17, 18. In 1973 Parris applied for and received a trademark registration on "The Five Satins" from the United States Patent and Trademark Office. In his application he declared that "the service mark was first used . . . in June 1955; was first used in the sale or advertising of services rendered in commerce among the several states in June 1955 and is now in use in such commerce." Pl. Exh. H. The mark lapsed in 1981. Two years later Parris applied for a second registration, which he received in 1984. Def. 3(g) ¶¶ 15, 22. Parris, since at least 1983, has consistently asserted that he owns the exclusive right to the service mark "The Five Satins" and, by informing people in the music industry of that claimed exclusive right, has sought to prevent Baker from using the name. Pl. 3(g) ¶ 19; Def. 3(g) ¶¶ 27-29.

In early 1956 when Parris was in the army, plaintiff Baker joined "The Five Satins" and within two months became the group's lead singer. During his tenure "The Five Satins" released several records including the successful "To The Aisle," was pictured on the cover of Rhythm & Blues magazine, and toured widely. Pl. 3(g) ¶¶ 9, 10; Def. 3(g) ¶ 9; Pl. Exhs. B, E. Baker left "The Five Satins" in 1958, and until the late 1970s or early 1980s performed with a number of different bands, including "The Chestnuts" and "David and Goliath," and using his own name. Pl. Exhs. D, E, & F.

With respect to his status between the late 1950s and late 1970s or early 1980s, Baker has submitted: (a) his own affidavit; and (b) a variety of documents. Two paragraphs of his affidavit are relevant. Paragraph 12 provides:

  After the dissolution [in 1959] of "The Five
  Satins," I continued performing under my name, as
  well as with other groups and individuals.
  Throughout the 1960s, 1970s, and to the present
  day I have always and continuously utilized

  the name "The Five Satins" in billing, promoting
  and advertising my performances and in attempts
  to obtain performing engagements.

On the other hand, paragraph 15 asserts:

  By the late 1970s, I was being billed as "Bill
  Baker" or "Bill Baker of the Original Five
  Satins," or "Bill Baker's Fabulous Satins" . . .
  The public and concert promoters, however, still
  associated me with "The Five Satins" and, as a
  result, my performances would typically be
  publicized as "Bill Baker of The Five Satins,"
  "Bill Baker's Satins" or simply "The Five Satins"
  despite my repeated remonstrances. By 1982, my new
  group was increasingly referred to as "Bill Baker's
  Five Satins" . . . and in response to continuing
  demands by my audiences and concert promoters, I
  adopted th[at] name . . . and have continuously
  performed under such name to date."

(emphasis added).

The documents (which are attached as Exhibit E to Baker's opposition papers) include a 1975 magazine article about Baker by Victor Pearlin that reads in relevant part:

  Few people are aware that Bill Baker was the lead
  singer for the Five Satins in 1956-57. A New
  Haven native, Bill is heard on five Ember [record
  label for "The Five Satins"] releases. Of these,
  only "To The Aisle" achieved any commercial
    When Fred Parris returned from the Army in
  1958, Bill stopped recording for a couple of
  years. In 1960, he recorded two records . . .
  Bill was ...

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