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) ¶¶
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: