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August 7, 2001


The opinion of the court was delivered by: Miriam Goldman Cedarbaum, United States District Judge.


The sole heir of Martha Graham and his assignees sue the Martha Graham Center of Contemporary Dance and the Martha Graham School of Contemporary Dance to enjoin them from using the names under which they were incorporated and have operated since 1948 and 1956, respectively, and to enjoin them from calling what they teach the "Martha Graham technique." Martha Graham, the great pioneer of modern dance, died in 1991 at the age of 96. In 1993, Ronald Protas, her testamentary legatee, applied for trademark registration of "Martha Graham" and "Martha Graham technique." Plaintiffs assert claims of trademark infringement, unfair competition and dilution against the Martha Graham School and the Martha Graham Center. They also assert a variety of claims against these defendants and a number of their directors, as well as a former employee.

Preliminary and final injunctive relief were consolidated with the consent of the parties pursuant to Fed.R.Civ.P. 65(a)(2), and plaintiffs' injunction claims were separated for trial pursuant to Fed.R.Civ.P. 42(b). After expedited discovery, a bench trial was held between March 21 and April 18, 2001.*fn1 After careful consideration of the evidence, injunctive relief is denied for the reasons that follow.

Since there is no just reason for delay in entering judgment on plaintiffs' claims for injunctive relief, the clerk is directed to enter judgment for defendants dismissing Claims One, Two, Three and Four. The other claims asserted in the complaint will be tried in the fall.


In determining the facts, I heard the testimony of thirteen witnesses and read the deposition testimony of three witnesses. On the material facts, I found Protas not to be a credible witness. I also found Michele Etienne not to be credible, including with respect to an anonymous note that she recalled having seen on a ledger page in 1973.

After observing the witnesses and evaluating their credibility and weighing all of the evidence, I make the following findings of fact.

Martha Graham was one of the leading dancers and choreographers of the twentieth century. Graham began dancing in the early 1920's and gave the first public performance of her own works in 1926. Graham formed an all-woman performance troupe under the name Martha Graham Group. Subsequently, men joined the troupe and its name was changed to the Martha Graham Dance Company. In the late 1920's and early 1930's, Graham began developing her own system of dance exercises and movements that focused on contracted muscles and energy release. After teaching her work informally and as an instructor at various institutions, Graham opened the Martha Graham School of Dance in approximately 1930.

In 1948, Graham and several of her supporters incorporated the Martha Graham Foundation for Contemporary Dance, Inc. under the New York Membership Corporation Law ("MCL"), the statutory predecessor of the current Not-For-Profit Corporation Law. Pursuant to § 10 of the MCL, the Foundation's Certificate of Incorporation included a sworn statement by Graham that she "hereby consents to the use of her name in said corporate title." In 1968, the Foundation's name was changed to its current name, the Martha Graham Center of Contemporary Dance, Inc.

In 1956, on the advice of Rubin Gorewitz, her tax accountant, Graham incorporated the Martha Graham School of Contemporary Dance, Inc. under the MCL. The new institution was created to purchase the dance school that Graham had been operating as a sole proprietorship since 1930. As the proprietor of the school, Graham was subject to ordinary income tax on all income from the school. The sale of the school to defendant The Martha Graham School of Contemporary Dance enabled Graham to treat the purchase price, which was to be paid in ten annual installments, as long-term capital gain which was taxed at half the rate of ordinary income. In addition, it transferred all of the expenses of the school, including Social Security tax for its employees. There is clear and convincing evidence that Graham sold her school, including the perpetual right to use her name on the school, to the Martha Graham School of Contemporary Dance, Inc. for $50,000, payable over ten years. In addition, Graham entered into a ten-year employment agreement with the School. A number of Graham's tax returns from the late 1950's and early 1960's reflect payments to Graham that were reported as long term capital gain attributable to "Installment Sales Price Payment — Sale of School 1956."

Protas first became acquainted with Graham in approximately 1967, when after dropping out of law school, he was doing freelance photography. Although Protas was 26 years old and had no training in dance, he and Graham developed a very close friendship. By the mid-1970's, under Graham's auspices, Protas became executive director of the Center and a Board member of the Center and of the School, and was given the title of Co-Associate Artistic Director of the Center in approximately 1980.

Graham's last will, executed on January 19, 1989, named Protas sole executor and legatee and included the following provisions:

All personal and household effects, and other tangible personal property . . . if owned by me at the time of my death, I give and bequeath to my said friend, Ron Protas, if he shall survive me. . . .
The residue of . . . all my property, real and personal, of every kind and description and wherever situated, including all property over which I may have power of appointment at the time of my death . . . and including all property not otherwise effectively disposed of hereunder . . . I give, devise and bequeath to my said friend, Ron Protas, if he shall survive me, or, if he shall not survive me, to the Martha Graham Center of Contemporary Dance, Inc.
In connection with any rights or interests in any dance works, musical scores, scenery sets, my personal papers and the use of my name, which may pass to my said friend Ron Protas . . . I request, but do not enjoin, that he consult with my friends, Linda Hodes, Diane Gray, Halston, Ted Michaelson, Alex Racoli and Lee Traub, regarding the use of such rights or interests.

After Graham's death in 1991, Protas succeeded Graham as Artistic Director of the Center and School and was responsible for managing the daily activities of these two institutions. Although Protas had been advised by Peter Stern, the attorney he retained to represent him as executor of Graham's estate, to investigate what rights he actually had acquired under the will, and was given the same advice by Danskin, a manufacturer with which he sought to establish a business relationship, Protas made no such investigation. Nevertheless, he represented to his fellow directors at the Center and the School that he owned the exclusive right to use Martha Graham's name.

In 1993, Protas met with Ciro Gamboni, a partner of Cahill, Gordon and Reindel who had been representing the Center on a pro bono basis.*fn2 Protas and Gamboni discussed the possibility of obtaining trademark registrations for the name "Martha Graham" and for "Martha Graham technique." Gamboni suggested to Protas that the trademark applications be filed jointly in the name of both Protas and the Center. Gamboni assigned Michael Quinn, an associate in his firm's Washington, D.C. office, to assist with the trademark applications. Quinn informed Gamboni that a "joint ownership" of the marks was not feasible, but that Protas could assign to the Center an interest in the marks after the registrations were obtained. Gamboni agreed to help Protas file trademark applications with the understanding that the purpose of the applications was to benefit the Center and that the Center would receive a 40% interest in any proceeds generated by licensing the trademarks to third parties.

In November 1993, Quinn, with the assistance of another associate, Scott Martin, filed applications with the United States Patent and Trademark Office ("PTO") on Protas' behalf for registration of the two service marks on which Protas now sues: a) MARTHA GRAHAM; and b) MARTHA GRAHAM TECHNIQUE. The applications, which were signed by Protas subject to the penalty of perjury, stated that Protas owned these marks, that the marks had first been used in commerce in 1926, and that they were used by the Center and School pursuant to an oral license from Graham.

The only evidence submitted to the Trademark Office of continuous use of the trademarks consisted of recent Center and School brochures. In drafting the applications and responses to PTO office actions which requested additional information about the alleged oral license from Graham to the defendants, Quinn and Martin relied on unsupported assertions made by Protas and Barbara Groves, a senior administrative employee at the Center who reported to Protas.

On August 15, 1995, the PTO granted federal registration for MARTHA GRAHAM TECHNIQUE in connection with "educational services; namely providing instruction through classes and workshops in the field of contemporary dance." On October 10, 1995, federal registration was granted for use of the name MARTHA GRAHAM in connection with "educational services; namely providing instruction through classes and workshops in the field of contemporary dance, and entertainment services; namely, organizing and producing performances of contemporary dance." No affidavit of continuous use has been filed with regard to these marks pursuant to 15 U.S.C. § 1065. Accordingly, the marks are not incontestable.

Between 1995 and 1998, the Center and the School continued to operate under the names by which they had been incorporated in 1948 and 1956 respectively and continued to describe the method of dance that they taught as the "Martha Graham technique."

In 1998, Protas, with assistance from Quinn, created the Martha Graham Trust, a revocable trust, which named Protas as its sole trustee and beneficiary. The trust was created to serve as a repository to hold and license all of the Martha Graham intellectual property that Protas claimed he had inherited. After a strained relationship with Protas and increased difficulty with fund-raising, in 1998, the Boards of the Center and the School began discussions with Protas to diminish Protas' role at the Center and School and to replace Protas as Artistic Director. In furtherance of this effort, the Boards entered into negotiations with Protas for a license agreement to use the Graham trademarks.

Initially, Protas was represented in these negotiations by Howell E. Begle of the law firm of Verner, Liipfert, Bernhard, McPherson & Hand. Begle was replaced by another attorney, Egon Dumler. Protas eventually replaced Dumler with Quinn, who was no longer employed by Cahill, Gordon and Reindel. Todd Dellinger, the Managing Director of the Center and the School, handled the initial negotiations and drafting of the license agreement on behalf of the Center and the School. Dellinger is not an attorney, was hired by Protas, and reported to Protas as his supervisor. Moreover, Protas had asked Dellinger to become the director of his Martha Graham Trust. Dellinger, the initial drafter, remained the custodian and recorder of all drafts.

Robert Solomon, a Board member and a tax partner at the law firm of Frankfurt, Garbus, Kurnit, Klein & Selz, as well as William Prescott, the financial advisor to Dolores Weaver, one of the members of the Board,*fn3 participated in reviewing the terms of the license agreement on behalf of the Center and the School. Neither before nor during the negotiations for the license agreement did any of ...

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