The opinion of the court was delivered by: Gershon, District Judge.
By summary order dated April 18, 2002 (mandate issued August
28, 2002), a panel of the Second Circuit ("second panel") has
vacated in part and remanded for me to reconsider my decisions
granting summary judgment to plaintiffs, denying summary
judgment to defendant, and ordering cancellation of the
defendant Herb Reed's service mark in "The Platters" in light of
the Ninth Circuit's decision in The Five Platters, Inc. v.
Powell, 7 Fed.Appx. 794, 2001 WL 389453 (9th Cir. 2001).
Marshak v. Reed, 34 Fed-Appx. 8 (2d Cir. 2002). The parties
have made submissions and oral argument has been heard.
By Memorandum and Order dated February 1, 2001, Marshak v.
Reed, 2001 WL 92225 (E.D.Y.Y. 2001), this court granted
plaintiffs' motion for summary judgment, denied defendant Reed's
motion for summary judgment, and, in an Injunction also dated
February 1, 2001, enjoined Reed from interfering with
plaintiffs' use of "The Platters" name and from using that name
himself except as had been permitted by the terms of a 1987
Stipulation of Settlement in the Southern District of Florida
entered into by Reed and The Five Platters, Inc. ("FPI"). The
court held that the Stipulation of Settlement was valid and
enforceable in accordance with its terms, and that Paragraph 7
of the Stipulation of Settlement had not been triggered by any
intervening decision. Paragraph 7 of the Stipulation reserved
Reed's ability to claim rights to the "Platters" name "[i]n the
event that a court of competent jurisdiction enters a final
order with all appeals being exhausted that provides that The
Five Platters, Inc. has no right in the name `The Platters.'"
Judgment was entered in this court on February 13, 2001, and
Reed filed notices of appeal from the judgment, the grant of the
Injunction to plaintiffs, the denial of his request for an
injunction, and the decision.
While the appeal was pending, the Ninth Circuit rendered its
decision by summary order in The Five Platters, Inc. v. Powell,
supra. In Powell, the district court had granted summary
judgment for FPI on its claims of infringement of common-law
trademark rights to the name "The Platters" and breach of
contract, Case No. 98-CV-3712 (Real, J.). The Ninth Circuit
reversed and remanded for further proceedings in the district
court, holding, inter alia, that the district court should not
have granted summary judgment to FPI. The Ninth Circuit found
that the district court had erred in declining to give
preclusive effect to three earlier cases, all of which involved
Paul Robi: (1) the decision by Judge Levit in Los Angeles
Superior Court, Five Platters. Inc. v. 12319 Corp., Case No.
43926; (2) Judge Marshall's decision in Robi v. Five Platters,
Inc., Case No. CV 84-3326, Central District of California; and
(3) Judge Marshall's decisions in Robi v. Bennett, Case No. CV
93-4546. Each of these decisions had been addressed in this
court's Memorandum and Order of February 1, 2001. The Ninth
Circuit opinion stated that those decisions had established that
FPI had engaged in misleading conduct, and it added the
As a result, the plaintiffs may not assert any common
law trademark in "The Platters" based on their prior
use of the mark to the extent that the plaintiffs'
use has been false and misleading in suggesting that
their group is the original Platters. Any use
identifying the group as "The Platters," "The Five
Platters," "The Buck Ram Platters," or "The Original
Platters" is false and misleading under those prior
decisions. Thus, unless the plaintiffs can present
evidence that they used the trademark in a way that
was not false and misleading (e.g., by identifying
the group as "The Platters Since 1970" or some
similarly distinguishing label), they cannot assert a
common law trademark in "The Platters."
2001 WL 389453, at *1. The court remanded "for an evidentiary
hearing as to whether any of the plaintiffs' use of the mark was
not false and misleading," id, but in footnotes indicated the
court's belief that it was "unlikely" that the plaintiffs would
be able to present such evidence, and stated that, if the
district court's denial of summary judgment for the defendants
had been before it, the panel "would be inclined to reverse" and
grant summary judgment dismissing FPI's common-law trademark
claim.*fn1 Id. 7 Fed.Appx. at 796 nn. 5, 6, 2001 WL 389453
at *1, nn. 5, 6. The district court was directed to grant
summary judgment to the defendants on the trademark claim if
plaintiffs could not "present evidence of non-misleading use as
defined by this order and the earlier decisions," or to submit
the claim to a jury if evidence of non-misleading use was
presented. Id. at 7 Fed.Appx. at 796 n. 6, 2001 WL 389453 at
*1 n. 6.
On his initial appeal to the Second Circuit, Reed advised the
court of the Ninth Circuit's Powell decision, and the parties
argued its impact in the case. Reed also requested a stay of
proceedings in this court on the remaining unresolved issue,
plaintiffs' request for cancellation of Reed's service mark in
"The Platters," pending the Second Circuit decision. Reed based
his request on Powell, among other reasons. By order dated May
23, 2001, I directed that plaintiffs' application be held in
abeyance pending the Second Circuit's decision. The Ninth
denied FPI's request for rehearing in Powell on May 24, 2001.
FPI's rehearing petition included a request that the court
delete from its opinion the sentence that, under the specified
earlier decisions, any identification of its group as "The
Platters," "The Five Platters," "The Buck Ram Platters," or "The
Original Platters" is false and misleading. This court and the
Second Circuit were apprised of this denial.
On June 12, 2001, a panel of the Second Circuit ("first
panel") affirmed my decision in a summary order, 13 Fed.Appx.
19, after considering Reed's arguments "that the District Court
erred (1) in holding that he lacked exclusive rights to `The
Platters' service mark; (2) in holding that the 1987 Stipulation
does not violate public policy; and (3) in conferring on
plaintiffs the right to use `The Platters' service mark." Id.
at 20. The first panel noted its jurisdiction under
28 U.S.C. § 1292(a)(1) to hear the appeal from the grant of an injunction
and to consider "the merits to the extent necessary to review
issuance of the injunction." The first panel found Reed's
arguments "to be without merit" and affirmed "for substantially
the reasons stated by the District Court in its thorough and
well-reasoned opinion." The first panel also noted that it had
considered "the summary disposition by the Ninth Circuit" in
Powell, and found that, while that decision "may shed some
additional light on the cases discussed by the District Court in
its opinion, we do not find that it clearly shows that the
District Court misinterpreted those cases." The court added: "We
express no opinion regarding Powell's effect on the parties'
rights once all appeals in that matter have been exhausted."
In light of the first panel's affirmance, this court on July
11, 2001 ordered cancellation of Reed's service mark to "The
Platters", primarily because "Reed's continued registration of
the mark is irreconcilable with my decision that Reed retains
only a limited right to use of `The Platters' name and may not
otherwise interfere with its use by FPI and its designees. . . .
Since the Injunction issued in this case establishes that Reed
does not have such a right [i.e., the exclusive right to
exclude others], the mark is not properly registered to him and
should be cancelled." Marshak v. Reed, 2001 WL 799571, at *3.
Reed appealed from this decision and from the final judgment
entered, and from a subsequent order denying his motion to amend
On November 8, 2001, after the Ninth Circuit's remand of
Powell to the district court, the district court dismissed for
lack of subject matter jurisdiction.*fn2
The second appeal to the Second Circuit from the decisions and
judgment of this court was heard by a different panel, which
held that the merits of this court's summary judgment decision
was properly before it, notwithstanding the first panel's
affirmance, because the first panel's "summary order clearly
limits its review to the issuing of the injunction." 34
Fed.Appx. at 10. Since this court "did not have the benefit of
the Ninth Circuit's teachings in Powell when it issued its
opinion," the second panel remanded for this court to "consider
Powell's impact on its summary judgment and service mark
cancellation holdings in the first instance." Id.
The second panel also reversed this court's denial of Reed's
motion to correct the judgment and directed that the district
court judgment be corrected to reflect that the first panel
affirmed only the Injunction, not the grant of summary judgment.
However, it is noteworthy that all issues decided in the
February 1, 2001 Memorandum and Order, which granted plaintiffs'
motion for summary ...