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November 1, 2002


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.

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 Circuit 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." Id.

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 the judgment.

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 ...

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