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Robert C. Kaufhold and Joseph Arthur Mcguckin v. Cyclopian Music

December 14, 2010


The opinion of the court was delivered by: Denise Cote, District Judge:


The plaintiffs Robert Kaufhold ("Kaufhold") and Joseph McGuckin ("McGuckin"), two former members of the music band the "Misfits," bring this suit against Cyclopian Music, Inc. ("Cyclopian") and Gerald Caiafa ("Caiafa"), a current member of the band, for a declaratory judgment that the plaintiffs co-own the Misfits trademarks and other relief. The defendants moved to dismiss the complaint on several grounds, including lack of personal jurisdiction. For the following reasons, the motion is granted.


A. The Misfits Except where noted, the following facts are taken from the plaintiffs' amended complaint and are assumed to be true for purposes of this motion. The Misfits is a punk rock band that was formed in the late 1970s. At all relevant times, the Misfits consisted of four performers: a vocalist, a guitarist, a bass player, and a drummer. McGuckin was the band's drummer from 1979 to 1982 and was the band's longest-serving drummer. Kaufhold was the band's guitarist from 1978 to 1980. The band developed its unique performance style during the time period that the plaintiffs were in the band. The plaintiffs contributed their talents, money, time, and resources to develop the band's image and brand while they were members. Specifically, the band used logos and stylized versions of the name "Misfits" to identify itself (the "Misfits Marks"). During the time that he was in the band, McGuckin designed flyers used to promote the band's shows and printed t-shirts that were sold at the band's concerts.

After the plaintiffs ceased performing with the band, sales from recordings on which the plaintiffs performed continued to generate royalties, which the plaintiffs collected until recently. Additionally, two events generated new interest in the band in recent years. In 1996, a box set containing the majority of the Misfits' early catalog was released. Two tribute albums of Misfits songs played by other bands were released in 1997 and 2000.

The Misfits exists as a band today. Caiafa, who also was a member during the time that the plaintiffs were in the band, is a member of the present-day Misfits. The band tours using the Misfits name and performs songs from the early catalog and new music that the band has released periodically since 1997.

B. The Misfits Marks In 1992, Caiafa and other former members of the band, not including the plaintiffs (the "1992 Plaintiffs"), sued another former member, Glenn Anzalone ("Anzalone"),*fn1 doing business as Plan 9 Records, and an entity called Caroline Records, Inc. The outcome of that case was a 1994 settlement agreement (the "1994 Agreement").*fn2 Pursuant to the 1994 Agreement, the parties to the agreement agreed on the sale of certain master recordings to Caroline Records and the division of royalty payments arising from those master recordings. Additionally, the 1994 Agreement states:

The parties shall be co-owners of the name and trademarks of the Misfits and all logo(s) and artwork . . . previously associated therewith. . . . The Plaintiffs and Danzig shall each have the non-exclusive right to conduct merchandising and to exploit other rights relating to the use and exploitation of the name "Misfits" and accompanying logos and artwork except that neither party shall use the names, likenesses and visual representations of the members of the other party without written consent. . . . The plaintiffs and Danzig will each retain 100% of what each earns from the exploitation of merchandising rights and neither the plaintiffs nor Danzig has any obligation to account to the other for any revenues derived from the exploitation of merchandising or any other rights.

The plaintiffs in this action allege that Caiafa told them about the 1994 Agreement and told them that they, too, co-owned the Misfits Marks. According to the plaintiffs, Caiafa told them that no member would apply for the exclusive rights to use the Misfits Marks. The plaintiffs do not allege when or where Caiafa told them this information. They do assert, however, that as a result of Caiafa's representations they believed that he would not seek to unilaterally gain exclusive control over the Misfits Marks.

Since approximately October 2000, Caiafa and Cyclopian, a corporation that Caiafa owns, have filed five applications with the United States Patent and Trademark Office (the "PTO") to register the Misfits Marks. Three of those applications have matured into trademark registrations. When the defendants applied for the registrations, Caiafa represented that Cyclopian owned the Misfits Marks and that to the best of his knowledge and belief no other person had the right to use the marks in commerce.

In the six years prior to the plaintiffs' filing of the instant action, the defendants have sold merchandise including t-shirts, jewelry, posters, stickers, and skateboards using the Misfits Marks. They sell merchandise through their website and through licensing agreements. The plaintiffs were not aware that the defendants were selling merchandise using the Misfits Marks or of the defendants' trademark applications.

In August 2009, McGuckin saw a billboard in New York City advertising a brand of shoes using one or more of the Misfits Marks. After McGuckin obtained counsel, the plaintiffs learned about the defendants' trademark applications. They filed this lawsuit on June 11, 2010. The defendants filed a motion to dismiss the complaint on September 20. The Court advised the plaintiffs that if they filed an amended complaint instead of opposing the motion, it would be their final opportunity to amend the pleading.

The plaintiffs filed an amended complaint on October 15. In the amended complaint, they assert three causes of action:

(1) cancellation of the defendants' trademark registrations pursuant to 15 U.S.C. ยง 1119 as having been fraudulently obtained; (2) declaratory judgments that the plaintiffs co-own the Misfits Marks and the associated goodwill, that the defendants' trademark applications are based on Caiafa's fraudulent claims to the PTO, and that by filing the applications, Caiafa repudiated the 1994 Agreement and is therefore subject to an accounting to all former members of the band; and (3) for an accounting. The defendants renewed their motion to dismiss on October 29 and the motion was fully briefed on November 19. The defendants argue that ...

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