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Nile Rodgers v. Norma Jean Wright and Luci Martin

March 3, 2011

NILE RODGERS, PLAINTIFF, -
v.
NORMA JEAN WRIGHT AND LUCI MARTIN,
DEFENDANTS.



The opinion of the court was delivered by: Richard J. Holwell, District Judge:

MEMORANDUM OPINION AND ORDER

Before the court is plaintiff Nile Rodgers' claims for damages and attorneys' fees, and to modify the October 28, 2008, permanent injunction. For the reasons that follow, (1) plaintiff is not granted damages; (2) plaintiff is not granted attorneys' fees; and (3) the injunction need not be modified.

BACKGROUND

Plaintiff Nile Rodgers, a founder of the music group Chic, brought the trademark infringement action against two singers who once performed as part of Chic, defendants Norma Jean Wright and Luci Martin. Rogers is the owner of a registered trademark in "Chic," and, along with his late partner Bernard Edwards, has exploited the mark in commerce continuously since 1977. Wright and Martin claimed no ownership of the mark, but had performed in the United States and abroad as "Ladies of Chic" and "Original First Ladies of Chic," and sometimes simply as "Chic." On July 13, 2006, this Court issued a preliminary injunction enjoining Wright and Martin's infringement of Rogers' trademark, and issued an amended preliminary injunction on December 22, 2006.

On March 31, 2008, this Court granted plaintiff's motion for summary judgment and denied defendants' motion for the same. The Court found (1) that plaintiff's mark was protectable; (2) that defendants' uses of "Chic," "Ladies of Chic," and "Original First Ladies of Chic," were likely to cause confusion; (3) that defendants could not establish a fair use defense; and (4) that any relevant injunction should have extraterritorial effect. (Docket No. [114].) Then on October 28, 2008, this Court permanently enjoined defendants and each of their agents, servants, employees, attorneys, and persons in active concert or participation with them from using or commercially exploiting the word "Chic" anywhere in the world, generally and specifically in connection with concert promotion, publicity, and performance; and also established other restrictions. (Docket No. [121] (the "Permanent Injunction".) The Court also granted the parties leave to submit papers in support of and in opposition to plaintiff's claims for damages and attorneys' fees.

DISCUSSION Modification of the Permanent Injunction

Plaintiff's requests that the Permanent Injunction be modified to include a provision "requiring the promoter and booking agent to sign a document acknowledging that they have read the permanent injunction and that they understand that any appearance promoted in violation of the injunction is subject to cancellation." (Letter Brief of James P. Cinque to the Court, dated Nov. 5, 2008 ("Pl.'s Mem.") at 2.) The Court finds this modification unnecessary. The Permanent Injunction already includes the following provisions:

 "[Defendants], and each of their agents, servants, employees, attorneys and persons in active concert with them . . . are permanently enjoined, directly or indirectly, from anywhere in the world: . . . commercially exploiting the word "Chic," . . . [and] using any reproduction, copy or colorable imitation of the word "Chic" or any variant thereof in connection with publicity, promotion, sale or advertising . . . including, without limitation, public appearances, concert performances . . . ." (Permanent Injunction ¶ 1(a) and (b).)

 "Not later than thirty days prior to any performance by any defendants in connection with which defendant publicizes or promotes her prior affiliation with Chic (hereinafter a "covered performance"), . . . defendant shall provide all promoters and venues, in writing, the terms of this permanent injunction order." (Id. ¶ 3.)

 "As a condition to engaging in any covered performance . . . defendant shall obtain a signed verification from any promoter or venue acknowledging understanding of the restrictions on advertising and promotions." (Id. ¶ 4.)

 "In connection with any covered performance, . . . [i]f at any time defendant becomes aware of the violation of any of these promotional or advertising restrictions, defendant shall notify plaintiff's counsel, in writing, within seven days." (Id. ¶ 5.)

The court finds these provisions, collectively, sufficient to allay plaintiff's fears.

Damages

Section 35(a) of the Lanham Act states in relevant part: When a violation of any right of the registrant of a mark . . . , a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. . . . In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed. . . . If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its ...


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