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Larry Marshak and Florida Entertainment Management, Inc v. Herbert Reed and John Does Nos. 1-10

March 12, 2012

LARRY MARSHAK AND FLORIDA ENTERTAINMENT MANAGEMENT, INC., PLAINTIFFS,
v.
HERBERT REED AND JOHN DOES NOS. 1-10, DEFENDANTS.



The opinion of the court was delivered by: Gershon, United States District Judge:

OPINION AND ORDER

In 2001, this court entered a permanent injunction (the "2001 Injunction") determining that, as between Larry Marshak, a licensee of Five Platters, Inc. ("FPI"), and Herbert Reed, Marshak had a superior interest and rights to the trademark "The Platters," and that Reed could perform only under his own name or under a qualified name, such as "Herb Reed and the Platters" or "Herbert Reed of the Original Platters."

Marshak now seeks a finding of civil contempt against Reed. Marshak argues that Herb Reed's filing of an action in Nevada interfered with his rights in "The Platters" mark in violation of the 2001 Injunction, which barred Reed from "interfering with the use by plaintiff FPI and its agents, licensees and assignees including but not limited to Larry Marshak, of the name 'The Platters' or any other name that includes 'Platters', except as specifically set forth in paragraph B . . . ." He further argues that Reed's admission, in papers filed in the Nevada action, that Reed has been using the mark, "The Platters," in commerce continuously since 1953, evidences contempt of the 2001 Injunction.

In addition to seeking civil contempt, Marshak has commenced a separate action essentially seeking damages resulting from Reed's contempt of the 2001 Injunction. Reed has moved to dismiss the complaint in the damages action pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.

FACTS

The background to the current controversy is set forth in the prior decisions of this court and the Second Circuit.*fn1 The facts subsequent to those decisions, upon which Marshak relies, are discussed below. The factual bases for Marshak's claims in his motion for civil contempt in 96-CV-2292 are identical to the factual bases of his damages action, 11-CV-2582.

The controversy surrounding "The Platters" mark, as discussed in my earlier opinion, has spawned numerous lawsuits across the country, requiring many courts to decide the relative rights in this mark; those decisions are far from consistent. See Marshak, et al. v. Reed, 2001 WL 92225 at *4-*14.

Marshak is a promoter of music groups, including a group using the name "The Platters." Herb Reed was a founding member of the Platters, the person who named the group, and the last original Platter to leave the group.*fn2

In 2001, this court issued an injunction granting Marshak and FPI rights to use "The Platters" mark and enjoining Reed from using the mark in connection with musical entertainment with the exception of being able to use the mark along with his name, such as "Herb Reed and the Platters"

or "Herb Reed of the Original Platters." This injunction was based, in part, on a 1987 stipulation of settlement which Reed signed in the District of Florida with FPI, Marshak's licensor. In that agreement, Reed assigned FPI all rights he had in the stock of FPI and agreed not to use "The Platters" mark, but he was allowed to use "Herb Reed and the Platters" or "Herb Reed of the Original Platters." Paragraph seven of the1987 stipulation reserved Reed's ability to claim rights to "The Platters," "[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.'"

In 2010, Reed filed an action in Nevada against defendants Jean Bennett, FPI and Personality Productions, Inc. ("PPI") seeking a declaratory judgment of ownership rights in "The Platters" mark and claiming federal and common law trademark infringement, unfair competition, and slander. The Nevada District Court granted Reed's motion for a preliminary injunction against all defendants and denied the defendants' motion for summary judgment against Reed, finding that the claims in the Nevada action were new claims that were "necessarily separate and distinct from the ones at issue" in the Eastern District of New York in that they "(1) involve[d] a dispute over the subsequently registered mark 'Herb Reed and the Platters' and (2) involve[d] events which occurred after the 2002 Marshak decision was handed down." Herb Reed Enterprises, Inc., et al., v. Bennett et al., No. 10-CV-1981, 2011 WL 220221 (D.Nev. Jan. 21, 2011). On May 16, 2011, after FPI and PPI were granted extensions of time to retain counsel but failed to do so, the Nevada Court entered a default judgment and permanent injunction against them, prohibiting FPI and PPI, and anyone whose interest in "The Platters" mark derived from FPI's or PPI's rights in the mark, from using, licensing, promoting or allowing groups to perform in conjunction with "The Platters" mark. Herb Reed Enterprises, Inc. v. Bennett, No. 10-CV-1981, Doc. 60, May 16, 2011.

Reed then moved for partial summary judgment and declaratory judgment against Jean Bennett, and Bennett moved to dismiss the Nevada complaint as to her. On June 30, 2011, the Nevada District Court issued an order denying Bennett's motion to dismiss the complaint, granting Reed's motion for partial summary judgment for trademark infringement, granting Reed's motion for declaratory relief as to Bennett's common law claims and converting the preliminary injunction into a permanent injunction against Bennett. The Nevada District Court ruled that Herb Reed had a valid and protectable interest in the mark "Herb Reed and The Platters," based upon Reed's registration of that mark and the subsequent declaration of incontestability as to it issued by the U.S. Patent and Trademark Office. Herb Reed Enterprises, Inc. v. Bennett, No. 2:10-CV-1981, 2011 WL 2607079 (D.Nev. Jun. 30, 2011). The Nevada District Court also found there was a likelihood of confusion between Reed's mark and "The Platters" mark. Id. Therefore, the Nevada District Court granted partial summary judgment to Reed on his federal and common law trademark infringement claims, finding that Bennett infringed on his mark. Id. The Nevada District Court also issued a declaratory judgment determining that Bennett and "the companies she controlled have never had common law rights in the mark 'The Platters'" and therefore have no rights to license, give or transfer "The Platters" mark. Id.

In response to learning about the Reed's commencement of the aforementioned action in the Nevada Court, Marshak moved this court for an order holding Reed in civil contempt for violating the 2001 Injunction and preventing Reed from performing any affirmative action in the Nevada Court which would result in the issuance of a final judgment there. On June 1, 2011, I denied a request for a temporary restraining order, finding no irreparable injury to Marshak. Marshak also commenced a new action, docket number 11-CV-2582, seeking damages resulting from Reed's alleged contempt of the 2001 Injunction.

Since, as explained below, Reed is not in civil contempt of this court's injunction against him, the motion for civil contempt in 96-CV-2292 is denied. Therefore, there are no damages resulting from civil contempt, ...


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