The opinion of the court was delivered by: Denise Cote, District Judge:
On January 17, 2012, plaintiff Larry Marshak ("Marshak") and defendants Katherine Schaffner ("Schaffner") and the Estate of Gladys Horton ("Horton") cross-moved for summary judgment. This Opinion addresses the parties' cross-motions for summary judgment on Marshak's false designation of origin claim. For the following reasons, the defendants' motion for summary judgment on Marshak's false designation of origin claim is granted, while Marshak's motion for summary judgment on his false designation of origin claim is denied.
The following facts are undisputed, unless otherwise noted. In 1961, Motown Records Corporation ("Motown") had one of its first major hits with the song "Please Mr. Postman," recorded by a new singing group called The Marvelettes.*fn1 The group began life as the "Can't Sing Yets", five high school girls from Inkster, Michigan, including Schaffner, Horton, Georgia Dobbins ("Dobbins"), Juanita Cowart ("Cowart"), and Georgeanna Tillman ("Tillman"). According to Schaffner, after the Can't Sing Yets performed at an Inkster High School talent show in early 1961, a teacher arranged a Motown audition for the group in Detroit.
The group impressed Motown executives at the audition, who instructed the girls to return with an original song to perform. In response, Dobbins wrote "Please Mr. Postman". After hearing the group perform the song, Motown offered to sign the group to a recording contract.
First, however, the group needed a new name. According to Schaffner, Dobbins suggested "The Marvels", which Motown executive Berry Gordy changed to "The Marvelettes". Each member of the group was then required to sign, along with a guardian, a Motown recording contract. Because Dobbins' father refused to sign the contract, Dobbins was replaced in the group by Wanda Young ("Young").
On July 1, 1961, Schaffner and Horton both signed recording contracts with Motown ("the Contracts"). The Contracts provide for royalty payments to the Marvelettes' members based on percentage revenues of records sold. With respect to the group's name, the Contracts state:
The collective name of the group is THE MARVELETTES.
We shall have all of the same rights in the collective name that we have to use your name pursuant to paragraph 6 and you shall not use the group name except subject to the restrictions set forth in that paragraph. In the event that you withdraw from the group, or, for any reason cease to participate in its live or recorded performances, you shall have no further right to use the group name for any purpose. Paragraph six of the Contracts provides, in relevant part, that Motown "shall have the right . . . to sell and deal [records and other reproductions of performances] under any trademarks or trade-names or labels designated by us[.]" The Contracts provide for four-year terms, and Horton and Schaffner signed follow-up agreements containing substantially similar language bearing on trademark rights in early 1965.
The Marvelettes continued to record for Motown and perform in live concerts through the 1960s. While the group consistently had between two and five performers during this period, its composition changed. Three original members left the group: Cowart in 1962, Tillman in 1965, and Horton in 1967. Ann Bogan replaced Horton in The Marvelettes in 1967. The group, its final iteration comprising Schaffner, Young, and Bogan, disbanded in 1969.*fn2
Music recorded by The Marvelettes continues to be sold commercially and receive radio play. Original members of The Marvelettes, including Schaffner and, until her death in 2011, Horton, receive royalty payments for radio play and song and album sales of The Marvelettes' recordings. Horton's estate now receives royalty payments. The payments are made by Motown's successor-in-interest, UMG Recordings, Inc. ("UMG").
During the late 1960s, Marshak, an editor at Rock Magazine, booked The Marvelettes for performances. At his deposition, Marshak testified that booking groups involved the following process: "You call up the group, and you say you want to work or do XYZ performance, XYZ date, enter into a contract, and they perform it."
According to Marshak, he originally began using the mark "The Marvellettes"*fn3 for groups staging live performances under his production and management in the 1970s. Marshak's groups do not include any of the members of The Marvelettes who recorded music for Motown. As Marshak described it at his deposition, sometime in the early 1970s Ewart Abner, Motown's president, told Marshak that The Marvelettes were no longer recording or performing.
Marshak has had as many as three groups performing under the name "The Marvellettes" at a given time. At present, Marshak has one "Marvellettes" group performing in Las Vegas. Marshak's Marvellettes perform Motown songs, including songs originally recorded by The Marvelettes. Marshak's groups have always consisted of three female members, the ages of whom tend to correspond with the contemporary ages of the original members of The Marvelettes. The groups are advertised to the public as "The Marvellettes", and at no time ...