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Platters Decision Raises Irreparable Harm Standard

(CN) - Taking its cue from the Supreme Court, the 9th Circuit on Monday reversed an order restricting when tribute bands can use The Platters name, saying the likelihood of irreparable harm must be established, not presumed.

A three-judge panel in San Francisco took the Supreme Court's lead in ruling that "the likelihood of irreparable harm must be established -- rather than presumed, as under prior 9th Circuit precedent -- by a plaintiff seeking injunctive relief in the trademark context."

The ruling reverses an injunction issued by a federal judge in Nevada that barred singing groups from using the band's name without permission.

Formed in 1953, the R&B group was inducted into the Rock and Roll Hall of Fame in 1990. Their hits included "Only You" and "The Great Pretender," and their breakup in the 1960s sparked four decades of litigation, primarily over ownership of The Platters trademark.

In 1956, the band's manager, Buck Ram, assumed the rights to the name under a company called Five Platters Inc., according to the ruling. Those rights were eventually transferred to Larry Marshak and his company, Florida Entertainment Management Inc., in 2009.

Ownership of the band name has been disputed in various courts since 1972, when FPI sued original band members Paul Robi and Zola Taylor for trademark infringement in California. The court sided with Robi, describing FPI as "a sham used by Mr. Ram to obtain ownership of the name 'Platters.'"

But a New York court came to the opposite conclusion in 1982, ruling that FPI had legally acquired exclusive ownership of the name. Band member Tony Williams, who was involved in that dispute, tried to ride on the coattails of Robi's success in California but was ultimately unsuccessful.

FPI sued the last surviving member of the band, Herb Reed, in Florida in 1984. To avoid costly litigation, Reed settled in 1987, agreeing not to perform under the name "The Platters." He reserved the right to perform as "Herb Reed and the Platters," however, and the settlement included an "escape clause" that nullified the restrictions if a court ever stripped FPI of its right to the name.

A federal judge in Nevada did just that in 2011, after Reed's company, Herb Reed Enterprises, accused FPI of using a name -- The Platters -- that was confusingly similar to its own registered trademark for Herb Reed and the Platters.

FPI never responded to that lawsuit because it had already transferred its rights, according to Marshak.

Just two months before his death in June 2012, Reed sued Marshak and his company in Nevada over their continued use of The Platters mark. His company won an injunction barring Marshak from using the band's name without the words "tribute" or "salute" appearing in the advertising, in a font at least one-half the size of the name "The Platters."

Marshak once managed a Platters spinoff group started by former member Tony Williams.

Marshak's lawyer, Cameron Reuber, argued before the 9th Circuit that Reed had "effectively abandoned" his right to The Platters mark with the 1987 settlement.

Eric Sommers, an attorney for Herb Reed Enterprises, insisted that the restriction on tribute bands was a "consumer protection issue."

"If you're a tribute group, like [the defendants] say they are, they should identify themselves," Sommers told the panel.

Though the 9th Circuit said the evidence shows Reed never abandoned his right to The Platters mark, it reversed the lower court's preliminary injunction based on Supreme Court rulings that have since changed the "landscape for benchmarking irreparable harm."

Both eBay Inc v. MercExchange LLC (2006) and Winter v. National Resources Defense Council (2008) signaled that a plaintiff seeking a preliminary injunction in a trademark case must demonstrate the likelihood of irreparable harm, the panel explained.

In Winter, the high court reversed a preliminary injunction because it had been based on the "possibility" of irreparable harm, a standard the justices found "too lenient."

The 9th Circuit reversed the lower court's injunction, saying Herb Reed Enterprises failed to establish that it would likely be harmed absent an injunction.

"It may be that HRE could establish the likelihood of irreparable harm," Judge Margaret McKeown wrote for the panel. "But missing from this record is any such evidence."

The 9th Circuit acknowledged that the Supreme Court's stricter standard contradicts its own precedent, in which the likelihood of irreparable harm for a plaintiff likely to prevail was presumed rather than established.


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