(CN) - A concert promoter told the 9th Circuit to let tribute bands call themselves The Platters since the doo-wop group's founding member surrendered rights to the name decades ago.
Squabbles over the name date back to the band's first hit with the song "Only You" in 1955, and each original member has performed under as The Platters after leaving the group. Buck Ram, the band manager who had composed "Only You," assumed the rights of The Platters in 1956 under a company called Five Platters Inc., but a judge found FPI's assignment invalid in 1974.
Herb Reed - the founding, longest-serving and last-surviving member of The Platters - eventually settled his own trademark battle with FPI in 1987. He agreed to assign FPI all rights he had in that entity and not perform under name "The Platters."
Reed received a series of favorable verdicts, however, after a federal judge said he could still promote his music as "Herb Reed and the Platters."
In 2012 two Las Vegas rulings stated that FPI never used the Platters mark in a way that was that was "not false and misleading," and that FPI has no right in the name "The Platters as required by the 1987 stipulation.
A federal judge in Brooklyn said that same year that Reed's commencement of the Nevada litigation had not violated a 2001 injunction.
Just two months before his death in June 2012, Reed filed a federal complaint in Nevada against Florida Entertainment Management and its CEO Larry Marshak, who had once managed a Platters spinoff group started by former member Tony Williams.
This led a Las Vegas federal judge to issue an injunction that said, unless Reed permitted otherwise, Marshak could not use the Platters name without the words "tribute" or "salute" appearing in the advertising, at a font at least one half the size of the words "The Platters."
A three-judge panel of the 9th Circuit heard the appeal over that ruling on Tuesday in San Francisco.
Marshak's attorney, Cameron Reuber with Leason Ellis, argued that Reed's 1987 settlement barred his use of the Platters mark.
"If you're voluntarily surrendering control over those goods I don't see how you can assert yourself as the owner of a trademark for very long," Reuber said. "If you're not controlling the mark you're effectively abandoning your rights to do so."
He also questioned the delay between's Reed 1987 assignment and suits in the last decade.
"If Herb Reed has been the owner all along according to his argument ... why did it take so long - almost 25 years - for him to assert his rights to a mark that he's alleged to have used since 1953?"
Reed's recent passing also changes the circumstances, Reuber argued.
"Most consumers know that all The Platters stopped performing together many, many moons ago," he said. "And now that they're all deceased, I don't think there's any question that anyone's going to expect to show up at a Platters show expecting to see any of The Platters."
"Generally there is no question in the minds of consumers that what they're going to see is a tribute band whether or not it says 'tribute' on the banner," he added.
Eric Sommers, a New Hampshire-based attorney for Herb Reed Enterprises, defended Reed's actions since the settlement.
"Herb Reed spent a lot of time since 1987 ... trying to protect those rights, so I think that mischaracterizes what happened," Sommers said. "It's just simply not true that he just sat for 25 years and did nothing."
Sommers also argued that the settlement did not relinquish Reed's rights to the name, but rather required him to add his name to it "as a way of distinguishing between Five Platters Inc."
"If you're a tribute group, like they say they are, they should identify themselves," Sommers said. "That's all we're saying. They can call themselves a tribute group and still use the name but just identify yourselves to the consumer so they can know that you're at tribute group, so that the casual consumer who's going to Las Vegas for a show is not thinking this is some connection to this famous group. 'I heard them when I was a kid, cool, I'm going to go see them again, not necessarily thinking it out. ... It's a consumer protection issue."
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