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Herb Reed Enters. v. Monroe Powell's Platters, LLC

United States District Court, D. Nevada

June 17, 2014


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[Copyrighted Material Omitted]

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For Herb Reed Enterprises, Inc., Herb Reed Enterprises, LLC, Plaintiffs: John L. Krieger, LEAD ATTORNEY, Gordon Silver, Las Vegas, NV; Eric M Sommers, PRO HAC VICE, Sommers Law, PLLC, Portsmouth, NH; Stephanie Buntin, Lewis and Roca LLP, Las Vegas, NV.

For Monroe Powell's Platters, LLC, Defendant: Erik Fitting, LEAD ATTORNEY, Erik Fitting & Associates, ltd., Henderson, NV.

Don Gloude, Defendant, Pro se, Las Vegas, NV.

For Don Gloude, Defendant: Erik Fitting, Erik Fitting & Associates, ltd., Henderson, NV.

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PHILIP M. PRO, United States District Judge.

Presently before the Court is Plaintiffs' Motion for Summary Judgment (Doc. #135), filed on August 12, 2013. Defendants Monroe Powell; Monroe Powell's Platters, LLC; and Don Gloude filed an Opposition (Doc. #141) on September 4, 2013. Plaintiffs filed a Reply (Doc. #152) on September 20, 2013.


The parties are familiar with the facts of this case, and the Court set forth the factual background in a prior Order (Doc.

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#26). Some of the tortured history of the various lawsuits over the rights to the name THE PLATTERS also has been detailed in Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc., 736 F.3d 1239, 1240-45 (9th Cir. 2013). The Court therefore will not repeat the facts unless necessary for resolution of the currently pending Motion for Summary Judgment.

Plaintiffs move for summary judgment on their claims for statutory and common law trademark infringement, unfair competition, and false representation of origin. Plaintiffs contend that the default judgment entered against Defendant Monroe Powell (" Powell" ), Defendants' admissions, and the evidence properly before the Court establish that Plaintiffs' rights in the marks THE PLATTERS and HERB REED AND THE PLATTERS are superior to Defendants', and Defendants' use of the mark THE PLATTERS without indicating that Powell's performances are a " tribute" or " salute to" the original Platters creates a likelihood of confusion among consumers. Plaintiffs contend they have been damaged as a result, and are entitled to recovery of Defendants' profits from live performances in the United States and Australia. Plaintiffs also request treble damages and a permanent injunction.

Defendants respond by contesting that Plaintiffs have standing to assert their claims based on assignments from Herb Reed (" Reed" ) to Plaintiffs. Defendants argue the assignments are signed by a rubber stamp signature and Plaintiffs have not established Reed actually authorized the assignments through his stamped signature. Defendants also argue the default judgment Plaintiffs obtained in Herb Reed Enterprises, Inc. v. Bennett (" Reed v. Bennett" ), 2:10-CV-01981-JCM-RJJ is not binding on Defendants because at the time Reed sued Jean Bennett (" Bennett" ), Bennett already had transferred her rights to Live Gold of Queens, New York. Defendants argue that even if Bennett still owned the rights at issue, Powell and Live Gold of Queens, New York (" Live Gold" ) were indispensable parties because their rights to use the mark would be affected by the litigation. Defendants further contend that Plaintiffs previously have sought through litigation to obtain exclusive rights to the mark THE PLATTERS, but Plaintiffs lost those cases, and Plaintiffs should not be permitted to re-litigate the issue. Defendants assert that the issue of whose rights are superior is resolved by determining which person used the mark continuously in commerce for the longest period of time. Defendants contend that person is Powell, not Reed, because Reed abandoned use of the mark when he resigned from the Platters and spent several years performing with another group.

As to likelihood of confusion, Defendants argue that they do not seek to use the mark THE PLATTERS. Rather, Defendants contend they use the mark THE PLATTERS FEATURING MONROE POWELL, as they are entitled to do pursuant to a stipulation in a prior litigation with non-party Five Platters, Inc. (" FPI" ). Defendants dispute that Reed has the right to use the mark THE PLATTERS after his registered trademark was cancelled as a result of separate litigation. Defendants thus contend the proper inquiry is whether Defendants' use of the mark THE PLATTERS FEATURING MONROE POWELL infringes on Plaintiffs' registered mark, HERB REED AND THE PLATTERS. Defendants contend that based on the various factors, there is no likelihood of confusion. Defendants assert there consequently is no basis for a permanent injunction barring Defendants from using the mark THE PLATTERS FEATURING MONROE POWELL.

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As to damages, Defendants argue that even if Plaintiffs were entitled to damages, Plaintiffs did not obtain final judgment in Reed v. Bennett until October 4, 2011, and thus did not obtain the mark THE PLATTERS until that date. Defendants contend Plaintiffs should not be allowed damages prior to that time. Additionally, Defendants dispute that Plaintiffs are entitled to any damages based on performances in foreign countries. Defendants contend the Court already denied Plaintiffs' request for sanctions related to the foreign performances because the Court concluded it did not have jurisdiction over the foreign conduct, and the Court should not revisit the issue.

After Defendants filed their Opposition, this Court struck Defendant Powell's Answer and entered a default judgment against him based on various discovery violations. (Order (Doc. #149); J. (Doc. #150).) Additionally, the parties entered into a Stipulation pursuant to which Defendants withdrew certain paragraphs from the declarations attached to their Opposition to Plaintiffs' summary judgment motion, and Defendants also withdrew any statements of fact in the Opposition based on the withdrawn evidence. (Stip. to Withdraw Certain Portions of Defs.' Opp'n to Pls.' Mot. Summ. J. & Extend Time to File Reply (Doc. #151).)


Summary judgment is appropriate if the pleadings, the discovery and disclosure materials on file, and any affidavits show that " there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a), (c). A fact is " material" if it might affect the outcome of a suit, as determined by the governing substantive law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). An issue is " genuine" if sufficient evidence exists such that a reasonable fact finder could find for the non-moving party. Villiarimo v. Aloha Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2002). Initially, the moving party bears the burden of proving there is no genuine issue of material fact. Leisek v. Brightwood Corp., 278 F.3d 895, 898 (9th Cir. 2002). If the moving party meets its burden, the burden shifts to the non-moving party to produce evidence that a genuine issue of material fact remains for trial. Id. The Court views all evidence in the light most favorable to the non-moving party. Id.

Plaintiffs bring three claims under the Lanham Act, 15 U.S.C. § 1125, for trademark infringement, unfair competition, and false designation of origin. The Lanham Act " prohibits the use of false designations of origin, false descriptions, and false representations in the advertizing and sale of goods and services." Jack Russell Terrier Network of N. Ca. v. Am. Kennel Club, Inc., 407 F.3d 1027, 1036 (9th Cir. 2005). Pursuant to the Lanham Act, any person who believes he has been damaged may bring a civil action against:

[a]ny person who, on or in connection with any goods or services . . . uses in commerce . . . any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's

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goods, services, or commercial activities . . . .

15 U.S.C. § 1125(a). Although Plaintiffs bring three different claims, under the facts of this case, all of their claims require proof of the same elements: (1) that Plaintiffs have valid, protectable ownership interests in a mark, and (2) that Defendants' use of the mark is likely to cause confusion. See Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007); Murray v. Cable Nat'l Broad. Co., 86 F.3d 858, 860 (9th Cir. 1996).

A. Ownership

Plaintiffs registered the mark HERB REED AND THE PLATTERS with the United States Patent and Trademark Office on December 23, 2003.[1] (Decl. of Frederick J. Balboni, Jr. in Support of Pls.' Mot. Summ. J. (Doc. #137) [" Balboni Decl." ], Ex. 2.) Registration of a mark on the Patent and Trademark Office's Principal Register " constitutes prima facie evidence of the validity of the registered mark and of [the registrant's] exclusive right to use the mark on the goods and services specified in the registration." Applied Info. Scis. Corp., 511 F.3d at 970 (quotation omitted). Plaintiffs do not have a registered mark in THE PLATTERS, but Plaintiffs assert common law rights in THE PLATTERS mark.

Two issues arise as to Plaintiffs' ownership in the marks. First, Defendants argue Plaintiffs do not own either mark because Reed never transferred his interests to Plaintiffs, and thus Plaintiffs lack standing to pursue their claims. Second, Defendants argue that even if the assignments are legitimate, Plaintiffs have a valid interest in the registered mark HERB REED AND THE PLATTERS, but Plaintiffs do not have valid common law interests in the mark THE PLATTERS. Plaintiffs respond by arguing the assignments are ...

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