The Great Pretender and Trademark Preliminary Injunctions

The Platters produced a string of 1950’s hits including “Great Pretender,” “Smoke Gets In Your Eyes,” and “Only You.” They were one of the first groups promoted across the racial barriers dividing the music business in those days. But their great success was followed by decades of litigation over control of the group name and rights ownership. Last week the Ninth Circuit Court of Appeals used the latest round to pick a side on the question of what had to be shown on “irreparable injury” when a preliminary injunction against trademark infringement is sought. Preliminary injunctions stay in effect while litigation is pending. They decided to no longer presume irreparable injury .

You must now demonstrate “a likelihood” of irreparable injury. Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. et al., Case No. 12-16868 (9thCir. Dec. 2, 2013). The Ninth Circuit includes LA and the decision lines it up with two others with music centers, the Sixth (Nashville) and the Eleventh (Miami).

Why is this technicality about getting a preliminary trademark injunction important to the music business? The answer begins with voices. Some can’t be imitated. It is easiest to identify them among artists who perform solo. Just one Sinatra or Streisand.

But a blend of voices in a singing group often can be done so well with new people the copy is as good or better than the original. And since live performance rather than record sales is a major source of artist income, sometimes two or more groups claiming to be the originals are out touring. Few groups survive the decades intact, so some coming to your town have just one or two original members. Others claim a spiritual connection to the originals, but include none. Some begin as tribute acts and decide along the way they’re the real thing. What are fans to do?

One answer has been “Truth In Music” statutes passed in many states. They are specialized false advertising statutes allowing for injunctions against groups that don’t have enough of a pedigree. Indiana’s is typical and exempts from its coverage those who own a registered federal trademark for the group name. IC 24-5-25. But the statutes require the state’s Attorney General to take action, and they’re busy people.

So a registered federal trademark is the gold standard. Before and since Truth in Music statutes, music group name litigation is mostly about who owns the trademark. Herb Reed was the only original member who sang on every Platters recording.  Herb Reed Enterprises carries on Mr. Reed’s musical contributions, and their efforts to stop a former business associate from using “The Platters” got them to the Ninth Circuit. The decision doesn’t end the dispute which may continue back at the district court level. No matter what results, Mr. Reed’s career is over. He died in 2012.

You get a sense of the years of fighting from the Trademark Office records of registrations and applications for “The Platters.” The first registration was in 1973, long after the hits. It expired and then came the deluge. At least thirteen more efforts followed, including variations like The Platters Featuring Monroe Powell, The Tony Williams Platters, and Herb Reed and The Platters. Mr. Reed’s was the only one ever to result in a federal registration, and is still in effect.                                                   

Herb Reed Enterprises got a preliminary injunction at the trial level because the court presumed irreparable injury when the evidence indicated they would succeed on the merits on trademark infringement. Intellectual property long enjoyed special treatment in legal disputes because it was thought that subtle, unquantifiable harm occurred whenever there was infringement of these intangible forms of property. There was also a sense of absolute uniqueness, like a parcel of real estate,  that made IP special.

Starting with patents in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, in 2006, then environmental injury in Winter v. Natural Res.Def. Council, Inc., 555 U.S. 7, 20 (2008), the Supreme Court cut IP and other areas down to size by requiring irreparable injury to be shown with evidence, not presumed. Just like any normal civil lawsuit if you ask for a preliminary injunction.

The problem that sent this case back to the district court was no evidence at all being offered to show a likelihood of irreparable injury. Showing it at the trial level may not be too difficult, but for surviving performing artists of groups that left a lasting impression, and their heirs, it just got tougher to keep imitators out of the market.

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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