United States District Court, District of New Jersey
July 30, 1999
LARRY MARSHAK, PLAINTIFF-COUNTERCLAIM DEFENDANT,
FAYE TREADWELL, TREADWELL'S DRIFTERS, INC., AND THE DRIFTERS, INC. DEFENDANTS-COUNTER CLAIMANTS
The opinion of the court was delivered by: Politan, District Judge.
This matter comes before the Court on cross-motions for judgment as a
matter of law and for a new trial pursuant to Federal Rules of Civil
procedure 50(b) and 59. The Court heard oral argument on April 9, 1999.
For the reasons explained below, plaintiff Marshak's motions are DENIED
and defendant Treadwell's motions are GRANTED IN PART.
I. The Litigation
This lawsuit arises out of a trademark dispute involving the musical
group "The Drifters." The plaintiff Larry Marshak owned a federal
trademark registration for the name "The Drifters," which he acquired
through a 1976 assignment from three former Drifters singers, Charlie
Thomas, Elsbeary Hobbs, and Dock Green. Since the assignment, Marshak has
continuously used the mark in connection with his promotion of Drifters
performances. In 1995, Marshak filed the instant Complaint alleging that
Faye Treadwell had infringed and disparaged Marshak's federal trademark
As a defense to Marshak's infringement action, Treadwell alleged, and
ultimately proved, that Marshak's federal registration had been obtained
by fraud. Treadwell also proved that she and her late husband George
Treadwell had owned and managed the original Drifters group since 1955.
With regard to Treadwell's infringement counterclaim, however, the jury
found that she had abandoned her trademark rights in or about 1976, when
her group stopped performing regularly in the United States. Because
Marshak's Drifters group has performed continuously since the early
1970s, the jury found that Marshak acquired common law trademark rights
II. The Drifters: 1954 to 1969
The Drifters first appeared in New York in 1953. Shortly thereafter, in
1954, the group came under the management of George Treadwell, who had
previously managed other musicians, including Sammy Davis, Jr., Billie
Holiday, and Sarah Vaughn. Mr. Treadwell managed the group through The
Drifters, Inc., a New York corporation that he formed in 1954. He married
the defendant Faye Treadwell in March of 1955.
Although Mr. Treadwell owned all of The Drifters, Inc. stock, he
managed the company with his two partners, Irving Nahan and Lewis
Lebish.*fn2 Mr. Lebish acted as the accountant and bookkeeper for The
Drifters, Inc. Treadwell, assisted by his wife Faye and Irving Nahan,
managed the entertainment side of the business. Together, they exercised
complete artistic control over The Drifters: they hired and fired
Drifters singers; they paid the singers a weekly salary; they selected
the music and arrangements; and they made all musical and business
decisions relating to both live performances and recording contracts.
Since the group's inception, The Drifters has always been comprised of
a constantly changing cast of singers, including Ben E. King, Rudy
Lewis, and Johnny Moore. During George Treadwell's stewardship, each
Drifters singer was an employee of The Drifters Inc., and each of them
signed a written employment contract and received a weekly salary.
In about 1959, Treadwell hired several singers from a group called "The
Crowns." Three of these replacement singers were Charlie Thomas, Elsbeary
Hobbs, and Dock Green. Thomas, Hobbs, and Green signed employment
contracts with The Drifters, Inc. and they performed and recorded as
members of The Drifters under Treadwell's exclusive management. Hobbs
left the group less than two years later in 1961. Green left in 1964.
The Drifters continued to perform live concerts and record new music
through most of the 1960s. The Drifters recorded dozens of original
songs, many of which were "Top Ten Hits" on Billboard's Rhythm and Blues
Charts. These included "There Goes My Baby" (1959), "Save the Last Dance
for Me" (1960), "Some Kind of Wonderful" (1961), "Up on the Roof"
(1962), "On Broadway" (1963), and "Under the Boardwalk" (1964). All
Drifters records were recorded pursuant to recording contracts negotiated
and signed by The Drifters, Inc. and the Atlantic Recording Company. The
majority of royalties were paid to The Drifters, Inc. and its
shareholders. It was undisputed that Mr. Treadwell exercised exclusive
managerial control over the group, without interruption, from 1954 until
his death in 1967.
After Mr. Treadwell's death, his widow Faye succeeded him as The
Drifters principal manager and shareholder. Charlie Thomas left The
Drifters shortly after Faye Treadwell assumed control, but the remaining
group members, including Johnny
Moore, continued to sing and perform under the management of Mrs.
Treadwell and as employees of The Drifters, Inc.*fn3
It appears that the demand for live Drifters performances had
substantially declined by the late 1960s. Although the Drifters
shareholders continued to receive royalties from the sale of previously
recorded albums, the Drifters style of music had fallen out of favor in
the United States. Treadwell began to focus the group's touring efforts
in Europe, where The Drifters popularity was growing.
II. The Reunited Drifters: 1970 through 1995
In 1969, CBS Radio Network adopted an "oldies format" for their FM
radio station. At about the same time, CBS also formed a partnership with
Rock Magazine, a subsidiary company, to produce live concerts featuring
reunited singing groups from the fifties and sixties. Larry Marshak was
an editor at Rock Magazine at the time. Although he had never met George
or Faye Treadwell or any of their singers, Marshak was given the task of
reuniting some of the old groups, including The Drifters.
Marshak first called former-Drifter Ben E. King. King declined
Marshak's invitation to participate in a Drifters reunion tour, but he
suggested that Marshak contact Charlie Thomas. Charlie Thomas accepted
the offer, as did Elsbeary Hobbs and Dock Green. They began performing
under the name "The Drifters" in 1970, and then appeared regularly at
concerts promoted by CBS Radio and Rock Magazine.*fn4 Shortly
thereafter, Treadwell's attorney sent a letter informing Marshak that,
pursuant to employment contracts signed by Thomas, Hobbs, and Green,
Treadwell and The Drifters, Inc. owned the rights to the group's name
In 1971, Treadwell brought an infringement action in the Supreme Court
of New York against Marshak, Thomas, Hobbs, and Green, seeking to enjoin
them from using the name "The Drifters" in connection with their
performances. The court denied Treadwell.; application for a preliminary
injunction based upon its finding that Treadwell had not established a
likelihood of success on the merits. The suit was dismissed the following
year as a result of Treadwell's failure to provide adequate discovery.
Shortly after the dismissal of Treadwell's lawsuit in 1972, Marshak
signed an exclusive management contract with his Drifters singers.
Marshak's group toured extensively, and according to Marshak's
testimony, he employed an aggressive litigation strategy to prevent any
other groups from performing as "The Drifters." During this time,
Treadwell became either unwilling or unable to compete with Marshak's
superior resources. Since 1972, Treadwell's Drifters have performed
primarily in Europe.*fn5
Marshak testified that he later learned that a federal trademark
registration would likely simplify his litigation strategy. After
discussing the idea with Thomas, Hobbs, and Green, Marshak hired a
trademark lawyer to draft the necessary documents. On December 15, 1976,
Thomas, Hobbs, and Green executed an assignment of all of their rights to
The Drifters mark to Larry Marshak.*fn6 Two days later, on
December 17, 1976, Thomas, Hobbs, and Green, acting through a
partnership, filed an application in the United States Patent & Trademark
Office to register "The Drifters", as a service mark for use in
connection with a musical group. In support of their application, the
registrants signed a declaration certifying that: (1) they believed
themselves to be the rightful owners of "The Drifters" mark, and (2) to
the best of their knowledge and belief, no person or company had the
right to use The Drifters" mark in commerce.
On January 3, 1978, The Patent & Trademark Office issued a service
mark, Registration Number 1,081,338, for "The Drifters." Marshak has
owned that federal registration since 1978, and it has achieved
incontestible status under the Lanham Trademark Act.
Marshak subsequently expanded his operation to include two, and
sometimes three, separate groups of Drifters. Marshak testified that he
coordinated his groups performances so that there would never be more
than one Drifters group in a particular geographic area. There was also
evidence that Marshak signed a recording contract with Musicor Records
and that some of his singers recorded new songs under the name "The
Drifters," although Marshak testified that none of these recordings ever
achieved the "Top Ten" status enjoyed by the original Drifters songs.
At the conclusion of the trial in this case, the jury found that
Marshak and his assignors had never owned any rights to the name "The
Drifters," and that they had defrauded the Patent and Trademark Office
into issuing a federal trademark registration. Although the jury found
that Marshak later acquired common law rights in the Drifters mark, he
has lost the benefits of his incontestible federal registration. The
jury's verdict leaves Treadwell in essentially the same position from
which she started. Both parties now move before this Court for relief
from the jury's verdict.
I. Standards of Review
[1,2] Federal Rule of Civil Procedure 50 directs trial courts to enter
judgment as a matter of law when "there is no legally sufficient
evidentiary basis for a reasonable jury to find" in favor of the
nonmoving party on an essential issue. In deciding a renewed motion for
judgment as a matter of law, the Court must grant all reasonable
inferences in favor of the jury's verdict. See Barna v. City of Perth
Amboy, 42 F.3d 809, 812 (3d Cir. 1994). This Court may not consider
either the credibility or weight of the evidence. See Motter v. Everest &
Jennings, Inc., 883 F.2d 1223, 1228-29 (3d Cir. 1989). Rather, this Court
must "confine [itself] to ascertaining whether the party against whom the
motion is made adduced sufficient evidence to create a jury issue." Id.
at 1229 (quoting Fireman's Fund Ins. Co. v. Videfreeze Corp.,
540 F.2d 1171, 1178 (3d Cir. 1976), cert. denied; 429 U.S. 1053, 97
S.Ct. 767, 50 L.Ed.2d 770 (1977)).
[3,4] Motions for a new trial are governed by the less exacting
standards embodied in Rule 59. Under this Rule, a court may, in an
exercise of its discretion, grant a new trial if the jury's verdict is
against the clear weight of the evidence or if substantial errors
occurred in the admission or rejection of evidence or the giving or
refusal of instructions. See Montgomery Ward & Co. v. Duncan, 311 U.S. 243,
251, 61 S.Ct. 189, 85 L.Ed. 147 (1940); see also 12 MOORE's FEDERAL
PRACTICE § 59.13. However, errors committed during the course of a
trial cannot justify the grant of a new trial unless they affected the
substantial rights of the parties. See Fed.R.Civ.P. 61.
 A Rule 59 motion may also be granted upon a finding that the jury's
verdict was against the great weight of the evidence. However, the Third
Circuit has instructed that trial courts have an "obligation to uphold
the jury's [verdict] if there exists a reasonable basis to do so."
Motter v. Everest & Jennings, Inc., 883 F.2d 1223, 1230 (3d Cir. 1989).
Therefore, this Court must "search the record for any evidence which
could have led the jury to reach its verdict, "drawing all reasonable
inferences in favor of the verdict winner." Nissim v. McNeil Consumer
Prod. Co., Inc., 957 F. Supp. 600, 601 (E.D.Pa. 1997) (quoting Blum v.
Witco Chemical Corp., 829 F.2d 367, 372 (3d Cir. 1987)); see also 12
MOORE'S FEDERAL PRACTICE § 59.13[a].
II. Plaintiff Marshak's Motions
A. Renewed Motion for Judgment as a Matter of Law
1. Sufficiency of Evidence
 The Lanham Act requires every trademark applicant to sign an oath
declaring that the applicant believes himself to be the owner of the mark
sought to be registered and "that no other person, firm, corporation, or
association, to the best of [the applicant's] knowledge and belief, has
the right to use such mark in commerce." 15 U.S.C. § 1051 (a)(1)(A).
Fraud in procuring a trademark "occurs when an applicant knowingly makes
false, material representations of fact in connection with an
application." Metro Traffic Control, Inc. v. Shadow Network Inc.,
104 F.3d 336, 340 (Fed.Cir. 1997) (citing 15 U.S.C. § 1064 (3)).
Fraud also occurs when an applicant willfully fails to correct an
originally innocent misrepresentation after learning the true facts,
knowing that the Patent & Trademark Office ("PTO") relied upon the
misrepresented facts in granting registration.
 There has been no dispute that Marshak stands in the shoes of his
assignors and that Marshak can have no greater trademark rights can they
had. See Hyosung America Inc. v. Sumagh Textile Co., 934 F. Supp. 570,
576-77 (S.D.N.Y. 1996), aff'd in part, reversed in part, 137 F.3d 75 (2d
Cir. 1998). Nor has there been any dispute that the assignors —
Thomas, Hobbs, and Green — acted through a partnership when they
filed their federal trademark application. See Trans. at 144; see also
Pretrial Order, Stip. Fact No. 25. Therefore, fraud may be established by
evidence that either Charlie Thomas, Elsbeary Hobbs, or pock Green
knowingly made material misrepresentations in connection with their
 In this case, the jury concluded that Marshak's federal trademark
registration had been Obtained by a fraud on the Patent and Trademark
Office. He now asks this Court to set aside the jury's verdict on the
ground that no reasonable
jury could have found that the trademark registrants acted with
After reviewing the evidentiary record, this Court is unable to "see
the merit in Marshak's motion. In this Court's judgment, the evidence of
fraud was over-whelming.
Charlie Thomas Employment Contract
First, there was the written employment agreement executed by Charlie
Thomas and The Drifters, Inc.*fn9 See Trial Exh. D-19. By its terms, the
contract was executed during April of 1960 between THE DRIFTERS, INC., a
New York corporation, hereinafter called the "EMPLOYER and CHARLES THOMAS
. . . hereinafter the ARTIST." The contract contains numerous clauses
regarding Thomas obligations to perform and record songs at the sole
direction of his employer, The Drifters Inc.; and also forbidding Thomas
from making any musical recordings without the express written consent
his employer. What was most decisive in this case, however, was paragraph
seven of the agreement which provides:
The Artist agrees that the name of THE DRIFTERS
belongs exclusively to the Employer and that he will
not at any time use the name of The Drifters or any
name similar thereto or any name incorporating The
Drifters. In the event the employee leaves the employ
of The Drifters he will not in any way advertise or
attempt to publicize the fact that he had been a
member of a singing group known as The Drifters and
will not associate his name in any manner with The
Drifters; and he further acknowledges that the name,
The Drifters, is a valuable property and any
violation of this paragraph could not be adequately
compensated by money damages and he therefore agrees
that the Employer shall be entitled to an injunction
in any Court of competent jurisdiction to enjoin any
violation or threatened violation of this contract by
Id.; see Trans. at 440-56.
Thomas employment contract, standing alone, was sufficient for the jury
to conclude that Thomas had made a knowing and material misrepresentation
in his trademark application.
Continuous Commercial Use of Original Drifters Recordings
Next, the jury heard uncontroverted testimony regarding the continuous
commercial use of original Drifters recordings, which have been played on
the radio and sold in record stores since the 1950s. See Trans. at 597.
Moreover, the following stipulated facts were read into evidence:
13. Treadwell's Drifters performed and recorded a
number of songs throughout the United States under
the name The Drifters, each of which are original
works of authorship.
14. Amongst the most popular of these songs are
"There Goes My Baby," "Up on the Roof," "Under the
Boardwalk," "Save the Last Dance for Me," and "On
Broadway," each of which were "Top- 10" hits on
Billboard's Rhythm and Blues charts.
15. Each of these songs have [been] publicly
performed on the radio throughout the United States,
sold on singles records and albums, and continue to
be played and sold in the United States to this day.
Trans. at 274-75; see also Pretrial Order at 5; Marshak v. Green, 505 F.
Supp. at 1060 ("Drifters records have been continuously available").
In sum, Marshak and his assignors applied for a trademark that was
already being used in connection with the original Drifters records.
Those records have been continuously marketed and sold under the name
"The Drifters" and they contain the same songs that Marshak's group sings
at its performances. In this Court's judgment, the applicants failure to
disclose this fact to the PTO is strong evidence of fraudulent
registration and it was wholly uncontroverted at trial. There was simply
no suggestion in this case that Thomas, Hobbs, Green, or Marshak were
unaware, at the time of their trademark application, that Atlantic's
recordings of original Drifters songs were being marketed, sold, and
played on the radio throughout the United States. The jury was therefore
free to conclude that they knew.
Atlantic Records continuous commercial use of the original Drifters
recordings provided clear and convincing evidence that Thomas, Hobbs, and
Green committed a fraud upon the Patent and Trademark Office when they
certified in 1976 that no other person, firm, corporation or association
had the right to use The Drifters trademark in commerce. See Metro
Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 340
(Fed.Cir. 1997) (holding that third party may petition to cancel
fraudulently obtained trademark registration).
Charlie Thomas Depositions
The jury also heard deposition testimony given by Charlie Thomas in two
prior lawsuits, Marshak v. Arista Records, Civ. Index No. 96-3032
(JBW(S.D.N.Y.) and Marshak v. Green, Civ. Index No. 79-3458 (EW)
(S.D.N.Y.) Portions of these depositions were read in to the record
during Marshak's cross-examination in this case. See Trans. at 347-51,
In the Arista deposition, Thomas testified that he had joined The
Drifters during the late 1950s at the request of George Treadwell. See
id; at 347. Thomas also testified that Treadwell was the manager of the
group and that Treadwell made all final decisions relating to
performances, costumes, appearance bookings, musical content, travel
arangements, and personnel changes."*fn12 See id. at 347-51, 389; see also
Rick v. Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 1985) (holding that, in
the absence of written contracts, the manager of a singing group may own
the rights to the name if he or she remains continuously involved with
the group and is in a position to control the quality of its services).
Thomas further stated that he considered himself an "employee" of The
Drifters and that he signed an employment contract to that effect. See
id. at 348. He also stated that he was compensated in the form of a
weekly salary. See id. at 389. Finally, Thomas testified that George
Treadwell owned the rights to the name "The Drifters." See id. at 348.
In the Green case, Thomas testified that, after George Treadwell's
death in 1967, he
continued to sing as a member of The Drifters under the management of
Faye Treadwell. See Trans. at 393. He also stated Mrs. Treadwell made all
final decisions affecting the group. See id. Finally, Thomas testified
that he later quit Treadwell's Drifters and pursued a solo career singing
under his own name, "Charlie Thomas." See id. at 390-91.*fn13
Marshak offered no evidence to rebut Thomas admission that he did not
own the name "The Drifters" when he applied for his trademark
registration. The Thomas depositions therefore provided sufficient
evidence to support the jury's verdict.
Johnny Moore's Testimony
Johnny Moore sang lead vocal on the original Drifters recording of
"Under the Boardwalk" in 1963 and "Saturday Night at the Movies" in
1964. See Trans. at 605. He testified that he joined George Treadwell's
Drifters in 1954 and that he stayed with the group until he was drafted
into the Army in 1957. See id. at 602. When Moore returned to the group
in 1963, he was required to sign an employment contract with The
Drifters, Inc. See id. at 606-07. Moore testified that he worked for
George Treadwell's Drifters until Mr. Treadwell died in 1967. See id. at
608. Moore also testified that, when Mrs. Treadwell succeeded her husband
as the group's manager in 1967, both Moore and Charlie Thomas continued
to perform as members of The Drifters under Mrs. Treadwell's management.
See id. Thomas quit the group within a year of Mr. Treadwell's death;
Moore stayed until 1979. See id. at 603, 608-09.
Larry Marshak's Testimony
In addition to Charlie Thomas employment contract and deposition
testimony, as well as evidence regarding the continuous commercial use of
original Drifters recordings, the jury also heard Mr. Marshak's live
testimony and two of his prior depositions.
In the Green case, Marshak admitted that he knew that Thomas, Hobbs,
and Green had previously been managed by Faye Treadwell.*fn14 Mr.
Marshak was then asked, "If someone had been with George Treadwell's
Drifters and been part of the Drifters, would he have had the right to
use the name Drifters?" Trans. at 387-88. Marshak answered:
In the music business, continually there are people
coming and going in groups. . . . The only person who
has the right to the name is the person that develops
it and keeps it in the public's eye. I might be one
person, but the whole act, it is a continuing
situation. People die and new people is a hundred
people. That's what it looks like. I don't know what
that means. Continually four or five of them are
changing every day and it's a common —
certainly someone who sang with the Drifters, just by
virtue of having sung with the Drifters, didn't
develop a right to the name when he left voluntarily
or even when he was dismissed from the Drifters.
Trans. at 388 (emphasis added); see also Trans. at 235-43, 711; Rick v.
Buchansky, 609 F. Supp. 1522 (S.D.N.Y. 1985).
Marshak's live testimony was also telling. In describing how he came to
manage his Drifters group, Marshak told the jury that the first
ex-Drifter he solicited regarding the 1970 reunion was Ben E. King, who
declined the offer. See Trans. at 90-92. Marshak also testified that,
shortly after he had reunited Thomas,
Hobbs, and Green in 1970, he received a letter from Mrs. Treadwell's
attorney claiming that The Drifters Inc. had superior rights to the name
of the group. See Trans. at 96-98. Marshak also admitted that, several
years prior to his federal trademark application, he had seen copies of
the employment contracts between The Drifters Inc. and Marshak's
assignors. See id. at 98-102, 104, 108, 288. Finally, Marshak testified
that it had been his idea to file the trademark application in 1976, and
that he handled all of the necessary details. See Trans. at 711-14; see
also footnote 1, supra.
In addition to Marshak's sworn testimony, the jury also watched a
video-tape of a television interview in which Marshak gave the following
description of Charlie Thomas' connection with the original Drifters:
They already had had three top ten records by the
time [Charlie Thomas] joined the Drifters in the
1950's. He joined the Drifters as an employee. He got
a job. He was now a sideman.
Can a sideman in Les Mis go around saying he is Les
Mis? of course not.
He got a job. He worked then under somebody's
direction, who told him what to do. . . .
None of the original members, not from the
Drifters, the Platters, the Marvelettes, ever wrote
those songs, ever arranged those songs, ever chose
the materials, chose the singers to perform. They had
nothing to do with what made them hit records, except
Stipulated Transcription of Video Tape (Trial Exh. D-100), attached as
Exhibit A to June 21, 1999 Stipulation; see Trial Trans. at 256-65.
In the end, Marshak offered no explanation for how Thomas, Hobbs, and
Green alone possessed the exclusive rights to the name "The Drifters" in
1976; nor did Marshak testify that he subjectively believed that they
possessed such rights.*fn15 Indeed, all of the evidence on this point was
unequivocal: Marshak knowingly and intentionally helped his assignors
defraud the Patent & Trademark Office into issuing a registration for a
name that none of them owned.
Alleged Bases for J.N.O.V.
In this Court's Judgment, the foregoing evidence provides ample support
for the jury's finding that Marshak's federal trademark registration had
been fraudulently obtained. Nevertheless, Marshak contends that no
reasonable jury could have found fraud in light of the following three
facts: (1) Marshak relied on the fact that Treadwell's 1971 lawsuit
against him had been dismissed; (2) Marshak and his assignors consulted
with a trademark
West Page 562
attorney prior to submitting their federal trademark application; and (3)
even if the application failed to disclose other users of the mark, such
omissions were not fraudulent because Marshak and his assignors
reasonably believed that those users were trademark infringers rather
than trademark owners.*fn16
Turning first to the 1971 lawsuit, this was an action brought by The
Drifters Inc. against Marshak and his assignors in the Supreme Court of
New York. See The Drifters, Inc. v. Thomas, et al., Index No.
27336/1971; Trial Exh. D-B. In that case, the court denied Treadwell's
application for a preliminary injunction, and later dismissed the
complaint because of Treadwell's failure to provide discovery. Marshak
contends that he and his assignors reasonably believed, on the basis of
this dismissal, that Treadwell had no rights in the name "The Drifters."
Of course, any claim of reasonable reliance first requires proof of
actual reliance. In this case, Marshak has cited no testimony or other
evidence that he or his assignors subjectively believed that the
dismissal of Treadwell's 1971 lawsuit constituted a final adjudication of
their trademark rights. But even assuming that there was evidence of
reliance, the jury clearly rejected it as unreasonable.
The jury also rejected Marshak's claim that he and his assignors had
relied on the advice of a trademark attorney when they applied for their
federal registration. There was simply no testimony that Marshak or his
assignors discussed with the attorney either The Drifters Inc. employment
contracts or Atlantic Records continuous commercial sale of original
Drifters recordings. Moreover, the evidence of the registrants knowing
misrepresentations was legion in this case. The jury surely could
conclude that any claim of reliance was insincere or unreasonable.
Finally, the jury rejected Marshak's suggestion that the registrants
failure to disclose other users of the mark could not have been
fraudulent because they had a colorable claim that those other users were
infringers. The jury properly rejected this argument because there was no
evidence that the registrants had a colorable claim of infringement
against both Treadwell's Drifters and Atlantic Records prior to the 1976
trademark registration.*fn18 Moreover, there was no testimony that
Marshak or his assignors subjectively believed that both Treadwell and
Atlantic Records were infringers." In the absence of such testimony,
there is simply no factual basis for Marshak's argument.
In the end, there was more than sufficient evidence to support the
jury's verdict that Marshak's trademark registration had been
fraudulently obtained. Indeed all of the evidence led to the same
conclusion: Thomas, Hobbs, Green, and Marshak knowingly and unabashedly
took possession of a valuable trademark to which they had no colorable
claim and then sought to register that mark with the PTO. The evidence
also showed that they knew, but failed to disclose, that Atlantic Records
was using the mark in connection with its marketing and sale of original
Drifters records. Indeed, Marshak never really disputed that the 1976
trademark application contained these two material misrepresentations,
and he utterly failed to adduce any evidence in support of his claim that
these misrepresentations were innocent rather than fraudulent.*fn19 In
this Court's view, the jury's verdict reflected the only reasonable
conclusion supported by the evidence; there was fraud as a matter of
2. Legal and Equitable Bases for J.N.O.V.
a) Res Judicata and Related Doctrines
 Marshak has always contended in this case that Treadwell's
counterclaim for cancellation is precluded by prior litigations. This
Court has repeatedly rejected this argument because Marshak has cited
only one prior case in which Treadwell was a party-in-interest, The
Drifters, Inc. v. Thomas, et al., Index No. 27336/1971 (N.Y.Sup.Ct.),
which was dismissed because of Treadwell's failure to provide adequate
discovery. See Trans. at 435-38. No issue was actually litigated in that
case and there was no judgment on the merits. See Maitland v. Trojan
Electric & Machine Co., Inc., 65 N.Y.2d 614, 491
N YS.2d 147, 480 N.E.2d 736 (1985) (holding that, under New York law, a
dismissal for failure to comply with discovery obligations is not a
judgement on the merits and does not bar a susequent suit involving the
same parties and issues); see also 7B N.Y. C.P.L.R. (McKinney's) §
5013 ("a judgment dismissing a cause of action before the close of the
proponent's evidence is not a dismissal on the merits unless it specifies
 Treadwell was not a party-in-interest in any of Marshak's other
lawsuits and she is therefore not bound by them. Indeed, in the two
published opinions relied upon by Marshak, both district judges expressly
declined to consider whether Marshak and his assignors had defrauded the
PTO when they failed to disclose Treadwell's superior rights in their
These arguments miss the mark, however, because they
could only accrue, if at all, to Treadwell's
benefit, not to Sheppard's. Sheppard argues that the
rights to "The Drifters" were lodged in the group's
manager, Treadwell, and the corporation he set up to
control the group's assets. In this case, however,
when only Marshak's and Sheppard's rights are at
state, these arguments are irrelevant.
Marshak v. Sheppard; 666 F. Supp. 590, 598-600 (S.D.N.Y. 987); see also
Marshak v. Green, 505 F. Supp. 1054, 1060-61 (S.D.N.Y. 1981) (holding
that Dock Green was estopped from asserting a claim of fraudulent
registration because "Green swore to and signed the application").*fn20
 For these same reasons, this Court rejects Marshak's related
contention that "the rule of stare decisis requires that a prior finding
that Larry Marshak's mark
is valid compels a finding of validity in the second action." Plaintiffs
Memorandum in Support of Post-Trial Motions at 52-53. Treadwell's claim
of fraud had not been previously litigated; she was entitled to her day
This Court also rejects Marshak's assertion that Treadwell should be
judicially estopped from claiming rights in the name "The Drifters" based
upon her recent settlement of a royalty dispute in Thomas v. The
Drifters, Inc., Index No. 25930/92 (N.Y. Sup.Ct., Queens Cty.). This
Court has examined the transcript of that settlement; it reflects nothing
more than Treadwell's agreement to make certain royalty prohibits to
former members of The Drifters. She did not, as Marshak argues, disavow
any rights or claims to the name "The Drifters." Indeed, the transcript
contains no factual findings or representations of any kind. See
Transcript of Proceedings, Jan. 6, 1999, attached as Exhibit E to Supp.
Cert. of Mark J. Ingber in Further Support of Plaintiffs Post-Trial
b) Statute of Limitations
 Marshak next argues , that Treadwell's counterclaim for
cancellation is barred by New York and New Jersey's six-year statute of
limitations. However, Marshak simply cites no authority in support of his
claim that this Court must borrow a state-law limitations period.
Treadwell's couterclaim was brought pursuant to 15 U.S.C. § 1064
(3), which, by its terms, permits such an action to be brought "at any
c) Subject Matter Jurisdiction
Marshak next contends that a petition to cancel a fraudulently procured
trademark registration pursuant to 15 U.S.C. § 1064 may not be
litigated in a federal district court. Although Marshak has never before
raised this issue, this Court has considered the objection and finds it
to be without merit.
 Marshak cites no case in support of this argument. To the
contrary, the cases Marshak has most heavily relied upon in this
litigation show that "in general, neither opposition to registration nor
a petition for cancellation under 15 U.S.C. § 1064, is a prerequisite
to a cancellation counterclaim in an infringement action." Marshak v.
Green, 505 F. Supp. at 1060; see also Orient Express Trading Company,
Ltd. v. Federated Department Stores, Inc., 842 F.2d 650 (2d Cir. 1988).
d) Equitable Relief
 In light of the overwhelming evidence of fraud presented in this
case, the Court declines to exercise its equitable powers on Marshak's
behalf. This Court therefore rejects Marshak's invocation of the doctrine
of laches. See Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 1
U.S.P.Q.2d 1497, 1499, 1986 WL 83320 (TTAB 1986) (holding that equitable
defense of laches is inapplicable to claims of fraud).
The Court also declines to grant Marshak injunctive relief. First, the
jury found that Treadwell did not infringe on Marshak's common law
trademark rights; second, this Court will not consider alleged acts of
infringement that occurred subsequent to the jury's verdict; and third,
Mr. Marshak has unclean hands.
B. Motion for New Trial
1. Jury Instructions
Marshak contends that this Court's charge to the jury contained two
legal errors that warrant a new trial. First, Marshak argues that it was
error, in light of Marshak's incontestible trademark registration, to
instruct the jury on the question of trademark ownership. Second, Marshak
argues that it was error for this Court to instruct the jury that a
verdict of fraudulent registration could be based upon a finding that the
trademark registrants "knew or reasonably should have known" that their
representations to the PTO were materially false.
a) Ownership Instruction
 There was no question in this case that Marshak had an
incontestible trademark registration for the name "The Drifters" as used
in connection with a singing group. An incontestible mark is conclusive
evidence of the registrant's ownership and exclusive right to use the
mark. See 15 U.S.C. § 1115 (b). However, "[e]ven where the mark has
become incontestible, the statute allows challenge to the trademark on
the basis that the registration or the incontestible right to use the
mark was obtained fraudulently." Marshak v. Sheppard; 666 F. Supp. 590,
598 (S.D.N.Y. 1987) (quoting 15 U.S.C. § 1115 (b)(1)).
In this case, Marshak initiated an infringement action against
Treadwell. As a defense to that lawsuit, Treadwell alleged that the
registrants of the trademark — Dock Green, Elsbeary Hobbs, and
Charles Thomas — committed a fraud on the PTO when they
misrepresented that they owned the rights to the name "The Drifters" and
that "to the best their knowledge and belief no other person, firm,
corporation or association has the right to use said mark [The Drifters]
Accordingly, the Court gave the jury the following instructions:
The defense of fraud will turn upon whether you
believe that the persons who registered the mark knew
or reasonably should have known that someone else had
legal rights to the name "The Drifters." This will
require you to consider the ways in which people
acquire and lose legal rights in a name. You will
have to determine who in fact owned the rights to the
name "The Drifters" at the time Mr. Marshak's
trademark was registered with the Patent and
Trademark Office. And you will have to determine
whether the persons who registered the mark made a
fraudulent misrepresentation to the Patent and
Trans. at 751-52 (emphasis added). Later in the charge, the jury received
more detailed instructions regarding the incontestible status of
Larry Marshak's registration for the service mark
"The Drifters" has achieved incon table status under
the Lanham Trade Mark Act. The registration of an
incontestable mark is conclusive evidence o he
validity of the registered mark a of the registration
of the mark, and of Larry Marshak's ownership of the
mark, and of Larry Marshak's exclusive right to use
the registered mark in commerce. Indeed,
incontestable status also protects a registrant from
having his mark canceled by one merely claiming
superior rights based on prior usage.
Since Larry Marshak's mark is federally registered
and has achieved "incontestable" status, the first
element necessary to prove trademark infringement,
validity and legal protectability, is conclusively
established. The second element, Larry Marshak's
ownership of his mark, is also admitted and
However, despite the term "incontestible,"
Marshak's incontestible mark may be canceled if
defendants prove either that the federal registration
was obtained fraudulently or that Marshak's
registered mark is being used so as to misrepresent
the source of the goods or services of Treadwell.
Trans. at 754-55 (emphasis added).
At the charge conference, counsel for Marshak insisted that the
incontestible status of his mark should preclude any instruction
regarding ownership of the rights to the name "The Drifters." Marshak's
objection was misplaced, however, because this Court did not instruct the
jury to decide Marshak's infringement suit on the basis of who owns or
owned the mark. Indeed, the Court gave the jurors detailed instructions
regarding Marshak's incontestible registration and its preclusionary
effects. The Court also instructed the jury that fraud requires "clear
and convincing evidence [of a] deliberate
attempt to mislead the Patent & Trademark Office into registering the
mark." Trans. at 756.
However, in order to reach a verdict on Treadwell's defense of
fraudulent registration, the jury had to determine whether the
registrants knew it was false when they swore under oath that they owned
the mark and that no other person had a right to use the mark in
commerce. Without any instruction about how people can acquire or lose
legal rights in a name, the jury would have had no standard by which to
determine whether the registrants made a knowing misrepresentation to the
b) Fraudulent Intent Instruction
 Marshak next contends that this Court erroneously instructed the
jury that they could find fraud based upon evidence that the registrants
"knew or reasonably should have known" that their trademark application
contained materially false statements. See Trans. at 634-35. The relevant
portion of the charge stated:
When considering whether the service mark Mr.
Marshak possessed was obtained through fraud, the
following factors must be proven by clear and
1. a false representation was made to the Patent
and Trademark Office regarding a material fact;
2. the registrant's knowledge or belief that the
representation was false;
3. the intention to induce action or refraining
from action in reliance on a misrepresentation;
4. reasonable reliance on the misrepresentation;
5. damages proximately resulting from such
The defendants, who allege such fraud, bear a heavy burden of proof.
Fraud must be shown by clear and convincing evidence in order to provide
a basis for either cancellation or damages and you I may find fraud only
when there is a deliberate attempt to mislead the Patent and Trademark
Office into registering the mark.
Clear and convincing, as a standard of proof,
requires a quantum of evidence somewhere beyond a
mere preponderance, but well below that of beyond a
reasonable doubt, and such that it will produce in
your mind as the trier of fact a firm belief as to
the facts sought to be established. Honest mistake,
inadvertence, erroneous conception of rights and
negligent omission does not constitute fraud. . . .
. . . [T]he applicant [has] a duty to disclose those
users whom the applicant reasonably should know have
legal rights to use the mark. In other words, if the
applicant had a reasonable and good faith belief that
no other person or entity had legal rights to use the
mark, then the registration was not obtained by
Fraud against a registrant will not lie where a
statement was a false misrepresentation occasioned by
honest misunderstanding, inadvertence, negligent
omission, or the like. Rather, fraud requires proof
of a willful intent to deceive. However, fraud may be
found if the applicant or registrant knew or
reasonably should have known that the fact
represented was not true.
A person may also commit fraud by willfully failing
to correct his or her own originally innocent
misrepresentation to the Patent and Trademark Office
if that person later learns of the true facts,
knowing that the Trademark Office has relied upon the
misrepresented facts in granting the trademark
If you merely find that Larry Marshak's assignors
signed an application for trademark rights which
stated that no others had the right to use The
Drifters mark in commerce, this is insufficient to
establish that Larry Marshak's assignors committed
fraud in procurement of federal trademark, absent
evidence that such assignors actually knew, or
should have known that others had legal, contractual
right to use mark.
Trans. at 755-58 (emphasis added).
Marshak's counsel objected to the "reasonably should have known"
language on the basis of the Tenth Circuit's decision in Stanfield v.
Osborne Industries, Inc., 52 F.3d 867, 874 (10th Cir. 1995). In that
case, the plaintiff had granted to the defendant a "naked license" to use
the name "Stanfield Products" and the defendant subsequently obtained a
federal trademark registration for that name in 1978. See 52 F.3d at
872. Sixteen years later, the plaintiff-licensor sought to have the
licensee's registration canceled because it was obtained by fraud in
violation of 15 U.S.C. § 1120.
In affirming the district court's grant of summary judgment, the Tenth
Circuit reasoned that the plaintiff had the burden of proving that the
defendant had "signed the [trademark] oath knowing that it was false" and
that, "therefore, [it is] the applicant's subjective belief that is at
issue." 52 F.3d at 874. Significantly, however, the court did not suggest
that this requires proof of actual knowledge.*fn21 Nor did the
Stanfield court suggest that a sincere but unreasonable belief could
defeat a claim of fraud. Indeed, when the Tenth Circuit turned to the
facts presented in that case, the court stated only that the registrant
"could have reasonably believed that plaintiff had waived his rights to
the trademark in that [license] agreement." 52 F.3d at 874.
This Court is not persuaded that the Tenth Circuit's Stanfield
decision, if adopted by the Third Circuit, would require an instruction
than the one actually given to the jury in this case.*fn22 Moreover,
this Court found clearer guidance from the Federal Circuit, which has
frequently confronted this issue.
In Torres v. Cantine Torresella, 808 F.2d 46 (Fed.Cir.1986), which
involved an allegedly fraudulent trademark renewal application, the court
stated that "[t]he problem of fraud arises because [the applicant]
submitted a label that he knew or should have known was not in use that
contained a mark clearly different from the one in use." 808 F.2d at 49.
In affirming the PTO's decision to cancel the registration, the court
held that "when [a registrant] knows or should know that he is not using
the mark as registered . . . he has knowingly attempted to mislead the
PTO." Id.; see also G.H. Mumm & Cie v. Desnoes & Geddes Ltd.,
917 F.2d 1292, 1296 (Fed.Cir.1990) (quoting Torres, 808 F.2d at 49).
In short, this Court has found no support for Marshak proposed
instruction that a sincere but unreasonable belief in a statement's truth
defeats a claim of fraud. But even assuming that such an instruction was
warranted any error was harmless because there was no testimony or other
evidence that Marshak or his assignors actually believed that their
trademark application was truthful. Moreover, there was direct evidence
that the registrants knew that their representations to the PTO were
First, Charlie Thomas testified in a prior deposition that he
considered himself an employee of The Drifters Inc. and that George
Treadwell owned the group and its name. Second, Thomas employment
contract expressly stated that the name "The Drifters" belonged to his
employer, The Drifters Inc. Finally, Larry Marshak stated, in a
television interview, that Charlie Thomas had "joined the Drifters as an
employee." Stipulated Transcription of Video Tape (Trial Exh. D-100),
attached as Exhibit A to June 21, 1999 Stipulation; see Trial Trans. at
There was also circumstantial evidence of knowledge. For example, every
witness who testified about the original Drifters group, including Mr.
Marshak, stated that the members of the original group changed
frequently, and that no fewer than 30 different singers had performed and
recorded original records under the management of George Treadwell and
The Drifters, Inc. See Trans. at 711. It was also undisputed that
Thomas, Hobbs, and Green were replacement singers hired by the Drifters
in 1959 — five years after George Treadwell started managing the
group in 1954. See Pretrial Order, Stip. Fact Nos. 4, 6, 7-12, 18; see
also Trans. at 601-08. Moreover, there was no dispute that The Drifters
continued to perform and record hit records after Hobbs left the group in
1961, and after Green left in 1964.*fn23 See id. The evidence also
showed that Johnny Moore joined Treadwell's Drifters in 1954 and, that,
after his military service, he worked for Treadwell's Drifters, without
interruption, from 1963 until 1979. See Trans. at 602-03; see also Robi
v. Reed; 173 F.3d 736 (9th Cir. 1999) (holding that departed members of
The Platters had no rights to the group's name because the original
manager continued to use the name and manage the remaining Platters
members). These facts support a reasonable inference that Marshak's
assignors knew that they did not own the exclusive rights to the name
"The Drifters" when they filed their trademark application in 1976.
In response, Marshak produced no testimony that he or his assignors
ever believed — reasonably or unreasonably — that they owned
the exclusive rights to the name "The Drifters;" nor was there any
evidence that they were unaware of the prior and continuous use of the
mark in connection with the marketing and sale of original Drifters
In light of Marshak's utter failure to adduce any evidence, or even a
plausible theory, to rebut Treadwell's overwhelming showing of fraud, any
error in the Court's instructions to the jury was harmless. As a matter
of law, the evidence permitted only one conclusion: Marshak's trademark
registration was obtained by a fraud on the Patent & Trademark Office.
2. Objections to Evidence
a) Charlie Thomas Deposition in the Arista Case
 Marshak contends that this Court erroneously admitted into
evidence Charlie Thomas deposition testimony from a prior lawsuit between
Mr. Marshak and Arista Records. Marshak must first overcome the threshold
issue of waiver, because his lawyer did not make a timely objection at
trial. An objection is untimely, and thus waived, if it is not made as
soon as the grounds for the objection could reasonably have been known.
See Gov't of Virgin Islands v. Archibald; 987 F.2d 180, 184 (36 Cir.
 During Marshak's cross-examination, Mr. Flynn asked whether he
knew that "Charlie Thomas was deposed in the Arista case." Trans. at
347. Marshal answered "yes," and also stated that had been present during
the deposition and represented by counsel.*fn24 See id. A
copy of the deposition was given to Mr. Marshak and his trial counsel,
Mark Ingber, and then marked for identification. Mr. Ingber did not
object. Mr. Flynn then asked Marshak 28 questions regarding the Thomas
deposition. Mr. Ingber still made no objection. See Trans. at 347-51.
Mr. Flynn then went on to cross-examine Marshak about a different
subject, and shortly thereafter the Court took a recess. See id. at
After the morning recess, Mr. Ingber made his first objection to the
admission of Charlie Thomas Arista deposition. This Court overruled the
objection first on the basis of waiver. See Trans. at 359-61. Second, the
Court also ruled that Thomas' deposition was admissible to show the state
of mind of Thomas and Marshak. See id.
Mr. Ingber claims that his objection was timely because he had not had
an opportunity to review the deposition transcript until it was
introduced at trial. In this regard, Mr. Ingber made the following
I also want to note on the record that I was not the
attorney at this Arista deposition. I had no idea
about it. I was not familiar with any aspect of it .
Trans. at 360. In addition, Mr. Ingber's post-trial certification
I received [the Thomas deposition] for the first
time [at trial]. notwithstanding opposing counsel's
false assertions that I had my own copy of the Thomas
deposition transcript in advance of trial, I did
not. Nor was I aware of its contents. Obviously, had
I previously seen the unsworn*fn25 and incomplete
Thomas deposition transcript . . . I would have
Supplemental Certification In Further Support of
Plaintiff's Post-Trial Motions at ¶ 3 (emphasis in
As an initial matter, this Court finds that Marshak's
claim of surprise was itself untimely.*fn26 however,
this Court is more troubled by Mr. Ingber's admission
that, during the discovery phase of this litigation, he
had "objected to [Treadwell's request to produce the
Thomas deposition] on the basis of relevance."
Plaintiffs Reply Brief In Suppprt of Plaintiffs
Post-Trial Motions at 2. Indeed, in response to
Treadwell's specific requests for production of the
Larry Marshak and Charlie Thomas deposition transcripts
from the Arista case, Mr. Ingber wrote:
In response to your letter dated June 12th, I wish to
reiterate that the information you are requesting is
not relevant to any issue involved in the pending
action nor is it reasonably calculated to lead to the
discovery of admissible evidence. Accordingly, my
client is not obligated to participate in your
June 16, 1998 Letter of Mark J. Ingber, attached as Exhibit C to Supp.
Cert. of Mark J. Ingber In Further Sup. of Post-Trial Motions; see also
id. at Exhibit B (June 12, 1998 Letter of James P. Flynn).*fn27
This Court will not comment further on Mr. Ingber's conduct. He has
made representations to this Court that are patently inconsistent, and he
is now precluded from claiming surprise. But even if Mr. Ingber's claim
of surprise were timely and credible, it could not excuse his failure to
make an objection that should have been obvious. See Gov't of Virgin
Islands v. Archibald; 987 F.2d 180, 184 (3d Cir. 1993). Charlie Thomas
was neither a party nor a witness in the instant litigation and his
deposition transcript from a prior lawsuit was therefore objectionable,
on its face, as hearsay.
b) Charlie Thomas Deposition in the Queens Case
 Marshak contends that this Court erroneously prevented him from
cross-examining Mrs. Treadwell with a transcript of Charlie Thomas
deposition in Thomas v. The "Drifters," Inc., Index No. 25930/92 (N.Y.
Sup.Ct., Queens Cty), which is a recently settled royalty dispute between
Treadwell and several former Drifters singers. However, Marshak's brief
contains no citation to an exhibit or other document that contains a
transcript of the deposition he sought to use at trial. See Plaintiffs
Memorandum of Law in Support of Post-Trial Motions at 30-32. In
addition, this Court has scoured Marshak's voluminous submissions, in
vain, to find a copy of the deposition transcript. This Court is
therefore unable to evaluate the proffered testimony and must rely solely
on the trial transcript, which reflects the following colloquy during
Mr. Ingber's cross-examination of Mrs. Treadwell:
Q: Now, I'd like you to show you a deposition
transcript of Charlie Thomas —
Q: — in connection with —
THE COURT: Show it.
Q: — with the case of Charlie Thomas and
Elsbeary Hobbs against your company, The Drifters,
Inc., and Atlantic Recording. I'd like to show that
(Exhibit shown to the witness.)
THE COURT: What is the question?
MR. INGBER: Your Honor, this is —
THE COURT: What is the question.
MR. INGBER: I'd like you to turn to page 121.
THE COURT: What are you going to do?
MR. INGBER: Pardon?
THE COURT: What are you going to do?
MR. INGBER: Read.
THE COURT: Read her a portion of Charles Thomas
MR. INGBER: Yes, your Honor.
THE COURT: Fine. I'll see you at sidebar.
(The following occurs at sidebar:)
MR. INGBER: Your Honor, this is the same deposition
that both sides were reading earlier in the case,
which I think came in —
THE COURT: Came in when you all were sleeping
MR. INGBER: We both agreed we could both use the
deposition transcript without any different kind of
MR. FLYNN: I beg to differ on that. First of all, the
deposition testimony [I] confronted Mr. Marshak with
was the Arista case. The only time this case, a case
in New York, in the New York Supreme Court [w]as
referred to, was when Ms. Treadwell was confronted on
voir dire with her deposition. This is hearsay. The
fact that Mr. Ingber didn't object when I used Thomas
— there was no agreement. This can't come in.
It is objectionable.
THE COURT: I don't know how it comes in evidence.
MR. INGBER: Your Honor, this is a statement against
her interest, here.
THE COURT: By a person who h against her interest.
MR. INGBER: Not necessarily, your Honor. This is a
case where she was involved in a lawsuit. She is a
named party here. The Drifters, Inc. The other side
is allowed to use Charlie Thomas deposition
THE COURT: You are totally missing the point. First
of all, the other testimony that was permitted,
number one, went to two things. Number one, it
was — the horse was out of the box and
you never objected to the testimony.
Secondly, that testimony went to the state of mind
and the knowledge of your client, Mr. Marshak, at the
time he filed this application for trademark
registration. It went to the element of his knowledge
and whether he was aware of certain things at that
time. I permitted that because of those two factors.
To come in now to seek to use a deposition from
someone who is-actually, a non-party-well, he's a
party in one sense. But he's a non-party. Although
Mr. Marshak's rights are derivative.
MR. INGBER: Exactly.
THE COURT: To suggest that his testimony in a prior
proceeding can be used or admitted into evidence
either to cross-examine this witness or on its own is
absolutely wrong. I will not permit it. You have an
MR. INGBER: I wasn't going to say that. I'd like to
read it out on rebuttal.
THE COURT: You can't read it.
MR. INGBER: Why, your Honor? Based on my client's
reliance. My client steps into his shoes, your
THE COURT: What theory is that? April 5th, 1995?
MR. INGBER: Right. She testified he's a liar
already, your Honor.
THE COURT: That has nothing to do with the admission
of a deposition of a non-party to this proceeding.
These are sworn — what is his name? Mr.
Thomas. Bring him in. Bring him in to testify.
MR. INGBER: You let them use it.
THE COURT: Don't say I let. You let, sir. Number
one. You let it in. You never objected to it. Had you
objected to it, I would have permitted it in anyway,
dealing with the state of mind of the plaintiff, Mr.
Marshak, who against him the defense has raised there
was a fraud committed on the Trademark Office.
His state of mind becomes very important with the
jury assessing whether or not this defendant can
prove, as they have the obligation to prove and they
have the burden f proving, fraud. That is a different
MR. INGBER: I can't ask her if she's aware whether or
not Charlie Thomas has denied signing any contracts?
THE COURT: No. You cannot. You cannot do that, sir.
because this is out-of-court statements by a
declarant who is not present for cross-examination.
You have every right to subpoena Mr. Thomas and
bring him in here and let him say whatever he wants
to say. You can bring in Mr. Hobbs, if he's still
alive. He's passed on, hasn't he?
MR. FLYNN: As Mr. Green.
THE COURT: You can bring Charles Thomas in here to
testify as to anything he wants to say. He can get on
the stand and testify that he had an absolute right
MR. INGBER: I —
THE COURT: Listen to me. He can come in here and
testify he had an absolute right to transfer that to
your client. He can tell us the reasons for those
rights. But to read his deposition is improper.
MR. INGBER: I won't read the deposition. I don't seq
why I can't even ask her whether or not she is aware
of whether Charlie Thomas has denied signing any
THE COURT: Doesn't matter.
MR. INGBER: It goes to her state of mind, your
THE COURT: Not her state of mind. Hers is not a
state-of-mind question. Your client's state of mind
is because he is being charged with fraud. His state
of mind is an issue in the case. Her state of mind is
not an issue in the case.
MR. INGBER: It also goes as to abandonment, your
Honor. That is a state of mind issue [as] well.
THE COURT: It doesn't.
MR. INGBER: Abandonment is a state of mind. It is
THE COURT: Intent to abandon. Done by objective
facts. Not done by the testimony of Charlie Thomas.
That is my ruling.
(End of sidebar conference)
Trans. at 540-46.
This Court is satisfied that its ruling was correct. Charlie Thomas
out-of-court statement that he did not sign an employment contract with
Treadwell's Drifters was inadmissible hearsay.
c) Charlie Thomas Employment Contract
The Court is satisfied that the photocopy of Charlie Thomas employment
contract with The Drifters Inc. (Trial Exh. D-19) was properly admitted
As an initial matter, it was a stipulated fact in this case that "Dock
Green, Elsbeary Hobbs and Charles Thomas each signed employment contracts
with The Drifters, Inc." Pretrial Order, Stip. Fact No. 9. Mr. Marshak
also testified that, by 1971, he had seen copies of this and other
employment contracts between The Drifters, Inc. and his assignors. See
Trans. at 98-102, 104, 108, 288.
 At trial, this Court admitted the photocopy pursuant to Federal
Rule of Evidence 1004, which provides: "The original is not required, and
other evidence of the contents of a writing . . . is admissible if
— (1) All originals are lost or have been destroyed, unless the
proponent lost or destroyed them in bad faith." See Trans. at 451-53.
Mrs. Treadwell testified that she had seen an original at one time, but
that it was lost years ago.*fn28 See Trans. at 426-29, 451-53. She
testified that she was able to get a copy, Exhibit D-19, from Atlantic
Records.*fn29 See id. at 442. Marshak's lawyer conducted a vior dire of
Mrs. Treadwell, and this Court also examined portions of her deposition
taken in the recently settled Queens royalty case. See id. at 444-52.
After considering Mrs. Treadwell's live and deposition testimony on this
subject, the Court concluded that she no longer had the original contract
and that she did not lose it or destroy it in bad faith. See id. at
451-53. The photocopy was therefore admissible as "other evidence" under
 The photocopy was also admissible under Rule 1003, which
provides: "A duplicate is admissible to the same extent as an original
unless (1) a genuine question is raised as to the authenticity of the
original or (2) in the circumstances it would be unfair to admit the
duplicate in lieu of the original."
With respect to the first requirement, there was no genuine question of
authenticity. Mrs. Treadwell identified Exhibit D-19 as a
second-generation copy of the original contract that she had seen years
earlier. She also testified that she recognized Charlie Thomas
signature. See id. at 426-29. Marshak did not challenge the authenticity
of Charlie Thomas signature; nor did he challenge the accuracy of the
photocopy. Indeed, Marshak's sole objection to the admission of D-19 was
that, in his opinion, Treadwell had not sufficiently established that all
of the original contracts were lost or destroyed. But Marshak never
disputed that D-19 was what Treadwell claimed it to be — i.e., a
copy of an employment contract between Thomas and The Drifters, Inc.
Marshak therefore failed to raise a genuine question as to the document's
It was not unfair to admit the photocopy, in this case because: (1)
Marshak testified that he had seen copies of this and other similar
contracts on several occasions since 1971; and (2) Marshak did not
dispute the accuracy of the photocopy or the authenticity of Charlie
Thomas signature. See Trans. at 98-102, 104, 108, 288.
This Court is therefore satisfied that the photocopy was admissible to
the same extent as the original under Rule 1003,*fn30 and also
admissible as "other evidence" of the contract under Rule 1004.
3. Newly Discovered Evidence
In support of his motion for a new trial, Marshak cites "newly
discovered evidence" that Charlie Thomas once denied having signed an
employment contract with The Drifters, Inc. The purported denial is
contained in a pleading filed on behalf of Charlie Thomas in the recently
settled royalty dispute. See Thomas v. The Drifters, Inc., Index No.
25930/92 (N.Y. Sup.Ct., Queens Cty.), Charley [sic] Thomas's Response to
Drifters Inc.'s Notice to Admit, attached as Exhibit 11 to Decl. of Mark
J. Ingber. However, this Court has not considered the proffered document
because it is not evidence and it is not new.
 The Response to the Notice to Admit is not admissible evidence
because the document is not signed or certified as true by Charlie
Thomas; indeed it is signed only by Mr. Marshak's attorney, Lowell
 The proffered document is not "new" within the meaning of Rule 59
because Marshak provides no reason why he could not with due diligence
have located the pleading prior to trial. Moreover, the document is dated
July 1, 1994 and it was written by Mr. Davis, who was in the courtroom
during portions of this trial.
4. Comments by the Court
 Marshak contends that this Court improperly instructed the jury
that Treadwell's 1971 New York suit had been dismissed on a "technical
ground." This remark was made during the Court's limiting instruction:
It [the dismissal] is not binding upon you. But it is
introduced into evidence to show circumstances that
Mr. Marshak has presented here concerning what he did
and why he did certain things. It is not binding upon
you. You should not accept it as binding upon you in
your determination of the issues in this case. . . .
[It was] dismissed . . . on a technical ground. It
has nothing to do with the merits of the case.
Trans. at 721.
This instruction Was proper because the New York court's decision was
admissible only as it related to Marshak's claim that he and his
assignors sincerely believed that no other person or entity had legal
rights in the name "The Drifters" when they filed their trademark
application in 1976. Moreover, this instruction was necessary in light of
Mr. Ingber's improper opening statement, which quoted extensively from
the New York court's ruling on Treadwell's 1971 preliminary injunction
application. See Trans. at 42-43. Indeed, Mr. Ingber quoted the court's
description and characterization of the evidence, and then quoted its
conclusion: Finally, the Court said, "In fact, the evidence submitted
apparently indicated that it is the defendants, Mr. Thomas, Mr. Hobbs,
Mr. Green and Mr. Marshak, who have established such reputation and
notoriety [in the name The Drifters]." Trans. at 43 (opening statement by
This Court is satisfied that its limiting instruction to the jury was
both appropriate and necessary.
III. Defendant Treadwell's Motions
A. Motion to Set Aside Jury's Finding of Abandonment
Although the jury found that Marshak's trademark had been obtained by
fraud, and that Treadwell was the true owner of the mark, the jury so
found that Treadwell had abandoned her rights.*fn31 Treadwell
argues that a finding of abandonment is precluded, as a matter of law, by
the uncontroverted evidence that she and her predecessors-in-interest
have continuously received royalties from the commercial use of original
The doctrine of "related use" was described for the jury as follows:
A change in use of a mark from one product to
another will not constitute abandonment if the
products also are closely related. That is, where a
registrant discontinues to use a trademark on a
certain product, he will not be held to have
abandoned the mark if he continues to use the mark on
related items, and if the discontinued product is one
which would still be thought by the buying public to
come from the same source and is one which remained
in the normal field of expansion of the owner's
There is no abandonment or break in the chain of
priority of use merely because use of the mark is
shifted from one line of goods or services to another
similar line. A change in the kind of goods or
services marketed under the trademark is not an
abandonment of the trademark owner's priority if
prospective purchasers are likely to perceive the new
product as originating from the same source as the
Trans. at 766; see 2 McCarthy on Trademark and Unfair Competition §
17:15. Marshak did not object to this Instruction and he did not dispute
that a musical group's recordings and live performances are parts of a
single business enterprise in the public mind. See Turner v. HMH
Publishing Co., Inc., 380 F.2d 224
, 228-29 (5th Cir. 1967); see also
Giammarese v. Delfino, 197 U.S.P.Q. 162, 163 (N.D.Ill. 1977).
Treadwell cites The Kingsmen v. K-Tel International, Ltd.,
557 F. Supp. 178 (S.D.N.Y. 1983). In that case, former members of the
rock group "The Kingsmen" sought to enjoin another former member, Jack
Ely, from suggesting to the public that his recent re-recording of the
famous song "Louie, Louie" was performed by the original Kingsmen.
Although there was no dispute that Ely was the lead vocalist on the
original recording of "Louie, Louie," he had left the Kingsmen in 1964,
before either the song or the group became popular. See 557 F. Supp. at
Ely argued that his use of name "The Kingsmen" was permissible
because, among other things, the mark had been abandoned to the public
domain when the group disbanded in 1967 and ceased touring and recording
songs. The district court rejected Ely's defense of abandonment because
the other group members had continued to use the Kingsmen mark in
connection with the sale of the group's original recordings. The court
We find that defendants have failed to show either
non-use or intent to abandon Even though plaintiffs
disbanded their group in 1967 and ceased recording
new material, there is no evidence suggesting that
they failed to use the name Kingsmen during the
period from 1967 to the present to promote their
previously recorded albums. Moreover, the fact that
these individuals continue to receive royalties for
Kingsmen recordings flies in the face of any
suggestion of an intent to abandon use of the name
Kingsmen. These plaintiffs have no more abandoned
their right to protect the name of Kingsmen than have
The Beatles, The Supremes or any other group that has
disbanded and ceased performing and recording, but
continues to collect royalties from the sale of
previously recorded material.
557 F. Supp. at 183 (emphasis supplied); see also HEC Enterprises, Ltd.
v. Deep Purple, Inc., 213 U.S.P.Q. 991, 993 (C.D.Cal. 1980) (holding that
the original members of the musical group "Deep Purple" had not abandoned
the name because they continued to receive royalties from the sale of
their original recordings).
[25,26] This Court is persuaded by the Kingsmen case and subsequent
cases that have adopted its reasoning. See Robi v. Reed; 173 F.3d 736
(9th Cir. 1999) ("adopt[ing] the holdings of HEC Enterprises, Ltd. and
Kingsmen"). A successful musical group does not abandon its mark unless
there is proof that the owner ceased to commercially exploit the mark's
secondary meaning in the music industry. It is insufficient merely to
prove that the group stopped performing and recording new songs. In this
case, Marshak had the burden to prove that Treadwell stopped using the
mark in connection with the continued sale of original Drifters
recordings. Marshak adduced no such evidence; indeed, it was stipulated
that the original Drifters recordings have been played on the radio and
sold in record stores, without interruption, for the past 40 years. See
Pretrial Order, Stip. Facts 13-15; see also Trans. at 464. Therefore, the
name "The Drifters" could never have passed into the public domain.
In this Court's judgment, there was no evidence in the record from
which a reasonable jury could infer that Treadwell stopped using the mark
in commerce. As a matter of law, there was no abandonment. The Court will
therefore vacate the jury's finding that Treadwell abandoned her
trademark rights in 1976.*fn33 Because The Drifters mark never passed
into the public domain, it is clear that neither Marshak nor his
assignors could ever have acquired common law trademark rights. The
jury's verdict will be modified accordingly.
IV. Remedies & Attorneys Fees
Treadwell's trademark rights date back to 1954, when George Treadwell
first acquired ownership and control of The Drifters. Larry Marshak has
no legal rights in the mark.
The Court will permit the parties to file supplemental briefs so that
they can address the issues of remedies and attorneys fees in light of
today's decision. Plaintiff and defendant are to submit their respective
briefs in accordance with the Order that accompanies this Opinion.
For the foregoing reasons, Marshak's motions are DENIED. Treadwell's
motion to set aside the jury's finding of abandonment is GRANTED.
An appropriate Order accompanies this Opinion.
ORDER ON POST-TRIAL MOTIONS
THIS MATTER having come before the court on cross-motions to set aside
the jury's August 5, 1998 verdict; and the Court having heard oral
argument on April 9, 1999 and having considered the parties written
submissions; and for the reasons set out in the Court's Letter Opinion in
the above-captioned matter;
IT IS on this 30th day of July, 1999,
ORDERED that Marshak's motion for judgment as a matter of law or, in
the alternative, for a new trial be and hereby is DENIED; and it is
ORDERED that Treadwell's motion for judgment as a matter of law or, in
the alternative, for a new trial be and hereby is GRANTED; and it is
ORDERED that this Court's FINAL JUDGMENT AND ORDER, entered September
30, 1998, be and hereby is MODIFIED as follows:
1. The jury's verdict that Treadwell abandoned her
rights to the name "The Drifters" in or about 1976 is
hereby VACATED AND SET ASIDE as contrary to law; and
2. The jury's verdict that Marshak acquired common
law rights in the name "The Drifters" subsequent to
1976 is hereby VACATED AND SET ASIDE as contrary to
law; and it is further
ORDERED that the jury's verdict and this Court's FINAL JUDGMENT AND
ORDER remain unchanged in all other respects; and it is further
ORDERED that each party submit one supplemental brief as follows:
1. Briefs should address final remedies and attorneys
fees only; and
2. Briefs are not to exceed 15 double spaced pages,
with 12-point size type and one-inch margins; and
3. Briefs are to be filed with the Court on August
9, 1999; and
4. Briefs are to be served on opposing counsel on
August 11, 1999; and
5. There will be no reply briefs; and
6. There will be no extensions of time.