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Robert C. Kaufhold, et al v. Gerald Caiafa

May 31, 2012

ROBERT C. KAUFHOLD, ET AL.,
PLAINTIFFS,
v.
GERALD CAIAFA, ET AL., DEFENDANTS.



The opinion of the court was delivered by: William J. Martini, U.S.D.J.

OPINION

Plaintiffs Robert C. Kaufhold and Joseph Aurthur McGuckin were the guitarist and drummer of the iconic punk rock band, the Misfits. Plaintiffs filed this action against the band's bassist, Gerald Caiafa, and his music label, Cyclopian Music, Inc. ("Cyclopian") (collectively "Defendants"), alleging that Defendants improperly asserted exclusive ownership rights over the Misfits trademarks. This matter comes before the Court on Defendants' motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief may be granted. There was no oral argument. Fed. R. Civ. P. 78(b). For the reasons set forth below, Defendants' motion to dismiss is DENIED.

I.BACKGROUND

The following facts are drawn from the Amended Complaint.

The Misfits was a punk rock band formed in 1977. The band is known for pioneering and defining the musical genre of "horror punk," combining the themes, imagery, and narrative of horror fiction with punk rock music. During all relevant times, the Misfits had four members: a guitarist, a drummer, a bass player, and a vocalist. Plaintiff Kaufhold was the Misfits' guitarist from approximately November 1978 to approximately October 1980, and performed under the name Bobby Steele. Plaintiff McGuckin was the Misfits' drummer and performed under the name Arthur Googy from approximately April 1979 to approximately April 1982. McGuckin was the longest serving drummer in the band. Defendant Caiafa joined the band in 1977 as a replacement for the original bass player Diane DiPiazza, and performed under the name Jerry Only.

Glenn Anzalone p/k/a Glenn Danzig ("Danzig"), the band's vocalist, is not a party to this action.

The band's primary recording period was from 1978 to 1982 (Plaintiffs refer to this as the band's "classic period"). Am. Compl. ¶ 18, ECF No. 7. During this period, the band performed under the name the "Misfits" and used certain logos and stylized versions of that name (the "Misfits Marks"), which distinctively identified their services to the public. Although the Misfits disbanded in 1983, classic-period Misfits recordings continue to be sold today. For the past 15 years, Plaintiffs have received, and continue to receive, royalties for their work on the Misfits recordings.

For 12 years after the breakup of the Misfits, between 1983 and 1995, there was no group that toured or recorded as the Misfits. The Amended Complaint alleges that, during these 12 years, Defendant Caiafa publicly rejected his association with the Misfits and the Misfits Marks. The Amended Complaint further alleges that, from 1983 through 1995, Plaintiff Kaufhold was the only member of the band to use the Misfits Marks. Kaufhold alleges that he used the Misfits Marks from 1983 to the present on flyers, posters, and advertisements. From 1988 through 1992, Kaufhold sold the Misfits Live '79 record (which prominently features the Misfits trademark) at shows for his band the Undead. Kaufhold continues to sell the Misfits Live '79 album to this day from his website. Immediately after his departure from the Misfits, and continuing through today, Kaufhold played and recorded Misfits songs in concert, and even recorded a 12 song album of Misfits songs entitled "12 Hits From Hell." Kaufhold also sold Misfits branded t-shirts from the time he exited the band.

In 1994, a settlement agreement was executed between Defendant Caiafa and other former members of the Misfits ("1994 Settlement"). Plaintiffs were not parties to the 1994 Settlement. However, after the settlement was reached, Caiafa allegedly informed Plaintiffs that the parties to the settlement had agreed that each of the former members of the band (including Plaintiffs) co-owned the Misfits Marks, and no member would apply for exclusive rights to use the Misfits Marks. In 1995, a second settlement agreement was executed ("1995 Settlement"), wherein the parties agreed to allow Caiafa to apply for the exclusive right to use the Misfits Marks. Plaintiffs were not parties to the 1995 Settlement, and Caiafa did not tell Plaintiffs about the 1995 Settlement.

In 1996, the Misfits Box Set was released, containing nearly all of the band's classic-period material recorded from 1977 to 1983. The release of the box set in 1996 made the Misfits' complete early catalog widely available for the first time. Also around 1996, Caiafa recruited new band members and began to tour as the Misfits (referred to here as the "new Misfits").*fn1 The new Misfits did a 25th Anniversary Tour and a 30th Anniversary Tour. The new Misfits also released albums in 1997, 1999, and 2003. None of these albums cracked the Billboard Record charts top 100. Defendants Caiafa and Cyclopian sold and continue to sell merchandise with the Misfits Marks.

Beginning in approximately October 2000, without the knowledge of the Plaintiffs, Caiafa and Cyclopian filed five applications with the U.S. Patent and Trademark Office ("PTO") to register the Misfits Marks, three of which have matured into trademark registrations. In applying for registration, Caiafa represented that Cyclopian was the owner of the Marks, and that, to the best of his knowledge and belief, no other person had the right to use the Marks in commerce. The Amended Complaint alleges that, at the time he made those representations, Caiafa knew that Kaufhold had senior rights to the Marks and made those representations with the intent to deceive the PTO.

Plaintiffs assert that they were completely unaware of the trademark applications as well as the exploitation of the Misfits Marks by Defendants. It was not until August of 2009 that Plaintiff McGuckin saw a billboard in New York City for Van's sneakers with the Misfits Marks that he had any indication that the Misfits Marks were being exploited other than in the continued record sales. McGuckin proceeded to research the improper use of the Misfits Marks, notifying Kaufhold of the extent of their use sometime in the early part of 2010. On June 11, 2010, Plaintiffs filed an action against Defendants in the Southern District of New York. See Kaufhold, et al. v. Cyclopian et al., No. 1:10-cv-04588, 2010 WL 5094630, at *2 (S.D.N.Y. Dec. 14, 2010). In an Opinion and Order dated December 14, 2010, the Honorable Denise Cote granted Defendants' motion to dismiss that action, finding that the Southern District lacked personal jurisdiction over Defendants. Id. at *5.

On March 15, 2011, Plaintiffs filed a complaint in this Court. On June 22, 2011, Plaintiffs filed the Amended Complaint at issue here. In the Amended Complaint, Plaintiffs assert three causes of action: (1) trademark infringement under 15 U.S.C. ยง 1125(a); (2) cancellation of Defendants' trademark registrations based on fraudulent procurement; and (3) declaratory judgments that Plaintiffs co-own the Misfits Marks and that Defendants' trademark applications ...


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