Herb Reed Enterprises, Inc. v. Monroe Powell’s Platters, LLC, No. 2:11-cv-2010 (D. Nev. June 17, 2014) [click for opinion]

Herb Reed, who performed as “Herb Reed and The Platters,” and his company sued Monroe Powell for violation of the Lanham Act, 15 U.S.C. § 1125, for performing under the name of “The Platters Featuring Monroe Powell.”  Although the only registered mark with the Patent and Trademark Office was “Herb Reed and The Platters,” the court found that Plaintiffs also had valid common law ownership in the mark “The Platters” because Reed founded the group and he is the only person who has remained and performed with it since its inception.  As such, he retains the rights to use the mark “The Platters,” to the exclusion of other individuals.

After finding that there was valid ownership and that the mark “The Platters Featuring Monroe Powell” is likely to cause confusion, the court decided to grant a permanent injunction—not an outright ban on Defendant’s using the mark, but only requiring it to identify itself as a “tribute” or “salute” to The Platters.  The court noted that public interest would be served by the permanent injunction since consumers could distinguish between groups all claiming to be The Platters.

The court also awarded damages for Defendant’s domestic and international ticket sales.  The court awarded only $15,000 of the $300,000 requested domestic sales damages.  Because there was ongoing litigation as to the rights to use the mark “The Platters” until summary judgment and permanent injunction was entered in another case in June of 2011, the court only calculated damages after that date. 

As to the international sales damages, the court found the Lanham Act to apply extraterritorially and granted the full amount requested: $45,000. The court held that the Lanham Act applies extraterritorially to conduct in a foreign country if (1) the alleged violations “create some effect on American foreign commerce,” (2) that effect is “sufficiently great to present a cognizable injury to the plaintiffs under the Lanham Act,” and (3) “the interests of and links to American foreign commerce” are “sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority.”  The court ruled that “[t]he first two criteria may be met even where all of the challenged transactions occurred abroad, and where injury would seem to be limited to the deception of consumers abroad, as long as there is monetary injury in the United States to an American plaintiff.”

Although the live performances occurred in Australia, because Defendant used U.S. and Canadian booking agents, and Plaintiffs’ ability to book internationally has been impacted, the court found there was monetary injury in the United States to an American plaintiff, and that Defendant failed to identify any potential conflict with Australian law or policy if the Lanham Act were to apply extraterritorially.

Andray Napolez of the Chicago office contributed to this summary.