C.A. No. 12-11419-FDS, 2013 WL 1000422 (D. Mass. March 12, 2013) (Saylor, D.J.) [Preliminary Injunction]

This case concerns a dispute over rights to, among other trademarks, the name J. GEILS BAND. Defendants moved to dismiss the complaint, asserting that it failed to state a claim upon which relief can be granted. Defendants also argue that, because plaintiffs’ Lanham Act claims fail, this Court lacks subject matter jurisdiction. The Court (Saylor, D.J.) denied the motion.

Plaintiffs John W. Geils (“Geils”) and his record label, Francesca Records, initiated this suit against the remaining members of The J. Geils Band, the band’s manager, and various entities related to the band’s reunion performances. Plaintiffs contend that they own the trademarks to GEILS, J. GEILS, JAY GEILS, and J. GEILS BAND. Defendants contest that claim, instead contending that they own the marks as a result of a 1982 agreement.

The Court’s opinion devotes a significant amount of time to the history of The J. Geils Band, the formation of a corporation named T & A Research and Development Corp. (“T&A”), and a 1982 shareholders agreement for T&A. Among other things, the shareholder’s agreement purports to confer control over the name J. GEILS BAND and J. GEILS to Peter Wolf and Seth Justman and to prohibit Geils from using the name if he leaves the group. Geils alleges that he was not allowed to consult with an attorney, not given the opportunity to negotiate the terms, and, ultimately, was forced to accept this shareholder’s agreement. 

At this stage of the litigation, the question before the Court was not who owns the marks, but only whether Plaintiffs’ complaint sufficiently states a claim for relief. To answer this question, the Court reviewed each of the four categories of claims asserted—declaratory judgments as to trademarks, declaratory judgments as to the shareholder’s agreement, validity of T&A, and remaining state law claims.

The threshold question with respect to the request for declaratory judgments as to trademark ownership and infringement was whether there is an actual “case or controversy.” Applying the standard articulated in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), the Court found that—given the competing use of the marks and the parties’ concurrent attempts to protect it—a controversy is immediate and real. The Court also found that Plaintiffs alleged sufficient facts to support a finding that the marks had been first used in 1967 by Geils and, therefore, he may have a claim to ownership. Although Defendants counter that Geils transferred any ownership interest he had in the marks via the 1982 shareholders’ agreement, the Court found that a determination on that factual and legal issue—especially given Geils’ claims regarding the enforceability of that agreement—could not be decided at this early stage. Moreover, Geils’ trademark infringement claims survived because, if Geils prevails on his ownership claim, Defendants’ use of the mark may be confusing in that audiences would expect Geils to be part of the performance.

The Court also allowed Plaintiffs to proceed on their request for declaratory judgment concerning the validity and applicability of the 1982 shareholder’s agreement. First, the Court rejected Defendants’ arguments that the three year statute of limitations for contract claims time barred Plaintiffs’ request. The Court characterized the request as essentially a defense to Defendants’ arguments that the shareholder’s agreement is an affirmative defense to trademark infringement. “It is indeed a well-established principle that parties are generally permitted to raise defenses that, if raised as affirmative claims, would be time-barred.” Because Plaintiffs are not seeking any affirmative relief with respect to this claim and because the Plaintiffs’ request for declaratory judgment is in many respects equitable, the Court could not conclude that the statute of limitations bars Plaintiffs’ claims. Second, the Court refused to apply the heightened pleading standard of Fed. R. Civ. P. 9(b), which by its terms applies to claims of “fraud or mistake,” to Plaintiffs’ allegations of duress or coercion in the context of contract formation. But even if the particularity requirement did apply, Plaintiffs’ met that requirement here by alleging that the duress or coercion involved pressure put on Geils by other band members and their attorneys after Geils expressed a desire to leave the band. The operative conversations are alleged to have taken placed around September 10, 1982 in Boston. Accordingly the “who, what, when and where details” of the alleged conduct were pled.  

Similarly, the Court held that Plaintiffs’ challenge to the validity of T&A as a valid corporation and the remaining state court claims were sufficiently pled.