9th Cir. Trademark Ruling Favors 'The Great Pretender'

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The United States Court of Appeals for the Ninth Circuit this week in Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. (Case No. 12-16868) reversed a Nevada trial court ruling that barred vocalists from using the name of '50s & '60s powerhouse R & B group, The Platters, without permission.

The three-judge appellate panel reversed and remanded the trial court's injunction in the trademark infringement suit, holding: "the likelihood of irreparable harm must be established--rather than presumed as under prior 9th Circuit precedent--by a plaintiff seeking injunctive relief in the trademark context."

The original Platters, featuring Herb Reed, Tony Williams, Paul Robi, David Lynch and Zola Taylor, churned out numerous hits suitably descriptive of the present litigation, including Only You, I'm Sorry, Helpless, You're Making a Mistake and It Isn't Right.  Band Manager Buck Ram assumed the rights to The Platters name in the late '50s under an entity called Five Platters Inc., the 9th Circuit decision noted, which in 2009 were transferred to the defendant company owned by Larry Marshak.

Lawsuits challenging the ownership rights of The Platters name were brought in California and New York reached opposite conclusions, with the former siding with original band member plaintiffs and the latter concluding Five Platters Inc. ("FPI") was the legitimate trademark holder before the FEMI acquired the rights.

FPI sued Herb Reed in Florida in the '80s and the case settled, with Reed retaining the right to perform under the name Herb Reed and The Platters. After his death, Reed's company was granted an injunction by a Nevada court that agreed FPI's use of The Platters was confusing to consumers eager to see Herb Reed and The Platters.

In overturning the injunction, the 9th Circ. cited two recent Supreme Court decisions that concentrated on the "likelihood of irreparable harm" standard. So much for The Platters' 1959 hit's claim: One in a Million.