February 06, 2012 7:13pm PT by Eriq Gardner
Judge Forbids Musician's Use of 'The Platters' Name After 40 Years of Lawsuits
In their heyday in the 1950s and 1960s, The Platters had a number of chart-topping hits including "Only You," "Smoke Gets In Your Eyes," and of course, "The Great Pretender," which spent 11 weeks as the biggest song in America.
Now, after four decades of lawsuits, a Nevade federal judge has made a preliminary determination on who the great pretender might be, ordering a singer who performed with the group in the 1970s to stop promoting his new group as "The Platters."
When bands split up and reform with new members, custody of the band name often becomes sticky. The highest-profile example here is The Beach Boys, whose different formations once led to a $4 million lawsuit over which of the band members had trademark rights and could perform with the moniker. The case was settled.
The Platters might not be quite as famous as The Beach Boys, but they were also quite successful at the dawn of the rock and roll era, and could hold the record for longest-running ongoing litigation over rights to use a band name. The various lawsuits stretch as far back as the early 1970s.
In 1969, Herb Reed became the last original member of the group to leave the band. The following year, Five Platters Inc (FPI)., set up by the original band to execute their rights including the band's name, hired Monroe Powell to perform with a new Platters group.
Thereafter, disputes broke out among the original band members about who would get to use the Platters' name. Reviewing decades worth of litigation, Nevada federal judge Philip Pro cutely summarized the outcome off all this litigation in his latest decision last week. "While some courts have held that one party has superior rights to the other, this Court has held that 'Only You,' Herb Reed, have exclusive rights to the mark," wrote Pro.
The decision emanates from a lawsuit brought by Reed's company in December over Powell's continuing to perform as The Platters.
Powell defended his use by saying that he had gained license to use the mark by FPI's consent and by the resolution of a separate lawsuit nearly 25 years earlier. At the time, FPI and Reed had settled a lawsuit with each other by agreeing that neither would contest the other's use. But the settlement agreement also contained an "escape clause" should a court later find that FPI had no rights on "The Platters."
That's what happened in a 1999 decision at the Ninth Circuit Court of Appeals.
In the decision last week, Judge Pro has determined that Reed has established a likelihood of success on his claim that he acquired rights to The Platters through prior use, that he was no longer barred from objecting to Powell's use, that Powell hadn't established that FPI had gained ownership to the mark, and that "The Platters featuring Monroe Powell" is confusingly similar to "The Platters."
As a result, Judge Pro issued a preliminary injuction against Powell. However, the judge said that Powell may use the mark if the word, "tribute" or "revue" is included in the band name. Powell can also continue performing as The Platters if he gets written permission from Reed. And of course, there could be a trial in this case to determine the great pretender.
Here's the latest decision in the most epic battle over a band name ever.