Cameo Clips

Band Name Disputes/Proper Venue

New York federal court was the proper venue for hearing a dispute over rights to the name of the 1960s Philadelphia soul group The Intruders, the U.S. District Court for the Southern District of New York held. Mears v. Montgomery, 02-0407. In 1994, group founder Eugene Daughtry transferred the rights in “The Intruders” to his brother Fred and original member Phillip Terry as joint tenants with right of survivorship. From 1998, plaintiff Ervin Mears, a New Jersey resident, shared management responsibilities for an Intruders group with Fred. After Fred died, Mears continued to manage the band. He filed a federal trademark infringement suit in Manhattan federal court against the Pennsylvania-based Terry, Glen Montgomery and group of Intruders that Montgomery led. The New York federal court denied the defendants' motion to dismiss for improper venue. According to the court: “[W]hile plaintiff has made general reference to allegedly infringing conduct by defendants that occurred outside of this District … the majority of the specific acts for which plaintiff seeks relief ' ie, the Montgomery Group's appearances at the Apollo and Beacon Theatres, defendants' counsel's communications with … [concert promoter] Universal Attractions' [Manhattan office and Universal's] cancellation of its contract with the Mears Group – occurred in New York City. … [T]o transfer venue would merely shift the burden of inconvenience from defendants' witnesses to plaintiff's witnesses rather than alleviating the burden altogether.” The district court went on to grant Mears' request that Montgomery's federal service mark registration of “The Intruders” be cancelled because “Montgomery knowingly misstated the ownership of the Mark, and defendants have failed to present any evidence that creates a material dispute as to this fact.”

A New York federal court lacked personal jurisdiction over an Ohio musician who licensed use of the name “The Stain” from the New York-based band Staind, the U.S. District Court for the Southern District of New York held. Tradem Inc. v. Stainbrook, 03-8980. Ohio-based Jon Stainbrook had assigned his registered trademark in “The Stain” to Staind, then licensed back the right to use the name in several mid-western states. But Staind sent Stainbrook a termination notice after Stainbrook allegedly failed to supply the band, per the name licensing agreement, with materials on which Stainbrook used The Stain. Staind then filed suit in Manhattan federal court for a declaratory judgment, for federal Lanham Act relief, and for unfair competition and breach of contract under New York law. Dismissing, the district court noted: “Plaintiff does not suggest that defendant or his Ohio attorney were ever physically present in New York during the negotiations for the 1999 assignment and license agreements. Moreover, plaintiff admits that it reached out to defendant in Ohio for purposes of obtaining the assignment. … Plaintiff makes much of defendant's attorney's statement in one cover letter that his client was 'anxious' to have the agreement finalized. However, the fact that defendant was anxious to consummate a deal which plaintiff had proposed does little to show that the deal was negotiated in New York. … Plaintiff wrote the [trademark assignment] check to defendant c/o plaintiff's New York attorney. However, plaintiff does not allege that defendant was actually paid in New York or that he deposited the check in New York, rather, it is clear from the face of the complaint that plaintiff's attorney sent the check to defendant in Ohio. … Lastly, plaintiff relies on the 'cease and desist' letter defendant sent [Staind claiming the band had violated oral promises made to Stainbrook and the scope of the trademark assignment] and alleged phone calls from defendant to plaintiff, demanding $6 million to avoid suit on the claims set out in the letter. However, it is clear that sending a 'cease and desist' letter into the forum is not sufficient to establish the minimum contacts necessary for personal jurisdiction.”

Band Name Disputes/Proper Venue

New York federal court was the proper venue for hearing a dispute over rights to the name of the 1960s Philadelphia soul group The Intruders, the U.S. District Court for the Southern District of New York held. Mears v. Montgomery, 02-0407. In 1994, group founder Eugene Daughtry transferred the rights in “The Intruders” to his brother Fred and original member Phillip Terry as joint tenants with right of survivorship. From 1998, plaintiff Ervin Mears, a New Jersey resident, shared management responsibilities for an Intruders group with Fred. After Fred died, Mears continued to manage the band. He filed a federal trademark infringement suit in Manhattan federal court against the Pennsylvania-based Terry, Glen Montgomery and group of Intruders that Montgomery led. The New York federal court denied the defendants' motion to dismiss for improper venue. According to the court: “[W]hile plaintiff has made general reference to allegedly infringing conduct by defendants that occurred outside of this District … the majority of the specific acts for which plaintiff seeks relief ' ie, the Montgomery Group's appearances at the Apollo and Beacon Theatres, defendants' counsel's communications with … [concert promoter] Universal Attractions' [Manhattan office and Universal's] cancellation of its contract with the Mears Group – occurred in New York City. … [T]o transfer venue would merely shift the burden of inconvenience from defendants' witnesses to plaintiff's witnesses rather than alleviating the burden altogether.” The district court went on to grant Mears' request that Montgomery's federal service mark registration of “The Intruders” be cancelled because “Montgomery knowingly misstated the ownership of the Mark, and defendants have failed to present any evidence that creates a material dispute as to this fact.”

A New York federal court lacked personal jurisdiction over an Ohio musician who licensed use of the name “The Stain” from the New York-based band Staind, the U.S. District Court for the Southern District of New York held. Tradem Inc. v. Stainbrook, 03-8980. Ohio-based Jon Stainbrook had assigned his registered trademark in “The Stain” to Staind, then licensed back the right to use the name in several mid-western states. But Staind sent Stainbrook a termination notice after Stainbrook allegedly failed to supply the band, per the name licensing agreement, with materials on which Stainbrook used The Stain. Staind then filed suit in Manhattan federal court for a declaratory judgment, for federal Lanham Act relief, and for unfair competition and breach of contract under New York law. Dismissing, the district court noted: “Plaintiff does not suggest that defendant or his Ohio attorney were ever physically present in New York during the negotiations for the 1999 assignment and license agreements. Moreover, plaintiff admits that it reached out to defendant in Ohio for purposes of obtaining the assignment. … Plaintiff makes much of defendant's attorney's statement in one cover letter that his client was 'anxious' to have the agreement finalized. However, the fact that defendant was anxious to consummate a deal which plaintiff had proposed does little to show that the deal was negotiated in New York. … Plaintiff wrote the [trademark assignment] check to defendant c/o plaintiff's New York attorney. However, plaintiff does not allege that defendant was actually paid in New York or that he deposited the check in New York, rather, it is clear from the face of the complaint that plaintiff's attorney sent the check to defendant in Ohio. … Lastly, plaintiff relies on the 'cease and desist' letter defendant sent [Staind claiming the band had violated oral promises made to Stainbrook and the scope of the trademark assignment] and alleged phone calls from defendant to plaintiff, demanding $6 million to avoid suit on the claims set out in the letter. However, it is clear that sending a 'cease and desist' letter into the forum is not sufficient to establish the minimum contacts necessary for personal jurisdiction.”