New Jersey's Truth-in-Music Law Challenged

Vocal groups from the 1950s don't just fade away ' they splinter into separate acts that go on to fight over which is a true descendant of the original. In the U.S. and Canada, there are no fewer than 10 groups performing as The Drifters, or some minor variation. To help fans separate bona fide artists from pretenders, New Jersey and 26 other states have passed the “Truth in Music Act,” forbidding performers to advertise themselves as affiliated with a recording group unless they demonstrate the connection by specified means.

Lanham Act Challenge

Now, groups claiming to be legitimate descendants of The Drifters, The Platters and The Coasters are fighting back. In a suit in federal court in Newark, they claim New Jersey's Truth in Music Act, N.J.S.A. 2A:32B-1, runs afoul of the federal Lanham Act that protects registered and distinctive unregistered trademarks with equal force. The state responds that the statute is not pre-empted by the Lanham Act but is “a logical extension” of its provisions.

The conflict heated up in July of 2007, shortly after New Jersey enacted its statute. Attorney General Anne Milgram launched an investigation of a scheduled 10-night engagement by the 1950s groups' modern incarnations ' the Cornell Gunter Coasters, the Elsbeary Hobbs Drifters and the Platters ' at the Hilton Casino Resort in Atlantic City.

Served with a subpoena, the Hilton discontinued advertising and ticket sales, but the shows went on, with most of the tickets given to customers of the Hilton and with the acts introduced as a “tribute” or “salute.” The next month, the lawyer for the groups' management, William Charron of New York's Pryor Cashman, supplied the attorney general with documents purportedly showing that the groups were authorized to associate themselves with the original Coasters, Drifters and Platters. The present groups are managed by Singer Management Consultants and Live Gold Operations Inc. of New York.

On Aug. 16, 2007, before New Jersey expressed any view about the validity of the documents, Charron filed suit, seeking temporary and permanent restraints against enforcement of the statute. The same day, Judge Dickinson Debevoise of the U.S. District Court for the District of New Jersey granted Charron's application for a temporary restraining order.

Groups Stake Their Claim

The suit, Singer Management Consultants v. Milgram, 2:07cv-03929, claims a raft of constitutional violations: the First Amendment, the Supremacy Clause, the Taking Clause and the Equal Protection Clause. The plaintiffs seek a permanent injunction against enforcement of the act and a declaratory judgment establishing their rights under it. The state, meanwhile, maintains that it has not reached any conclusion about the plaintiffs' rights to use the Platters, Coasters and Drifters names.

This case is the first challenge to the state's Truth in Music Act, which sets forth five different ways in which a performing group may show its connection to a recording group, namely:

1. The advertised performers own a federal service mark in the band name;
2. At least one member of the advertised group was a member of the original band and has the unabandoned legal right to its name or trademark;
3. The advertised group is clearly billed as a tribute or salute;
4. The ad does not relate to any performance taking place in New Jersey; or
5. The performance is expressly authorized by the original group.

The plaintiffs are basing their ties to the original 1950s groups on the second of the five criteria.

The Platters formed in Los Angeles in 1953, and enjoyed number one hits with “The Great Pretender” and “Twilight Time,” even as the group saw numerous personnel changes. Live Gold says it has the right to the Platters name because the present group includes two singers, Sonia Revels and Tyrone Sweet, who were part of an earlier group that recorded as The Platters. Live Gold also says it bought an exclusive license to the unregistered mark “The Platters” in 2006 from an entity called Five Platters Inc., which bought it in 1956 from the group's five original performers.

The Coasters, who were also from Los Angeles and had their best-known hits with “Yakety Yak” and “Charlie Brown,” saw personnel changes as well. Cornell Gunter joined in 1957 and Live Gold claims entitlement to use the name “Cornell Gunter Coasters” through a 2005 sublicense agreement with his estate. The estate in turn was granted the right to use the name “Cornell Gunter's Coasters” in a 2002 settlement of litigation against Carl Gardner, an original member of the group who owns the registered service mark “The Coasters.”

As for The Drifters, Singer Management reached a licensing agreement in 2001 with the estate of Elsbeary Hobbs, who sang with the group in recordings of “There Goes My Baby,” “This Magic Moment” and “Save the Last Dance for Me” from 1958-60. The Hobbs estate in turn won the right to use the name “The Elsbeary Hobbs Drifters” in a 1999 settlement of litigation with The Drifters Inc., holder of trademark rights for the group, the plaintiffs state.

In separate rulings over the past year over use of the Elsbeary Hobbs Drifters name, Debevoise found Singer Management partner Larry Marshak in contempt for violating an order issued in Marshak v. Treadwell, 58 F.Supp.2d 551 (D.N.J. 1999), that forbade him from using any name confusingly similar to “The Drifters” to promote any musical performance. Debevoise ordered an accounting of profits Marshak derived from that name and payment of treble profits to the owner of the Drifters name. Marshak v. Treadwell, 95-3794 (DRD). That case is now pending before the Third Circuit Court of Appeals.

Legitimate Interest

The NJ Attorney General says the Truth in Music Act aims to reduce confusion in the entertainment market by prohibiting misrepresentations by performing groups. In court papers, the state disputes the plaintiff's claim that the Act creates “an arbitrary and irrational” distinction between groups holding registered trademarks and those holding unregistered marks. Groups with unregistered marks, absent some extra involvement by the original artists, may still use a name such as “The Platters” in their promotions, as long as it is called a tribute or salute to that group, the state says in court papers.

Under equal-protection analysis, the state says that this latter requirement easily satisfies the rational balance test because it is rationally tied to a legitimate state interest ' ensuring consumers are fully informed when making entertainment choices. But the plaintiffs counter that under the state's reasoning, its rights would expire after the last of the 1950s performers dies off. The plaintiffs also object to the use of the terms “tribute” and “salute” on its performances “force plaintiffs to shed their distinctiveness and consumer goodwill, and to accept instead generic, unrecognizable and unprotectable designations.”

The case is in discovery. Progress may have been slowed by the plaintiffs' switch of counsel. Charron and co-counsel Jeffrey Schreiber, of Meister, Seeling and Fein in East Brunswick, NJ, were permitted to withdraw from the case last February based upon assertions that the clients had not paid their bills and that “irreconcilable differences” had arisen between the clients and attorneys. George Wright, who heads a Hackensack, NJ, firm, took over as plaintiffs' counsel.

Vocal groups from the 1950s don't just fade away ' they splinter into separate acts that go on to fight over which is a true descendant of the original. In the U.S. and Canada, there are no fewer than 10 groups performing as The Drifters, or some minor variation. To help fans separate bona fide artists from pretenders, New Jersey and 26 other states have passed the “Truth in Music Act,” forbidding performers to advertise themselves as affiliated with a recording group unless they demonstrate the connection by specified means.

Lanham Act Challenge

Now, groups claiming to be legitimate descendants of The Drifters, The Platters and The Coasters are fighting back. In a suit in federal court in Newark, they claim New Jersey's Truth in Music Act, N.J.S.A. 2A:32B-1, runs afoul of the federal Lanham Act that protects registered and distinctive unregistered trademarks with equal force. The state responds that the statute is not pre-empted by the Lanham Act but is “a logical extension” of its provisions.

The conflict heated up in July of 2007, shortly after New Jersey enacted its statute. Attorney General Anne Milgram launched an investigation of a scheduled 10-night engagement by the 1950s groups' modern incarnations ' the Cornell Gunter Coasters, the Elsbeary Hobbs Drifters and the Platters ' at the Hilton Casino Resort in Atlantic City.

Served with a subpoena, the Hilton discontinued advertising and ticket sales, but the shows went on, with most of the tickets given to customers of the Hilton and with the acts introduced as a “tribute” or “salute.” The next month, the lawyer for the groups' management, William Charron of New York's Pryor Cashman, supplied the attorney general with documents purportedly showing that the groups were authorized to associate themselves with the original Coasters, Drifters and Platters. The present groups are managed by Singer Management Consultants and Live Gold Operations Inc. of New York.

On Aug. 16, 2007, before New Jersey expressed any view about the validity of the documents, Charron filed suit, seeking temporary and permanent restraints against enforcement of the statute. The same day, Judge Dickinson Debevoise of the U.S. District Court for the District of New Jersey granted Charron's application for a temporary restraining order.

Groups Stake Their Claim

The suit, Singer Management Consultants v. Milgram, 2:07cv-03929, claims a raft of constitutional violations: the First Amendment, the Supremacy Clause, the Taking Clause and the Equal Protection Clause. The plaintiffs seek a permanent injunction against enforcement of the act and a declaratory judgment establishing their rights under it. The state, meanwhile, maintains that it has not reached any conclusion about the plaintiffs' rights to use the Platters, Coasters and Drifters names.

This case is the first challenge to the state's Truth in Music Act, which sets forth five different ways in which a performing group may show its connection to a recording group, namely:

1. The advertised performers own a federal service mark in the band name;
2. At least one member of the advertised group was a member of the original band and has the unabandoned legal right to its name or trademark;
3. The advertised group is clearly billed as a tribute or salute;
4. The ad does not relate to any performance taking place in New Jersey; or
5. The performance is expressly authorized by the original group.

The plaintiffs are basing their ties to the original 1950s groups on the second of the five criteria.

The Platters formed in Los Angeles in 1953, and enjoyed number one hits with “The Great Pretender” and “Twilight Time,” even as the group saw numerous personnel changes. Live Gold says it has the right to the Platters name because the present group includes two singers, Sonia Revels and Tyrone Sweet, who were part of an earlier group that recorded as The Platters. Live Gold also says it bought an exclusive license to the unregistered mark “The Platters” in 2006 from an entity called Five Platters Inc., which bought it in 1956 from the group's five original performers.

The Coasters, who were also from Los Angeles and had their best-known hits with “Yakety Yak” and “Charlie Brown,” saw personnel changes as well. Cornell Gunter joined in 1957 and Live Gold claims entitlement to use the name “Cornell Gunter Coasters” through a 2005 sublicense agreement with his estate. The estate in turn was granted the right to use the name “Cornell Gunter's Coasters” in a 2002 settlement of litigation against Carl Gardner, an original member of the group who owns the registered service mark “The Coasters.”

As for The Drifters, Singer Management reached a licensing agreement in 2001 with the estate of Elsbeary Hobbs, who sang with the group in recordings of “There Goes My Baby,” “This Magic Moment” and “Save the Last Dance for Me” from 1958-60. The Hobbs estate in turn won the right to use the name “The Elsbeary Hobbs Drifters” in a 1999 settlement of litigation with The Drifters Inc., holder of trademark rights for the group, the plaintiffs state.

In separate rulings over the past year over use of the Elsbeary Hobbs Drifters name, Debevoise found Singer Management partner Larry Marshak in contempt for violating an order issued in Marshak v. Treadwell , 58 F.Supp.2d 551 (D.N.J. 1999), that forbade him from using any name confusingly similar to “The Drifters” to promote any musical performance. Debevoise ordered an accounting of profits Marshak derived from that name and payment of treble profits to the owner of the Drifters name. Marshak v. Treadwell, 95-3794 (DRD). That case is now pending before the Third Circuit Court of Appeals.

Legitimate Interest

The NJ Attorney General says the Truth in Music Act aims to reduce confusion in the entertainment market by prohibiting misrepresentations by performing groups. In court papers, the state disputes the plaintiff's claim that the Act creates “an arbitrary and irrational” distinction between groups holding registered trademarks and those holding unregistered marks. Groups with unregistered marks, absent some extra involvement by the original artists, may still use a name such as “The Platters” in their promotions, as long as it is called a tribute or salute to that group, the state says in court papers.

Under equal-protection analysis, the state says that this latter requirement easily satisfies the rational balance test because it is rationally tied to a legitimate state interest ' ensuring consumers are fully informed when making entertainment choices. But the plaintiffs counter that under the state's reasoning, its rights would expire after the last of the 1950s performers dies off. The plaintiffs also object to the use of the terms “tribute” and “salute” on its performances “force plaintiffs to shed their distinctiveness and consumer goodwill, and to accept instead generic, unrecognizable and unprotectable designations.”

The case is in discovery. Progress may have been slowed by the plaintiffs' switch of counsel. Charron and co-counsel Jeffrey Schreiber, of Meister, Seeling and Fein in East Brunswick, NJ, were permitted to withdraw from the case last February based upon assertions that the clients had not paid their bills and that “irreconcilable differences” had arisen between the clients and attorneys. George Wright, who heads a Hackensack, NJ, firm, took over as plaintiffs' counsel.