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Herb Reed Enters., LLC v. Fla. Entm't Mgmt.

United States Court of Appeals for the Ninth Circuit

March 12, 2013, Argued and Submitted, San Francisco, California; December 2, 2013, Filed

No. 12-16868


 [*1242]  [***2005]   McKEOWN, Circuit Judge:

"The Platters"—the legendary  [**3] name of one of the most successful vocal performing groups of the 1950s—lives on. With 40 singles on the Billboard Hot 100 List, the names of The Platters' hits ironically foreshadowed decades of litigation—"Great Pretender," "Smoke Gets In Your Eyes," "Only You," and "To Each His Own." Larry Marshak and his company Florida Entertainment Management, Inc. (collectively "Marshak") challenge the district court's preliminary injunction in favor of Herb Reed Enterprises ("HRE"), enjoining Marshak from using the "The Platters" mark in connection with any vocal group with narrow exceptions. We consider an issue of first impression in our circuit: whether the likelihood of irreparable harm must be established—rather than presumed, as under prior Ninth Circuit precedent—by a plaintiff seeking injunctive relief in the trademark context. In light of Supreme Court precedent, the answer is yes, and we reverse the district court's order granting the preliminary injunction.


The Platters vocal group was formed in 1953, with Herb Reed as one of its founders. Paul Robi, David Lynch, Zola Taylor, and Tony Williams, though not founders, have come to be recognized as the other "original" band  [**4] members. The group became a "global sensation" during the latter half of the 1950s,2 then broke up in the 1960s as the original members left one by one. After the break up, each member continued to perform under some derivation of the name "The Platters." Marshak v. Reed, No. 96 CV 2292(NG)(MLO), 2001 U.S. Dist. LEXIS 880, 2001  [*1243]  WL 92225, at *4 (E.D.N.Y. and S.D.N.Y. Feb. 1, 2001) ("Marshak I").

Litigation has been the byproduct of the band's dissolution; there have been multiple legal disputes among the original members and their current and former managers over ownership of "The Platters" mark. Much of the litigation stemmed from employment contracts executed in 1956 between the original  [***2006]  members and Five Platters, Inc. ("FPI"), the company belonging to Buck Ram, who became the group's manager in 1954. As part of the contracts, each member assigned to FPI any rights in the name "The Platters" in exchange for shares of FPI stock. Marshak I, 2001 U.S. Dist. LEXIS 880, 2001 WL 92225, at *3. According to Marshak, FPI later transferred its rights to the mark to Live Gold, Inc., which in turn transferred the rights  [**5] to Marshak in 2009. Litigation over the validity of the contracts and ownership of the mark left a trail of conflicting decisions in various jurisdictions, which provide the backdrop for the present controversy. What follows is a brief summary of the tangled web of multi-jurisdictional litigation that spans more than four decades.

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736 F.3d 1239 *; 2013 U.S. App. LEXIS 23938 **; 108 U.S.P.Q.2D (BNA) 2004 ***; 2013 WL 6224288

HERB REED ENTERPRISES, LLC, a Massachusetts company, Plaintiff-counter-defendant - Appellee, v. FLORIDA ENTERTAINMENT MANAGEMENT, INC., a Nevada company; LARRY MARSHAK, Defendants-counter-claimants - Appellants.

Subsequent History: Related proceeding at Herb Reed Enters., LLC v. World Famous Platters Rd. Shows I LLC, 2014 U.S. Dist. LEXIS 22046 (M.D. Fla., Feb. 7, 2014)

Summary judgment granted by, Motion to strike denied by, Motion granted by, On remand at, Summary judgment denied by Herb Reed Enters., LLC v. Fla. Entm't Mgmt., 2014 U.S. Dist. LEXIS 45564 (D. Nev., Mar. 31, 2014)

US Supreme Court certiorari denied by Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc., 135 S. Ct. 57, 190 L. Ed. 2d 31, 2014 U.S. LEXIS 5083 (U.S., Oct. 6, 2014)

Prior History:  [**1] Appeal from the United States District Court for the District of Nevada. D.C. No. 2:12-cv-00560-MMD-GWF. Miranda Du, District Judge, Presiding.

Herb Reed Enters., LLC v. Fla. Entm't Mgmt., 2012 U.S. Dist. LEXIS 102566 (D. Nev., July 24, 2012)

Disposition: REVERSED and REMANDED.


irreparable harm, preliminary injunction, district court, settlement, trademark infringement, injunction, trademark, escape clause, rights, abandonment, triggered, royalties, laches, merits, ownership, permanent injunction, default judgment, infringement, likelihood of success, appeals, irreparable, preclusion, exhausted, eBay

Civil Procedure, Judgments, Preclusion of Judgments, Res Judicata, Estoppel, Collateral Estoppel, Equity, Maxims, General Overview, Defenses, Demurrers & Objections, Affirmative Defenses, Laches, Appeals, Standards of Review, Abuse of Discretion, Trademark Law, Equitable Relief, Injunctions, Preliminary Injunctions, Grounds for Injunctions, Remedies, Preliminary & Temporary Injunctions, Causes of Action Involving Trademarks, Infringement Actions, Burdens of Proof, Abandonment, Business & Corporate Compliance, Trademark Law, Intentional Abandonment, Intentional Abandonment, Intentional Nonuse, Irreparable Harm, Patent Law, Injunctions, Permanent Injunctions