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Marshak v. Treadwell

United States Court of Appeals for the Third Circuit

March 10, 2009, Argued; July 2, 2009, Opinion Filed

No. 08-1771, No. 08-1836, No. 08-1837

Opinion

 [***1290]  [*481]   FUENTES, Circuit Judge.

For over a decade, Faye Treadwell ("Treadwell"), widow of the late music executive George Treadwell, and Larry Marshak ("Marshak"), a promoter of various doo-wop groups, have fought tooth and nail over the rights to use the trademark of "The Drifters," the legendary singing group.  [**2] In the late nineties, Marshak sued Treadwell for infringement of a federally registered mark for The Drifters that Marshak had obtained in 1978. Treadwell  [*482]  counterclaimed to cancel the registration, arguing that the mark had been procured by fraud, and that Marshak was infringing on Treadwell's senior common-law rights. In August 1998, a jury issued a split verdict: it found that Marshak had procured his mark by fraud, but that Treadwell had abandoned her common law rights to the mark through inaction. However, approximately one year after the jury verdict, Judge Politan granted judgment as a matter of law for Treadwell. Marshak v. Treadwell, 58 F. Supp. 2d 551 (D.N.J. 1999). Judge Politan agreed with the jury that Marshak had made misrepresentations to the Patent and Trademark Office, but determined that the mark had not been abandoned, as the music of The Drifters was still played on the radio and sold in stores. Marshak appealed Judge Politan's decision and we affirmed. Marshak v. Treadwell, 240 F.3d 184 (3d Cir. 2001).

The case now before us focuses on the breadth of the injunction and efficacy of the remedies that were issued along with Judge Politan's ruling. Judge Politan enjoined  [**3] Marshak [***1291]  and his company from marketing The Drifters anywhere -- not On Broadway, not Up On the Roof, and not Under the Boardwalk -- and ordered a full accounting of profits. In the years that followed, however, various family members and associates of Marshak picked up where Marshak left off, and began again promoting The Drifters, just as Marshak had. Treadwell, thinking that these actions were not Some Kind of Wonderful, thus brought the instant motion for contempt, arguing that the Politan injunction applied to Marshak's associates as well as to Marshak. After a lengthy hearing, the District Court found that Marshak and his associates were in contempt of the Politan injunction, but limited Treadwell's remedies to an award of attorneys' fees. Both sides then appealed: Marshak and his associates appealed the merits of the decision, while Treadwell challenged the paucity of the remedies.

For the reasons that follow, we affirm in part and reverse and remand in part.

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595 F.3d 478 *; 2009 U.S. App. LEXIS 14605 **; 91 U.S.P.Q.2D (BNA) 1289 ***

LARRY MARSHAK v. FAYE TREADWELL; TREADWELL'S DRIFTERS, INC.; THE DRIFTERS, INC., Appellants, LARRY MARSHAK, v. FAYE TREADWELL; TREADWELL'S DRIFTERS, INC.; THE DRIFTERS, INC., LOWELL B. DAVIS, Appellant, LARRY MARSHAK v. FAYE TREADWELL; TREADWELL'S DRIFTERS, INC.; THE DRIFTERS, INC., LARRY MARSHAK; ANDREA MARSHAK; PAULA MARSHAK; CHARLES MEHLICH; BARRY SINGER; DCPM, INC.; LIVE GOLD OPERATIONS INC; CAL CAP LTD; BARRY SINGER; SINGER MANAGEMENT CONSULTANTS, INC.; DAVE REVELS, Appellants.

Subsequent History: On remand at, Costs and fees proceeding at, Motion denied by Marshak v. Treadwell, 2010 U.S. Dist. LEXIS 9407 (D.N.J., Feb. 4, 2010)

Prior History:  [**1] Appeal from the Order of the United States District Court for the District of New Jersey. (No. 95-cv-3794). District Judge: Honorable Dickinson R. Debevoise.

Marshak v. Treadwell, 2007 U.S. Dist. LEXIS 66622 (D.N.J., Sept. 7, 2007)Marshak v. Treadwell, 2008 U.S. Dist. LEXIS 10567 (D.N.J., Feb. 13, 2008)

CORE TERMS

injunction, contempt, district court, accounting, infringement, remedies, rights, attorney's fees, associates, non-party, parties, profits, contempt proceeding, employees, Reconsideration, promotion, trademark, violating, Supplementary, notice, hold in contempt, continuity, successor, enjoined, concert, reasons, civil contempt, court order, proceedings, dissolved

Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Sanctions, Contempt, Civil Contempt, Remedies, Injunctions, Contempt, General Overview, Clearly Erroneous Review, Mergers & Acquisitions Law, Liabilities & Rights of Successors, Successor Liability Doctrine, Mere Continuation, Trademark Law, Infringement Actions, Equitable Relief, Equitable Accountings, Damages, Types of Damages, Profits, Defenses, Demurrers & Objections, Affirmative Defenses, Defenses, Defenses to Incontestability, Laches