IP Law Daily, TOP STORY—S.D.N.Y.: Good Lovin’ (Gone Bad): Former member of The Rascals fails in bid to assert rights in band name, (Jan 7, 2022)

By Matthew Hersh, J.D.

The vocalist for the popular 1960s rock band abandoned the name by not using it for more than 40 years.

A former member of a popular musical group could not prevent two other members of the band from touring under the band’s name, the federal district court in Manhattan has held. The court, dismissing claims made by a former vocalist for the 1960s rock band The Rascals, held that the touring members were not engaging in deceptive conduct and that the former singer had abandoned his claim to the name by making no use of it in over 40 years (Beata Music LLC v. Danelli, January 6, 2022, Koeltl, J.).

The Rascals were a four-piece rock band that achieved wide popularity in the 1960s for songs such as Groovin’, People Got to Be Free, and, of course, the ubiquitous Good Lovin’. The Rascals consisted of Felix Cavaliere on vocals and organ, Eddie Brigati on vocals and tambourine, Gene Cornish on guitar, and Dino Danelli on drums. The band broke up in 1970, though they reunited once in 2012 and 2013 for a series of shows as well as an ill-fated musical. In addition, different subsets of the four have occasionally toured under the name The Rascals or a variant of it, such as The New Rascals or The Young Rascals.

In this lawsuit, Cornish and Cavaliere (acting through their company, Beata Music, LLC) sued Brigati and Danelli to prevent them from using the Rascals mark in live music performances and merchandise sales. Brigati, in turn, counterclaimed for a declaration that all members of The Rascals collectively are the owners of the RASCALS and YOUNG RASCALS marks, that Cavaliere and Cornish have no right to register the RASCALS mark, and that pursuant to two prior settlement agreements between some of the parties, at least three members of the band are required to consent to any performance as The Rascals. Brigati also sought damages for breach of the earlier settlement agreements, as well for claims of claims for unfair competition, unjust enrichment, and false designation of origin. (Danelli also asserted similar counterclaims, but then abandoned the litigation).

Cornish and Cavaliere moved for summary judgment on Brigati’s claims, leading to this opinion.

Breach of contract. The court dismissed Brigati’s breach of contract claims. The claims were based on two agreements in the early 1990s. One was a settlement agreement in 1990 that addressed how Danelli, Cornish, and Cavaliere could use The Rascals name. The other was a settlement agreement in 1992 that set out procedures for the allocation of proceeds from the sale of Rascals recordings. The court gave several reasons for dismissing the breach of contract claims. First, the court noted, Brigati had failed to provide any calculation of his alleged damages from the breaches, despite being required to in connection with Rule 26 disclosures. Thus, dismissal was warranted as a sanction alone. Moreover, the court noted, neither contract could benefit Brigati. As to the 1990 agreement, Brigati was not a party to it nor named in it—and as he had not performed with the band for 20 years at the time, there was no reason to think he was intended to be a third party beneficiary of it. As to the 1992 agreement, it did not address live performances, so it also would not help Brigati here.

Trademark claims. The court also denied Brigati’s trademark claims, finding a wide range of reasons to do so.

First, the court held Brigati had abandoned any interest in the RASCALS mark. Under Second Circuit law, abandonment of a mark requires both non-use of the mark by the legal owner and a lack of intent to resume use in the reasonably foreseeable future. In this case, Brigati left the band in 1970 and could not point to any use of the mark between then and the year 2012, when the group briefly reunited. For example, the court noted, Brigati did not participate in a 1988 performance to celebrate the 40th anniversary of Atlantic Records, and he sat by as other members toured under their own versions of the Rascals name on several other occasions. Nor was he a party to the 1990 settlement over live touring proceeds. And for the same reasons, of course, Brigati could not establish any common law ownership of the mark.

Second, the court noted, even if Brigati still had an ownership interest in the mark, he failed to show a likelihood of confusion. Brigati alleged that promotional materials for the 2018 tour of a group consisting of Cavaliere and Cornish used his image and likeness to promote the tour. But the promotional materials that were displayed to the public prominently featured the name of the touring group as “Felix Cavaliere & Gene Cornish’s Rascals.” Thus, there was no suggestion that the tour was being carried out by the entire group. Moreover, the court observed, the promotional materials did not indicate that Brigati would be performing with the group: the name of each performer was listed in the advertisements, and venues were explicitly instructed that the tour was not a Rascals reunion. Additionally, the court noted, “the public's expectations would have been informed by the fact that Brigati had not performed as a member of The Rascals after 1970,” with the exception of the single musical in 2012-2013.

Third, the court noted, any use that Cavaliere and Cornish made of Brigati’s likeness or voice in the promotional materials for the 2018 tour constituted fair use. This was for several reasons. For one, the promotional materials’ use of Rascals music and album artwork—and concomitant use of Brigati's likeness—“was necessary to describe the service being offered” on the 2018 tour. Second, the tour members used only as much of Brigati's likeness and voice as was necessary to identify their service. Third, they “took pains to ensure that their promotional materials reflected the true and accurate relationship between Cavaliere and Cornish's 2018 tour and the two non-touring band members.”

Finally, the court noted, two other reasons supported dismissal. For one, Briganti’s Lanham Act claims failed because he was unable to show standing in light of his abandonment of the mark. Moreover, in light of his extended absence and the long time it took for him to bring this claim, the claim was also barred by the doctrine of laches.

Broader context. The fight over the name The Rascals is only the latest entrant in a long tradition of legal disputes over band names and logos. As one legal commentator put it: “The Doors, The Eagles, Lynryd Skynyrd, Fleetwood Mac, Boston, Deep Purple, Guns N’ Roses, Pink Floyd, Twisted Sister, Steppenwolf, J. Geils Band, Black Flag, The Great White, The Beach Boys, Rare Earth, The Kingsmen, Supernova, The Clovers, and Expose. No, this list of bands is not an excerpt from this year’s line up at Coachella. This is a non-exhaustive list of bands that have been involved in a trademark regarding their band name over the past half-century.” Tristan Griffin, Mark My Word: Trademark Your Band Name, 15 Tex. Rev. Ent. & Sports L. 177 (2013-2014).

The case is No. 1:18-cv-06354-JGK-DCF.

Attorneys: A. Eric Bjorgum (Karish and Bjorgum PC) and Lee A. Goldberg (Goldberg Cohen LLP) for Beata Music LLC. Dino Danelli, pro se. Artemis Croussouloudis (Finkelstein, Borah, Schwartz, Altschuler & Goldstein, PC), Michael Barrie Kramer (Michael B. Kramer & Associates) and Jeffrey D. Goldman (Jeffer Mangels Butler & Mitchell LLP) for Eddie Brigati.

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