IP Law Daily, TRADEMARK—S.D.N.Y.: Right to the Rascals name will have to be settled at trial, (May 11, 2022)

By Matthew Hersh, J.D.

The long running clash over the right to tour under the band’s name will get another chapter.

Two members of a popular 1960s rock band were not entitled to summary judgment on their claim that they owned the common law trademark rights to live performances under the band’s name, the federal district court in Manhattan has held. The court, noting with regret that “the prior harmony among the parties has turned to discord,” also found that the band members were not entitled to attorney fees for their successful effort to fend off a competing trademark claim by their now-estranged former vocalist (Beata Music LLC v. Danelli, May 10, 2022, Koeltl, J.).

The case involves the Rascals, a four-piece rock band that achieved wide popularity in the 1960s for songs such as Groovin’, People Got to Be Free, and 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.

The lawsuit began when 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 and that Cavaliere and Cornish have no right to register the RASCALS mark. (Danelli also asserted similar counterclaims, but then abandoned the litigation).

In January of this year the trial court granted summary judgment to Cornish and Cavaliere on Brigati’s counterclaims, finding among other things that he had abandoned any claim to the trademark. Cornish and Cavaliere then moved for summary judgment on their own claims of ownership, leading to this opinion.

Attorney fees. Before addressing the summary judgment motion, the court first took up Cornish and Cavaliere’s request that it award them attorney fees in connection with the now-dismissed Brigati claims. The court denied the request. Attorney fees are appropriate, the court explained, only where the case "stands out from others” with respect to the merits or the manner in which the case was litigated. This case did not meet that standard. To be sure, the court noted, Brigati had stopped touring with the band in 1970. But he still had a non-frivolous argument that he did not abandon his interest in the RASCALS mark, the court noted, because he had continued to receive royalties from the group's recorded music. Moreover, the court noted, there was “no evidence suggesting that Brigati asserted his counterclaims for any reason other than enforcing the rights that he believed in good faith he had in the RASCALS mark.” Attorney fees were therefore not appropriate.

Declaration of ownership. Turning to the claims of Cornish and Cavaliere, the court found that there remained too many open questions for them to prevail on summary judgment. The principal question was whether their company, Beata, owned the RASCALS trademark for live performances and for the sale of merchandise at those performances. Cavaliere argued that he had established common law ownership over the live performance trademark and that he had then transferred the mark to Beata. But the record was not yet sufficient, the court concluded, to establish conclusively that Cavaliere did acquire that right—and most importantly, whether he and Beata had an expressed intention to continue to exploit the right in the future. Thus, the question of ownership would have to be deferred to trial.

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

Attorneys: A. Eric Bjorgum (Karish and Bjorgum PC) for Beata Music LLC. Dino Danelli, pro se. Artemis Croussouloudis (Finkelstein, Borah, Schwartz, Altschuler & Goldstein, PC) for Eddie Brigati.

Companies: Beata Music LLC

Cases: Trademark NewYorkNews GCNNews