Jay Denne, a lawyer in Sioux City, Iowa, came across this opinion while doing some research. Note that Coverdale is continually misspelled Cloverdale.
LEXIS(R) Case Law Signal: Citation Information Available <SHEP>
<AC>
LEVEL 1 - 2 OF 3 CASES
HEC Enterprises, Limited et al. v. Deep Purple, Inc. et al.
No. 80-02532
United States District Court, Central District of California
1980 U.S. Dist. LEXIS 17054; 213 U.S.P.Q. (BNA) 991
October 3, 1980
CORE TERMS: musical, trademark, concert, common law, trade name, registration, unfair competition, recordings, commerce, infringes, judicial district, registered, principal place of business, royalties, musicians, consumers, promoter, replaced, managing, oath, dilutes, matter in controversy, breach of contract, exemplary damages, doing business, duly organized, right to use, new musical, infringement, resemblance
COUNSEL: [*1]
Martin R. Horn, Elliot Chaum, James E. Hawes, and Spensley, Horn, Jubas & Lubitz, all of Los Angeles, Cal. for plaintiff HEC Enterprises, Limited.
James C. Maupin, and Maupin, Cutler, Teplinsky & White, both of Los Angeles, cal., for all individual plaintiffs and Deep Purple (Overseas) Limited.
Brown and Newton, for defendants.
OPINIONBY: REAL
OPINION: Real, District Judge.
The action identified above, having been tried before the Honorable Manuel L. Real, the Court enters the following Findings of Fact and Conclusions of Law:
Findings of Fact
1. This is a civil action in which the Plaintiffs charge Defendants with certain acts of unfair competition in violation of <=1 15 USC @ 1125(a), as well as certain state and common law acts of unfair competition, service mark infringement, trademark infringement, trade name infringement, and dilution of Plaintiff's marks. Plaintiffs seek cancellation of Defendants' California trademark registration, abandonment of Defendants' federal service mark application for registration, compensatory and exemplary damages, attorneys fees, costs and an injunction. Defendants have counterclaimed for disparagement of product, inducing breach of contract, [*2] and interference with prospective advantages, but these counterclaims were dropped by the Defendants at the commencement of trial.
2. Plaintiff HEC ENTERPRISES, LIMITED (called "HEC") is a Limited Liability Company duly organized and existing pursuant to the laws of England, with a principal place of business at 25 Newman Street, London, England. Plaintiff DEEP PURPLE (OVERSEAS) LIMITED (called "DPO") is a Limited Liability Company duly organized and existing pursuant to the laws of England, and has a principal place of business at 7/11 Woodcote Road, Wallington, Surrey, England. HEC and DPO, are in the business of promoting and managing certain musical artists and groups, including a group known as DEEP PURPLE. The individual Plaintiffs, Richard Blackmore, Roger Glover, David Cloverdale, Ian Paice, Jon Lord and Ian Gillan, all are citizens of the United Kingdom; all of them have been members of Plaintiff's DEEP PURPLE group.
3. Defendant DEEP PURPLE, INC. is a California corporation with a principal place of business in Los Angeles County, California. The individual Defendants, Geoffrey W. Emery, Roderick Evans, Tony Flynn, and Dick Jergins, are residents of California, [*3] all within the judicial district of this Court. The Defendants, beginning earlier this year, have participated in organizing, promoting and managing a musical group that they call DEEP PURPLE or NEW DEEP PURPLE. The individual Defendants were members of that musical group, and are the only shareholders of the corporate Defendant. Defendant Roderick Evans for a time was a member of Plaintiffs' DEEP PURPLE group.
4. In 1968 in Great Britain, at the instigation of HEC, five musicians formed a new musical group, which group they decided to name DEEP PURPLE. These musicians were Ian Paice, Richard Blackmore, Jon Lord, Roderick Evans, and Nicky Simper. The members of this musical group entered into a personal services contract with HEC. HEC registered the name DEEP PURPLE in the United Kingdom in May, 1968. In 1971, DPO was organized and assumed responsibility for managing the DEEP PURPLE group everywhere but in Great Britain and Ireland; HEC continued to manage the group in those two countries.
5. in late 1968 Plaintiffs' DEEP PURPLE group began to realize commercial success. In 1969, after about one year with DEEP PURPLE defendant Roderick Evans and Mr. Simper left the [*4] DEEP PURPLE group and were replaced by Roger Glover and Ian Gillan. All agreed to this change. The membership of the DEEP PURPLE group again changed in 1973, Plaintiffs Glover and Gillan being replaced by Plaintiff David Cloverdale and by another individual, Glenn Hughes. In 1975, Plaintiff Richard Blackmore left the DEEP PURPLE group and was replaced by Tommy Bolin. In 1976, Plaintiffs' group decided to cease presenting live performances in concert for the time being, and to pursue their separate interests.
6. Recordings of Plaintiffs' DEEP PURPLE musical group have been offered for sale in the United States by Warner Brothers Records since at least as early as July, 1971. The July, 1980 Warner Brothers Catalog includes eleven (11) DEEP PURPLE albums. Each of these records has used the trademark DEEP PURPLE to identify the performing musical group. Plaintiffs' DEEP PURPLE group realized considerable success, and enjoys substantial goodwill.
7. Plaintiffs' DEEP PURPLE group has enjoyed substantial success, earning on the order of Thirty Million Dollars from 1968 to the present and continues to produce substantial income for its members and managers, some of whom have [*5] received in recent years, and expect to continue receiving, an income of about One Hundred Thousand U.K. Pounds per year.
8. Defendant Evans has received substantial royalties for his activities with Plaintiffs' group, and continues to receive such royalties. Defendant Evans has been paid royalties of approximately $15,000 to $18,000 per year by Plaintiffs HEC and DPO for the past several years, including 1980.
9. The Defendants, prior to adopting DEEP PURPLE as the name of their new musical group, knew of Plaintiffs' musical group and had heard many recordings of Plaintiffs' musical group. The Defendants nevertheless decided to adopt and use the name DEEP PURPLE as the name of their musical group.
10. Defendants Geoffrey Emery and Tony Flynn, caused the mark DEEP PURPLE to be registered by the State of California on March 27, 1980 being Registration No. 9558, for use in connection with musical performances rendered live and on records and tape, alleging a first use of this mark both in California and anywhere of February 1, 1980. In executing that application, Defendants Emery and Flynn verified under oath the above and that no other person had the right to use the [*6] DEEP PURPLE mark in California, either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive or to be mistaken therefor. Contrary to the verified application none of the facts so asserted were true and Defendants Emery and Flynn knew that such facts were untrue.
11. On or about March 5, 1980, Defendant Emery applied to the United States Patent and Trademark Office for registration of the mark DEEP PURPLE asserting it had been first used for entertainment services on February 1, 1980 both in interstate and intrastate commerce. In that application, dated February 25, 1980, Defendant Emery claimed that the mark "is used by applying it to record labels, photographs, pamphlets, billboards, miscellaneous advertising mediums, book jackets, tee-shirts, clothing, in general, posters" (sic) and Defendant Emery, in signing the application declared (in part) under oath that "to the best of his knowledge and belief no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as may be likely, when applied to the goods of such other person to cause [*7] confusion, or to cause mistake, or to deceive." The specimens included in that application were asserted to have been used in commerce. Contrary to the declaration of the applicant, none of the facts so declared were true and declarant knew that such facts were untrue.
12. The four individual Defendants caused the corporate Defendant DEEP PURPLE, INC. to be organized and incorporated by the California Secretary of State on May 7, 1980.
13. The Defendants' musical group first performed publicly in Amarillo, Texas on May 17, 1980 and in El Paso, Texas on May 18, 1980. Defendants were promptly advised by Plaintiffs that Plaintiffs objected to Defendants' use of the name DEEP PURPLE as the name of their musical group, but the Defendants nevertheless persisted, and have continued to use the name DEEP PURPLE and NEW DEEP PURPLE as the name of their musical group.
14. Since the initial performance by Defendants in May, 1980, Defendants have presented at least fifteen (15) other concerts using the name DEEP PURPLE in the United States and in foreign countries. One of those concerts was presented in Mexico City; Defendants have estimated that in excess of seventy thousand people [*8] attended that concert. Defendants' musical group has headlined each of these concerts. The most recent concert by Defendants' musical group was presented at the Long Beach Arena in Long Beach, California on Tuesday, August 19, 1980.
15. Plaintiffs continued to object to Defendants' use of the name DEEP PURPLE and, after making a reasonable attempt to resolve the dispute with Defendants, Plaintiffs promptly brought this action.
16. HEC is the owner of the trade name DEEP PURPLE.
17. HEC is the owner of the common law service mark DEEP PURPLE.
18. HEC is the owner of the common law trademark DEEP PURPLE.
19 Pursuant to license from HEC, DPO has the exclusive right to use the trade name, trademark and service mark DEEP PURPLE throughout the world excluding the United Kingdom and Eire.
20. Plaintiffs continue to use the name and trademark and service mark DEEP PURPLE, having as recently as June, 1980 caused a new compilation of recordings of Plaintiffs' DEEP PURPLE group to be published and offered for sale in England. This new record has been authorized for distribution in the United States commencing September, 1980. Plaintiffs have other, unreleased recordings [*9] of the DEEP PURPLE group which they have considered, and continue to consider, releasing. Plaintiffs have received offers, and continue to receive offers, for live performances of the DEEP PURPLE group, having received such an offer in 1979 for a single performance in Spain, and another offer in 1980 for single performance in Japan.
21. Plaintiffs have used DEEP PURPLE continuously throughout the world and in the United States since its first adoption and use in 1968. Plaintiffs have never stopped using DEEP PURPLE as the name of their musical group nor have Plaintiffs intended not to continue such use.
22. All members of Plaintiffs' DEEP PURPLE group, and the corporate Plaintiffs, have agreed that use and exploitation of the goodwill of this group would be by a majority decision of the then constituent group. A majority of the present constituent group has not agreed to Defendants' use of the name DEEP PURPLE. A majority of the group has specifically objected to Defendants' use of the name, trademark and service mark DEEP PURPLE.
23. Defendants' use of DEEP PURPLE as the name and mark identifying their musical group and products has caused Defendants' group to be confused [*10] with, and mistaken for, Plaintiffs' DEEP PURPLE musical group, and has deceived consumers into believing that defendants' group and products was the same as, or was affiliated with, or sponsored by, Plaintiffs.
24. Defendants' musical group has performed in concert only songs performed and rendered by Plaintiffs' DEEP PURPLE musical group; Defendants' performances of these songs has been in a style imitating that made famous by Plaintiffs' group.
25. Defendants and their agents have used without authorization, recordings owned by Plaintiffs' DEEP PURPLE group in advertising performances by Defendants' group.
26. Defendants have sold and otherwise distributed to the public T-shirts and other goods bearing the words DEEP PURPLE, both in block letters and in the distinctive style and design used by Plaintiffs on one of their records.
27. Defendants, through their authorized agents, The William Morris Agency, Inc. and its employee, Robert Ringe, specifically refused permission to publicize the names of the individuals in Defendants' DEEP PURPLE group when Avalon Attractions, the promoter of Defendants' Long Beach, California concert, sought to do so; Defendants' said agents [*11] further threatened to sue the promoter for an alleged breach of contract if the promoter caused the names of Defendants' musicians to be advertised or communicated to the public before said concert.
28. Among reasonable consumers there is a likelihood of confusion as to the true source of Defendants' musical services which arises by virtue of Defendants' use of the name and marks DEEP PURPLE to identify those services. Reasonable consumers would be deceived or misled into thinking that Defendants musical services are sponsored by or produced by Plaintiffs because of Defendants' use of the name and mark DEEP PURPLE to identify those services.
29. In 1979 some members of Defendants' group were involved with a musical group known as Steppenwolf, and encountered problems concerning the use of that name. Defendant Emery caused to be registered with the State of California the word "Steppenwolf" as a service mark used to designate a musical group, this registration being issued in June, 1979.
30. The acts of Defendants in adopting and using the name DEEP PURPLE as the name of their musical group was deliberate, willful and wanton.
31. Defendant Emery committed fraud upon [*12] the United States Patent and Trademark Office and the Trademark Office of the State of California in connection with the application for the mark DEEP PURPLE which he filed under oath with said agencies.
32. Defendants have realized substantial profits through their use of the name DEEP PURPLE, and have caused Plaintiffs to be damaged and to expend substantial sums to preserve and defend Plaintiffs' rights.
33. Defendants' use of DEEP PURPLE falsely describes, represents or designates the musical services provided by Defendants' group.
34. Defendants use of the name DEEP PURPLE has caused plaintiffs' business reputation to be injured and Plaintiffs' name and marks to be diluted.
35. Defendants are doing business within this judicial district.
36. This Court has jurisdiction over this action by virtue of <=2 15 USC @ 1121, since Plaintiffs have asserted a violation of <=3 15 USC @ 1125(a). Jurisdiction also is proper by virtue of <=4 28 USC @ 1331 since the matter in controversy exceeds Ten Thousand Dollars ($10,000.00), exclusive of interest and costs, and since this matter arises under the laws of the United States. Further, jurisdiction is proper under <=5 28 USC @ 1332 [*13] in view of the value of the matter in controversy and the fact that the dispute is between citizens or subjects of foreign states and citizens or entities of the State of California. Jurisdiction is conferred under <=6 28 USC @ 1338 as well, since this District Court has original jurisdiction of actions arising under any act of Congress relating to trademarks and actions asserting a claim of unfair competition when joined with substantially related claims under the trademark laws.
37. Venue is proper in this Court pursuant to <=7 28 USC @ 1381 since all Defendants reside in the judicial district of this Court, and since all Defendants are doing business in this judicial district.
Conclusions of Law
1. This Court has jurisdiction of the subject matter and over the parties.
2. HEC is the owner of the common law trademark, trade name and service mark DEEP PURPLE.
3. Under the trademark and unfair competition laws of the United States and under the common law and statutory law of California, Defendants' use of DEEP PURPLE as the name and mark for its musical group infringes, dilutes, and otherwise violates the rights of Plaintiffs, and each of them, pertaining to the name [*14] and marks DEEP PURPLE.
4. Under the trademark and unfair competition laws of the United States and under the common law and statutory law of California, Defendants' use of the name and mark NEW DEEP PURPLE as the name of their musical group infringes, dilutes, and otherwise violates the rights of Plaintiffs, and each of them, pertaining to the name and marks DEEP PURPLE.
5.Defendants' use of the trademark DEEP PURPLE infringes HEC's rights in that mark.
6. Defendants' use of the service mark DEEP PURPLE infringes HEC's rights in that mark.
7. Defendants' use of the trade name DEEP PURPLE infringes HEC's rights in that name.
8. Defendants' use of DEEP PURPLE violates rights afforded HEC and DPO by <=8 15 USC @ 1125(a).
9. HEC's trade name, trademark and service mark DEEP PURPLE is valid and subsisting at common law.
10. Defendants' use of DEEP PURPLE dilutes the distinctive quality of HEC's trade name and mark DEEP PURPLE.
11. Plaintiffs, and each of them, are entitled to a permanent injunction against the Defendants and each of them, Defendants' agents, servants, employees, subsidiaries, divisions, representatives, attorneys and all persons acting in concert [*15] or participation with the named Defendants from engaging in, permitting, or performing any and all of the acts complained of as specifically stated in the judgment entered in this action.
12. Defendants Geoffrey Emery and Tony Flynn fraudulently caused to be registered the name DEEP PURPLE with the Secretary of State of the State of California.
13. Defendant Geoffrey Emery fraudulently executed and caused to be filed with the United States Patent and Trademark Office an application for registration of the service mark DEEP PURPLE, (1) knowing that mark not to have been used in commerce on February 1, 1980 as stated in the application, (2) knowing that the submitted specimens had not been used in commerce, (3) knowing the mark not to have been used in commerce for any of the goods stated in the application as of the date the application was executed, and (4) knowing of Plaintiffs' rights in and to the mark on the date the application was executed.
14. HEC, as the owner of the name and marks DEEP PURPLE, is entitled to compensatory damages, which damages hereby are awarded and shall be all the net profits of the Defendants and each of them resulting from their use of the [*16] name and marks DEEP PURPLE.
15. Because of the fraud of Defendant Emery and Flynn and the deliberate, willful and wanton acts of the Defendants and each of them, HEC is entitled to, and hereby is awarded, exemplary damages of treble the amount of the compensatory damages.
16. Plaintiffs and each of them are entitled to their reasonable attorneys fees in an amount to be determined by the Court.
17. Plaintiffs and each of them are entitled to the costs they incurred in this suit in an amount to be determined by the Court.
18. Each finding of fact which is in whole or in part a conclusion of law is hereby incorporated in this section by this reference; each conclusion of law which is in whole or in part a finding of fact is hereby incorporated by this reference in that section.