Trademark Proceedings Do Not Preclude Infringement Claims Over Band Name; 3rd Circuit

Beasley v Howard, 14 F4th 226 [3d Cir 2021]

In a long in a long-running dispute over the rights to the band name “Ebonys,” the 3rd Circuit held that proceedings to cancel a trademark before the TTAB did not have claim preclusive effect against trademark infringement lawsuits in federal district court. The plaintiff had filed two petitions in the TTAB to cancel the EBONYS trademark, which were dismissed. He then sued in federal court, alleging infringement. The lower court dismissed the claims on the basis of the TTAB proceedings, but the appellate court reversed.

Beasley appeals, so we now consider whether trademark cancellation proceedings before the TTAB have claim preclusive effect against trademark infringement lawsuits in federal district courts. We hold that they do not. The TTAB's limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies in proceedings before it. Because the judgments of tribunals with limited jurisdiction have limited preclusive effect, we will reverse and remand in part the District Court's order so that the District Court may determine the scope and plausibility of Beasley's claims. But we will affirm the District Court's order to the extent it dismisses any claim that Howard defrauded the U.S. Patent & Trademark Office (“PTO”).

Village People Claims Dismissed On Res Judicata Grounds

Willis v. Scorpio Music, No. 15-cv-1078 (S.D. Cal. order dated Jan. 19, 2016).

In a second lawsuit concerning ownership of various "Village People" compositions, the district court dismissed a 50% owner's claims based on defendant's false claim of authorship, breach of fiduciary duty, and vicarious copyright infringement.  As to the false ownership claims, the Court held that plaintiff was barred by the doctrine of res judicata from brining claims that he could have brought in the earlier action.  As to the vicarous copyright infringement claim, the court held that the defendant had the right to license the composition and thus there was no infringement.  Lastly, the court held that co-owners of a copyright -- though they have a duty to account -- do not have fiduciary duties to one another.

9th Circuit Reverses "Platters" Injunction Because No Presumption Of Irreparable Harm In Trademark Cases

Herb Reed Enterprises v. Florida Entertainment, No. 12-16868 (9th Cir. Dec. 2, 2013) [Decision].

The 9th Circuit reversed the district court’s grant of a preliminary injunction against defendants’ use of the mark “The Platters” in connection with a vocal group, holding that the likelihood of irreparable harm must be established, rather than presumed, by a plaintiff seeking injunctive relief in the trademark context, and that the record did not support a determination of the likelihood of irreparable harm.  Likelihood of success can not be collapsed into irreparable harm.  The 9th Circuit also found (affirming the district court) that: (i) earlier New York actions did not have res judicata effect -- there was no claim or issue preclusion; (ii) the claim was not barred by laches; (iii) Plaintiff had not abandoned the trademark.

McClain (Executors of Estate of Michael J. Jackson) v. Mann, No. 2:11-cv-00584 (C.D. Cal. filed Aug. 10, 2012) [Doc. 132].


Plaintiffs allege that Defendants are commercially exploiting without authorization intellectual property created by the late Michael Jackson (“Jackson”) and now owned by Plaintiffs.  Defendants argue, to the contrary, that they obtained the rights to use this intellectual property at a bankruptcy sale involving members of Jackson’s family. Defendants also argue that some of Plaintiffs’ claims are barred by res judicata, and that Plaintiffs have not met their summary judgment burden on other claims.


The court finds that none of these rights were transferred through the bankruptcy sale.  "[N]one of the facts surrounding the sale of Debtors’ personal property from a storage facility indicate a transfer of any intellectual property rights".


The court grants summary judgment to Plaintiffs as to each of Defendants’ affirmative defenses. The court also grants summary judgment to Plaintiffs on their claims for: 1) copyright infringement as to the “This Is It” key art, “Destiny” song, and “Thriller” material; 2) false designation of origin for Defendants’ use of Jackson’s likeness performing the “Smooth Criminal Lean”; 3) misappropriation of likeness for Defendants’ exploitation of this and other images of Jackson; 4) unfair competition based on this alleged unauthorized use; 5) cybersquatting and cyber piracy for Defendants’ exploitation of Jackson’s name in their domain names;
6) an accounting to reveal Defendants’ profits from the unauthorized use; 7) a permanent injunction against the unauthorized use; and 8) declaratory relief as to ownership of the intellectual property at issue.