In 1994, Spanky and Alfalfa’s friendship experienced tumultuous times when Alfalfa ditched the “boys only” club in favor of spending time with his beloved, Darla. Alfalfa’s departure threatened the club’s existence. Much to the delight of movie-goers, Alfalfa’s return to the club reconciled any threat of disbandment, leading to a happily-ever-after ending.
Before Spanky and Alfalfa’s “boys only” club came the 1960’s billboard chart-topping rock band, The Rascals (initially known as The Young Rascals). The band’s original members were Dino Danelli, Felix Cavaliere, Gene Cornish, and Eddie Brigati. The quartet experienced vast success in the mid to late 1960s, most notably by having nine singles reach the top 20 of the Billboard Hot 100 between 1966 and 1968. Despite their success, Brigati left the group in 1970, followed by Cornish in 1971.
In 1988, Cavaliere and his managers produced a Rascals reunion tour—Cornish and Danelli were hired as contractors. Brigati did not participate. By 1989 Danelli and Cornish filed a lawsuit against Cavaliere to be able to perform under the Rascals’ name. That lawsuit was resolved in 1990 via settlement, which granted Danelli and Cornish the ability to perform under the name “The New Rascals, featuring Dino Danelli and Gene Cornish.” Cavaliere could perform as “Felix Cavaliere’s Rascals.” Brigati was not a party to the lawsuit or settlement agreement.
In 1990, Brigati filed a separate lawsuit concerning the rights to certain records and other Rascals assets. In 1992, all band members entered into a settlement agreement, which set procedures for the allocation of proceeds from the sale of Rascals recordings and the disposition of Rascal assets. The band members also entered into a partnership agreement, under which the partnership owns the rights to the RASCALS and YOUNG RASCALS marks for musical recordings.
From 1970 through 2012, Cavaliere, Danelli, and Cornish each performed under some variation of the Rascals name. Brigati did not. In 2012 and 2013, Brigati joined the other three members in the performance of the musical—“The Rascals: Once Upon a Dream.” This was the first time all four members performed and toured together since 1970.
In 2017, Cavaliere and Cornish created a touring company—Beata Music, LLC (“Beata”), and transferred to Beata “any rights they had in the RASCALS mark for live performances.” Beata then sought to register the RASCALS trademark. In 2018, Brigati and Danelli filed an opposition to Beata’s trademark application. Beata then commenced a lawsuit against Brigati and Danelli concerning its application for the RASCALS trademark with respect to live performances. Danelli countersued, alleging, inter alia, claims for unfair competition under New York common law, and for false designation of origin under Section 43(a) of the Lanham Act.
To establish a false designation of original claim under Section 43(a) or an unfair competition claim under New York common law, a party must establish that (i) they have a valid mark entitled to protection and that (ii) the opposing party’s use of the mark will likely cause confusion.
There was no dispute that the quartet collectively owns the RASCALS and YOUNG RASCALS trademarks for musical sound recordings, under the partnership agreement. Beata, however, argued that Brigati abandoned his remaining interest in the RASCALS mark. Abandonment of a mark requires both (i) “non-use of the mark by the legal owner” and (ii) “no intent by that person to resume use in the reasonably foreseeable future.”
On January 6, 2022, the United States District Court for the Southern District of New York agreed that Brigati abandoned his interest in the RASCALS mark. The Court reasoned that Brigati cannot point to any use of the RASCALS mark between 1970 and 2012 when the group reunited to perform the Rascals musical. Brigati neither attempted to join the 1988 Rascals reunion tour, nor any of the tours and performances that were put on by his bandmates. Brigati even turned down opportunities to tour with the Rascals, which could have bolstered his association with the RASCALS mark. The Court also pointed to the fact that Brigati was not a party to the 1989 lawsuit concerning the other band member’s use of the RASCALS mark for live performances as further evidence supporting abandonment. Although Brigati was a party to the 1990 lawsuit and corresponding 1992 settlement agreement, the Court did not recognize this as an intent to use the mark.
Thus, the Court stated that “Brigati cannot establish deliberate and continuous use of the RASCALS mark after he left the band in 1970,” and ruled in Beata’s favor.
Takeaway. This case reinforces the old adage, “if you don’t use it, you lose it.” To acquire and maintain trademark rights, one must use the mark. Non-use of a trademark for three consecutive years constitutes “prima facie evidence of abandonment.”
Beata Music LLC v. Dino Danelli, Eddie Brigati, et al., Case No. 18-cv-6354 (S.D.N.Y. 2022).