Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC
842 F. Supp. 2d 1282
D. Nev.2012Background
- Platters dispute over ownership of the mark spans decades among Reed, Robi, FPI, Powell, and related entities.
- The 1987 Florida settlement included an escape clause allowing Reed to retain rights if a court later found FPI had no right to The Platters.
- Ninth Circuit decisions held Robi had superior rights over FPI; later Reed's rights were recognized over FPI in separate actions.
- Powell began using The Platters-related names in 1970 and later used The Platters featuring Monroe Powell, raising confusion concerns.
- Nevada default judgment (2011) declared FPI had no rights to The Platters, supporting Reed’s superior ownership claims, but Reed’s status as a party here is unresolved.
- Court grants preliminary injunction against use of The Platters with narrow exceptions, but requires Reed to join as party or prove assignment of common-law rights before effecting the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Reed likely owner of The Platters mark? | Reed has priority and defeating the escape clause. | FPI may still have rights through the 1987 stipulation. | Yes; Reed likely owns the mark. |
| Is Powell’s use of The Platters featuring Monroe Powell confusingly similar to Reed’s mark? | Powell’s name and branding create confusion with The Platters. | No infringement if distinguishable. | Yes; likely confusion under Sleekcraft factors. |
| Irreparable harm should be presumed? | Not required post-Winter; irreparable harm shown. | Winter limits presumptions. | Assessed likelihood of irreparable harm as present; no automatic presumption. |
| Should an injunction issue given balance of hardships and public interest? | Protect Reed’s rights and prevent consumer confusion. | Infringement remedies would harm Powell economically. | Public interest favors preventing confusion; bond set at $10,000. |
Key Cases Cited
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (eight-factor confusion test for likelihood of confusion)
- Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir. 1990) (FPI had no superior rights to Robi’s use of The Platters)
- Robi v. Reed, 173 F.3d 736 (9th Cir. 1999) (members leaving a group do not retain rights to the group name; Reed retains rights)
- Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217 (9th Cir. 1996) (ownership requires priority of use in commerce)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (ownership/confusion standards for marks; non-exhaustive factors)
- Grocery Outlet Inc. v. Albertson’s Inc., 497 F.3d 949 (9th Cir. 2007) (ownership and confusion standards for trademark claims)