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In the half century since five Jersey City, N.J., teenagers formed The Duprees and doo-wopped their way to the top of the charts, the group, though replacing members from time to time, has never stopped performing. But behind the curtain, the group’s future as a business is in crisis, as rival factions contest ownership of its intellectual property in federal court. The estate of founding member Michael Arnone is suing the current members and manager Ron O’Brien, claiming Arnone’s three grown children own the rights because of a trademark issued to Arnone in 1981. The suit seeks an accounting, compensation for lost profits and attorneys’ fees and costs. The defendants, including current group leader Tony Testa, answer that Arnone misled the U.S. Patent and Trademark Office office in applying for the mark and abandoned his rights by leaving management up to others in the years just before his death in 2005. The dispute heated up this summer, The Duprees’ busy season because of bookings for outdoor concerts in public parks and band shells. Last month, the Arnone faction began writing to concert venues that they could be liable for trademark infringement if “The Duprees” were featured. In response, the Izod Center in East Rutherford chose to introduce the group only as “those boys from Jersey.” The defendants ended up agreeing to indemnify their venues from trademark suits, so no concerts had to be cancelled. On July 11, the defendants sought a preliminary injunction to stop the estate from sending such communications and to compel it to write to the same venues explaining the allegations are the subject of a legal dispute. The estate responded Monday with a cross-motion for a preliminary injunction to prevent the defendants’ further use of The Duprees’ mark. All this from what started as five friends vocalizing together at William L. Dickinson High School in Jersey City. The group, begun in 1960 as The Parisiens, signed with the Coed Records label in 1962 and became The Duprees. The group infused doo-wop vocals into big-band numbers, starting in 1962 with their first hit, a cover of “You Belong to Me,” and following in 1963 with revivals of two 1952 songs, “Have You Heard” and “Why Don’t You Believe Me.” The group started with five members: Arnone, Joe Santollo, John Salvato, Tom Bialoglow and lead singer Joey Canzano (known as Joey Vann). Over the years, members left and were replaced until Arnone was the last of the originals. In 1981, he obtained a trademark. In 1989, after former member Salvato had formed his own group using the same name, Arnone sued in federal court in Newark. In a 1992 settlement, Salvato ceded to Arnone the rights to The Duprees name. Around the same time, Testa joined the group as guitarist and vocalist. Arnone later appointed him musical director. In 1993, Arnone stopped performing but continued to manage the group. In 1997, he moved to Alabama, while the other members stayed in New Jersey. That year, Arnone hired O’Brien as booking manager on a percentage basis. In 2003, the N.J. Department of Labor cited Arnone for failure to pay payroll taxes on wages to the group. Arnone took his accountant’s advice and formed a limited liability company. If the group were outside Arnone’s control, no payroll taxes would be due. Arnone died in October 2005 at age 63, and O’Brien refused to share revenue with his estate. The next January, the estate fired O’Brien and directed him to stop using The Duprees’ mark. But he continued to book the group. That summer, lawyers for the estate, Testa and O’Brien met to negotiate over the estate’s request that O’Brien a sign a licensing agreement, but the talks went nowhere. The current suit followed, charging trademark infringement, unfair competition, and violation of New Jersey’s unfair competition statute, N.J.S.A. 56:4-1, and dilution statute, N.J.S.A. 56:3. Testa, O’Brien and the other defendants say Arnone gave up his trademark rights by failing to wield control over the group. Their papers allege he had a drinking problem that contributed to his abandonment of the business. Plaintiffs’ lawyer Matthew Hawkins, of Herrick Feinstein in Newark, does not dispute that Arnone drank but says, “Whether or not he had difficulties with drinking is entirely irrelevant to an analysis of his rights under the trademark law.” The defendants also argue that by forming the LLC, Arnone passed the torch of leadership to Testa and O’Brien. “Were Arnone alive today, his surrender . . . of any remaining ability to exercise control over use of the name The Duprees by the Testa Group would have estopped Arnone from enforcing against the Testa Group any purported rights in the name he ever may have held,” the defendants say in their memorandum in support of a preliminary injunction. But Hawkins says Arnone made hundreds of calls to Testa and O’Brien, indicating an active involvement in the group’s operations. “The idea that the formation of the LLC was tantamount to a relinquishment of the trademark really lacks any legal merit,” Hawkins says. The Testa faction also claims Arnone lied to the Patent and Trademark Office about whether any other party had a claim on The Duprees’ name. He should have disclosed that former member Salvato considered himself to have a stake in the name and that former member Santollo, who died in 1981, never relinquished his rights to the name, meaning that Santollo’s estate now has a stake. The defendants say that in 1966, Arnone, Santollo and Salvato instructed a lawyer to register The Duprees’ mark in their names, but the application was never filed. If they prevail in court, Arnone’s three children hope to reformulate The Duprees with other former members of the group, say plaintiffs’ lawyers. The defendants’ lawyer, William Mentlik of Lerner, David, Littenberg, Krumholz & Mentlik in Westfield, says they enjoyed a close and cordial relationship with Arnone, as evidenced by his gracious remarks about them on liner notes inside the group’s CDs. That’s in sharp contrast to his children’s attempts to fire O’Brien and Testa. “His kids, unfortunately, have a very skewed vision of the world,” Mentlik says. The case, Estate of Arnone v. Testa, 3:07-cv-00081, is before U.S. District Judge Frieda Wolfson, who has not yet set a date for a hearing on the motions.

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