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A music promoter who revived The Drifters — the 1960s band that recorded “Under the Boardwalk” — has infringed on the trademark rights of the group’s original managers, the 3rd U.S. Circuit Court of Appeals said Friday. Promoter Larry Marshak must now participate in a New Jersey District Court-ordered accounting of the profits he earned through the use of The Drifters name. The 3rd Circuit found in Marshak v. Treadwell that it lacked jurisdiction to review the New Jersey District Court Judge Nicholas H. Politan’s order requiring Marshak “to account to [the mark's owner] for the profits he earned in each year, beginning with the first act of infringement in 1970 and ending with the first day of trial testimony in this case.” Marshak began using the name The Drifters in 1969, according to the opinion. As part of an effort to promote an oldies-format radio station, Marshak, then an editor at Rock Magazine, organized a reunion of the band, which had first appeared in 1953. The members who performed in the revival concerts — Charlie Thomas, Elsbeary Hobbs and Dock Green — had joined the original group in 1959, signing a contract which assigned the band’s name to manager George Treadwell. The original band, which performed such hits as “On Broadway” and “Save the Last Dance for Me,” was managed by Treadwell from 1954 until his death in 1967. His wife, Faye Treadwell, then took over management of the group and The Drifters Inc., later Treadwell’s Drifters Inc. In 1972, Thomas, Hobbs and Green signed a management contract with Marshak to perform as The Drifters. Although Treadwell warned Marshak that the revival band was an infringement of her right to use the group’s name, Marshak continued to market the group. A suit seeking an injunction against Marshak was dismissed in 1973, because Treadwell did not have the financial resources to continue the action, the opinion said. In December 1976, the band members filed an application with the Patent and Trademark Office to register “The Drifters” as a service mark for a singing group. They assigned their rights to the mark to Marshak. Marshak sued Treadwell for infringement in 1995 after she asserted in her book, Save the Last Dance for Me, that she was the sole owner of the The Drifters name. Treadwell argued that Treadwell’s Drifters had a superior common-law right to the mark and filed a counterclaim alleging fraudulent procurement. A jury found that Marshak had committed fraud in obtaining the mark, and Judge Politan canceled the mark registration. Although the jury also found that Treadwell had abandoned her common-law right to the mark, Politan vacated that verdict, finding that the continuous stream of royalties collected since 1960s belied claims of abandonment. Politan enjoined Marshak from use of The Drifters mark and ordered an accounting of his profits from the name from 1970 to 1998. Marshak appealed both decisions. The 3rd Circuit found it had jurisdiction to review the injunction and the cancellation of the mark. It affirmed those District Court rulings. However, the 3rd Circuit found it did not have the jurisdiction to review Politan’s order requiring an accounting of Marshak’s profits. Marshak, represented by Stephen B. Judlowe, Lisa M. Ferri, Eve Kunen and Vincent A. Sireci of New York’s Hopgood Calimafde Kalil & Judlowe, and Kenneth D. McPherson and Mark Ingber of New Jersey-based Water McPherson McNeill, had argued that the 3rd Circuit has jurisdiction over final orders. Treadwell was represented by New Jersey attorneys James P. Flynn of Epstein Becker & Green and Joshua Levine of the Law Office of Ira Levine. “A final order is one that ‘leaves nothing for the court to do but execute the judgment’ Catlin v. United States, 324 U.S. 229, 233 (1945). A finding of liability that does not also specify damages is not a final order,” Judge Samuel Alito wrote. “Although the practical finality rule, also known as the Forgay-Conrad doctrine, permits appellate review of an order that is not technically final but resolves as issues that are not purely ministerial … the accounting at issue in this case does not come within that rule,” he wrote. Alito referenced a 1994 3rd Circuit trademark infringement case, Apex Fountain Sales Inc. v. Kleinfeld, in which the court held a District Court order requiring the accounting of profits from the sale of the infringing products was not reviewable “because the determination of net profits would not easily be reached.” Quoting Apex Fountain Sales, Alito wrote, “the parties here have a long history of contentious litigation and there is substantial likelihood that ‘one or both parties will dispute the ultimate amount of damages awarded, leading to a second appeal. This would be contrary to the federal judiciary’s general policy against piecemeal litigation.’”

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