Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA983206
`
`Filing date:
`
`06/25/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065794
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`The Marshall Tucker Band, Inc.
`
`SARAH S BROOKS
`VENABLE LLP
`2049 CENTURY PARK EAST, SUITE 2300
`LOS ANGELES, CA 90067
`UNITED STATES
`ssbrooks@venable.com, asharon@venable.com, hedmonds@venable.com
`310-229-9900
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Papers
`
`Sarah S. Brooks
`
`ssbrooks@venable.com, hedmonds@venable.com, asharon@venable.com
`
`/Sarah S. Brooks/
`
`06/25/2019
`
`Attachments
`
`Cedar Boschan Declaration with Exhibit A.pdf(751097 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`The Marshall Tucker Band, Inc.,
`
`Petitioner,
`
`v.
`
`M T Industries, Inc.,
`
`Respondent.
`
`
`
`
`
`Cancellation No.: 92065794
`Registration Nos. 4616427 and 4616428
`Mark: THE MARSHALL TUCKER BAND
`
`
`
`DECLARATION OF CEDAR
`
`BOSCHAN IN SUPPORT OF
`
`THE MARSHALL TUCKER
`BAND INC.’S PETITION FOR
`CANCELLATION
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`I, Cedar Boschan, declare as follows:
`
`1.
`
`I am the founder and CEO of Boschan Corp., which provides forensic accounting,
`
`consulting and contract audit services.
`
`2.
`
`I have 26 years of music industry experience, including over 17 years of
`
`providing consulting services ranging from music contract negotiation to valuing damages in
`
`intellectual property and entertainment matters.
`
`3.
`
`4.
`
`I have testified at trial and at deposition as an expert.
`
`I serve as faculty at Los Angeles College of Music where I teach music royalty
`
`accounting and applied economics courses. I also served for four years as the national treasurer
`
`of The Association of Independent Music Publishes (AIMP), where I spoke on topics of
`
`valuation in the music industry and was responsible for New York, Nashville, and Los Angeles
`
`finances. I have engaged in dozens of speaking engagements, as well as authored publications on
`
`various music industry financial topics.
`
`5.
`
`My expert opinions and conclusions in the matter of The Marshall Tucker Band,
`
`Inc. v. MT Industries, Inc. are contained in the July 4, 2018 expert report, hereto attached as
`
`Exhibit A.
`
`6.
`
`I declare under penalty of perjury under the laws of the United States that the
`
`foregoing is true and correct and that this declaration was executed in Culver City, CA on:
`
`
`Date: Tuesday, June 25, 2019
`
`
`
`
` ______________________
`
`Cedar Boschan
`
`
`
`
`
`1
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`
`
`
`
`
`
`CONFIDENTIAL
`
`
`
`
`Wednesday, July 4, 2018
`
`Expert Report by Cedar Boschan
`
`
`
`
`Matter Of
`
`The Marshall Tucker Band, Inc.
`(“Petitioner”)
`
`v.
`
`MT Industries, Inc.
`(“Registrant”)
`
`
`
`
`
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`
`

`

`
`
`Confidential
`Page 2 of 37
`
`MTB v. MTI
`Wednesday, July 4, 2018
`
`
`
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`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Table of Contents:
`
`Assignment (Page 3)
`
`Expert Qualifications (Page 5)
`
`Facts & Opinions:
`i. Background Facts (Page 8)
`ii. The Public’s Perception of
`The Identity of The Marshall
`Tucker Band (Page 9)
`iii. Registrant is a Licensee
`Under the 1984 Agreement and
`Industry Standards (Page 14)
`a.
`The 1984 Agreement (Page 14)
`b.
`Intentions (Page 18)
`c.
`Conclusions (Page 23)
`iv. How Petitioner Is Damaged by
`Registrant’s Trademark Claims
`(Page 24)
`a.
`Assumptions (Page 24)
`b.
`Damages (Page 26)
`1.
`Value of Marks
`2.
`Recording Earnings
`Petitioner’s Costs
`3.
`
`Summary & Signature (Page 29)
`
`Appendices (Page 30)
`- Appendix A ... Compensation
`- Appendix B ... Curriculum Vitae
`- Appendix C ... Publications
`- Appendix D ... Testimony Experience
`- Appendix E ... Documents Relied Upon
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 3 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`1. ASSIGNMENT
`
`Boschan Corp. was retained by Venable LLP to provide expert
`services in connection with the matter of The Marshall
`Tucker Band, Inc. (“Petitioner”) v. MT Industries, Inc.
`(“Registrant”). Such matter may be referred to below as
`the “Matter.”
`
`Specifically, Boschan Corp. was retained to offer
`specialized expertise in the music sector, including but
`not limited to standard music industry rights agreements
`and practices as well as damages. As Boschan Corp.’s music
`practice leader, my analysis and opinions to-date are
`described in the text herein.
`
`The purpose of this report is to summarize my opinions
`based on my expert review of the available facts concerning
`the following:
`
`
`i. The Public’s Perception of The Identity of The
`Marshall Tucker Band
`
`ii. Analysis of the 1984 Agreement, Other Relevant
`Documents and Industry Standards
`
`iii. How Petitioner Is Damaged by Registrant’s
`Trademark Claims
`
`
`
`This report includes information customarily provided by
`experts in litigation matters (as required by Federal Rule
`of Civil Procedure 26(a)(2)(B)). Such information includes:
`
`
`• Disclosure of compensation for this engagement
`(Appendix A)
`• Qualifications of the expert (see below
`“Qualifications” section and my curriculum vitae
`attached as Appendix B)
`• List of publications over the past decade (Appendix C)
`• Testimony experience over the past four years
`(Appendix D)
`• List of documents relied upon (Appendix E)
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 4 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
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`I understand that Boschan Corp. may potentially be asked to
`provide future analysis and insight, if any, concerning the
`Matter. Therefore, I reserve the right to issue subsequent
`reports if requested to do so.
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 5 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`2. EXPERT QUALIFICATIONS OF CEDAR BOSCHAN
`
` I
`
` have 26 years of music industry experience, including
`over 17 years of providing consulting services ranging from
`music contract negotiation to valuing damages in
`intellectual property and entertainment matters.
`
`During college at the University of Southern California I
`earned a Bachelor of Science in music industry, the most
`respected music industry degree, with an emphasis on the
`business side of the industry, especially accounting,
`economics, and copyright. During college I also worked in
`the music industry, and then was hired as an account
`executive at a music public relations and marketing firm,
`Innovative Media & Marketing.
`
`As summarized in my curriculum vitae (see Appendix B
`hereto), after college I took a position at the boutique
`music royalty accounting firm Wolinsky, Becker & Hurewitz,
`LLP, where I launched my music industry consulting and
`forensic accounting career.
`
` I
`
` conducted music royalty and participation compliance
`examinations, valuations, and forensic accounting
`investigations, among other consulting services, for eight
`(8) years at Wolinsky, Becker & Hurewitz. I then continued
`this practice as a manager at Miller, Kaplan, Arase & Co.,
`LLP, as partner at Hurewitz, Boschan & Co., LLP, and a
`principal at Green Hasson Janks, where I was the music
`practice leader and head of the forensics department.
`
`Examples of past matters on which I worked during my tenure
`at past firms include those involving Apple Corps. (which
`owns The Beatles marks), ALAD (which owns Avril Lavigne’s
`marks) and 19 Recordings (which owns American Idol’s
`marks).
`
`In 2015 I founded Boschan Corp., which provides forensic
`accounting, consulting and contract audit services. A
`sample of current music-related clients at Boschan Corp.
`for which my work includes one or more elements of
`trademark rights and/or damages claims valuation include:
`
`
`o BMG Rights Management
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 6 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
`o Counsel for Elias Arts Music Library
`
`o Counsel for Evilive Music (Owns Danzig marks)
`
`o Julia Negron (re: The Doors)
`
`o Katy Perry
`
`o Tom Petty Estate
`
`
`
`Beyond long track record of providing consulting and
`forensic accounting services to the music industry, my
`qualifications include serving as faculty at Los Angeles
`College of Music, where I currently teach music royalty
`accounting and applied economics courses, both of which
`cover certain economic damages valuation techniques as part
`of the school’s four-year music business degree programs.
`
` I
`
` also served for four (4) years as the national treasurer
`of The Association of Independent Music Publishers (AIMP),
`where I have spoken on the topic of valuation in the music
`industry and was responsible for New York, Nashville and
`Los Angeles finances.
`
`Frequently I am engaged to speak on music industry
`financial topics and have completed dozens of speaking
`engagements. These include public speakerships at South by
`Southwest, The Sports & Entertainment Symposium, California
`Lawyers for the Arts, The California Copyright Conference,
`The Beverly Hills Bar Association, Loyola Law School and
`The University of Southern California as well as private
`speakerships such as at law firms such as Glaser Weil and
`Trope & Trope.
`
`Over the past decade, I have authored the publications set
`forth in Appendix C hereto and was recently asked to write
`an article regarding copyright valuation for a legal
`publication. I have served as a source about the value of
`certain music copyrights to publications including USA
`Today, Billboard, and The Wall Street Journal and am known
`as one of the leading experts worldwide in the field of
`music rights, royalties and damages valuation.
`
`It may be worth noting that over 170 individuals have
`publicly endorsed my industry knowledge of licensing, over
`130 individuals have endorsed my music industry knowledge,
`and over 90 individuals have endorsed my knowledge of
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 7 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
`
`
`
`
`intellectual property, many of them accomplished experts
`themselves.
`
`Please see Appendix D for a list of cases in which I have
`testified over the past four years, not including testimony
`I am scheduled to give on July 10, 2018 in the matter of
`Evilive Music v. The End Records.
`
`
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`
`
`
`
`
`Confidential
`Page 8 of 37
`
`MTB v. MTI
`Wednesday, July 4, 2018
`
`
`
`3. FACTS AND OPINIONS
`
`i.
`
`Background Facts
`Based on my review of documents listed on Appendix E,
`and an interview on June 27 with Mr., Harold Douglas
`Gray (aka “Doug Gray”), I understand the following
`background facts:
`
`
`• Petitioner was incorporated in January 1974
`
`• Registrant was incorporated in February 1978
`
`• Registrant purchased masters recorded by the
`Marshall Tucker Band on October 22, 1980
`
`
`• Registrant purchased songs written by members of
`the Marshall Tucker Band on October 22, 1980 and
`
`sold them on August 5, 1998
`
`
`• As of the date hereof:
`o Gray is the sole owner/shareholder of
`Petitioner
`
`
`
`o Gray is 20% owner of Registrant
`
`
`
`o Mr. Ronald Rainey is the 80% and controlling
`shareholder of Registrant
`
`
`• Rainey is the former artist manager of The
`Marshall Tucker Band
`
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 9 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
`
`
`
`
`
`ii.
`
`The Public’s Perception of The Identity of The
`Marshall Tucker Band
`According to a report by BTI Appraisal commissioned by
`Registrant:
`
`
`“In 2014, The Marshall Tucker Band logo was
`
`voted by Grammy magazine as one of the top 10
`
`most distinctive logos of all time.”
`
`
`
`In order to assess rights to The Marshall Tucker Band
`name, logo, service marks and trademarks
`(collectively, the “Marks”), one must first answer the
`question: Who does the public think the Marshall
`Tucker band is?
`
`This is because, as Donald Passman, Esq. paraphrases
`in his book “All You Need to Know About the Music
`Business” (referred by the Los Angeles Times as the
`“industry bible”):
`
`
`“The rule is that you get rights in a mark
`
`by actually using the name and having it
`
`associated with you in the mind of the
`
`public.”
`
`
`
`Registrant claimed in its first set of interrogatory
`responses that:
`
`
`“MTI was using the Name ‘The Marshall Tucker
`
`Band’ or ‘Marshall Tucker Band’ in
`
`connection with recordings and masters as of
`
`February 22, 1984 … and earlier, and was
`
`using the name in connection with all of the
`
`band's recorded songs from the date MTI was
`
`formed in 1978.”
`
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 10 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
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`
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`Upon investigation, we found this claim to be at least
`
`partly untrue. Namely, the above-referenced masters,
`
`recordings, and songs that the band recorded were not
`
`acquired by Registrant until 1981 (not 1978). As for
`
`the songs (i.e., musical compositions), in the music
`
`industry, songs are attributed to individual
`
`songwriters, not to recording artists, so the Marks
`
`should not have been used in connection with songs,
`
`only masters. However, in any case, the songs were
`
`sold by Registrant in 1998. Therefore, according to
`
`the available information, in the unlikely event that
`
`Registrant used the Marks in connection with
`
`exploitation of songs ever, Registrant could not have
`
`been using the name “The Marshall Tucker Band” in
`
`connection with the songs since 1998, when it sold the
`
`songs. Further, it has not used the Marks in
`
`connection with any Marshall Tucker Band services for
`
`decades.
`
`
`
`On the other hand, the available information clearly
`
`demonstrates that The Marshall Tucker Band has been
`
`using its name since 1971 and Petitioner - The
`
`Marshall Tucker Band and its business entity, MTB,
`
`Inc. (also referred to herein as “MTB”) - has been
`
`using the name The Marshall Tucker Band continuously
`
`in interstate commerce for both products and services
`
`since January 15, 1974, years before Registrant was
`
`established.
`
`
`
`As the public’s encyclopedia Wikipedia summarizes:
`
`
`
`“The Marshall Tucker Band is an American
`
`rock band from Spartanburg, South
`
`Carolina…The Marshall Tucker Band helped
`
`establish the Southern rock genre in the
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 11 of 37
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`Wednesday, July 4, 2018
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`early 1970s…[and] the band has recorded and
`
`performed continuously under various lineups
`
`for 45 years.”
`
`
`
`
`
`
`
`The most comprehensive and well-established online
`music guide, AllMusic.com, states:
`
`
`“During the years since the original band
`
`dissolved, the group has had country chart hits,
`
`toured constantly, made forays into the blues and
`
`adult contemporary, and suffered the loss of
`
`founding member Toy Caldwell, who died in 1993.
`
`Some bandmembers left, some joined, and some
`
`stayed right where they were, but through it all,
`
`the Marshall Tucker Band endured. The band
`
`continued to record steadily, maintained a loyal
`
`fan base, and eventually began to receive their
`
`due as Southern rock pioneers.”
`
`
`
`Therefore, it is not surprising that during my
`research of facts regarding this matter I was not able
`to identify a single case when a member of the public
`perceived The Marshall Tucker Band to be a record
`label, a publisher, a recording, a CD, a stream, a
`song, a license, a product or a download.
`
`Instead, the results of my research of public
`information revealed that the public perceives the
`Marshall Tucker Band to be that certain band of
`musical artists:
`a. Whose website, marshalltucker.com, they visit
`
`b. Whose authorized merchandise (e.g., tee-shirts)
`
`they buy
`
`c. Whose Facebook fan page they like
`
`d. Who they buy concert tickets from TicketMaster or
`
`eBay to see perform
`
`e. Whose recordings – released by various labels -
`
`they buy or subscribe to music services to hear
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

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`Confidential
`Page 12 of 37
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`Wednesday, July 4, 2018
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`
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`f. Whose photos, backstage passes, and other
`
`memorabilia is sold on eBay for hundreds of
`
`dollars
`
`g. Who was recently nominated for induction into the
`
`Rock ‘n’ Roll Hall of Fame and nominated for a
`
`1976 Grammy Award for “Best Country Instrumental
`
`Performance” its recorded single Long Hard Ride
`
`
`
`Moreover, my findings include that the public does not
`perceive The Marshall Tucker Band Marks to be directly
`associated with Registrant in any meaningful manner,
`just as it does not perceive The Allman Brothers Band
`or The Doors names and logos to be owned by their
`respective labels (Universal Music Group, Sony, and
`Warner Music Group, which respectively own Allman
`Brothers Band’s and The Doors’ master recordings).
`
`Instead, the public perceives that, as the United
`States Patent and Trademark Office (“USPTO”) itself
`states on its website:
`
`
`“Intellectual property rights give musicians and
`
`artists control over their artistic works … as
`
`well as their name and brand.”
`
`
`
`Accordingly, (i.e., since the public generally assumes
`use of a band name is controlled by the band) it is no
`surprise that, according to a recent Google search of
`“Marshall Tucker Band,” one of the Google searches
`most associated with “Marshall Tucker Band” is “Doug
`Gray Marshall Tucker Band,” because Doug Gray is one
`of the founding members of the band and the owner of
`Petitioner (see Figure 1).
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
`
`Confidential
`Page 13 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
`
`Figure 1 Screenshot of Searches for "Marshall Tucker Band" Per Google.com on June 22, 2018
`
`
`
`
`
`Incidentally, if the public’s perception of a band
`name was more commonly associated with the owner of
`the master recordings than the artists whose works are
`thereon embodied, the boilerplate language in
`recording or master acquisition agreements would
`transfer ownership of artists’ trademarks, service
`marks or name and likenesses. However, in the tens of
`hundreds of record agreements I have seen, I have
`never seen any band or recording artist trademark or
`service mark or name and likeness ownership
`transferred to a record company. (Even in the case
`where the owner of a former music client’s masters
`required him to change his name from “Tip” (to “T.I.”)
`to avoid confusion with the recording artist “Q-Tip,”
`the owners of the masters did not claim ownership to
`the name or marks related to “T.I.”)
`
`Instead of claiming names and marks for themselves,
`the industry standard is for owners of masters to take
`measures to make sure that the public exclusively
`associates a band name with the band itself and that
`the band controls any relevant marks. As stated by my
`former college professors and world-renowned music
`business experts Jeffrey Brabec, Esq. and Todd Brabec,
`Esq. in the seventh edition of their book Music, Money
`& Success (Schirmer Trade Books, A Part of the Music
`Sales Group, 2011) (described by the American Bar
`Association as the “Leading work dealing with the nuts
`and bolts economics of the music industry”) (bold
`added for emphasis):
`
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`

`

`
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`Confidential
`Page 14 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
`“Most recording agreements will contain a
`
`warranty by the artist that the group or
`
`professional name being used is actually owned
`
`by the artist and that no other performer has
`
`the right to use that name in the record
`
`business. In this regard, many contracts will
`
`give the record company the right to conduct a
`
`trademark search investigation to find out
`
`whether or not the group name is being used by
`
`anyone else. The record company is many times
`
`also given the right to file a federal
`
`trademark registration for the name in favor of
`
`the group if protection has not already been
`
`secured...”
`
`
`
`Thus, it appears that both the general recording
`industry and I share the opinion that the public
`associates band names and marks with bands such as
`Petitioner, as opposed to master owners such as
`Registrant. I conclude based on my research, that
`this Matter is no exception and that, were the United
`States Patent Trademark Office “USPTO” to fail to
`cancel the registration of the Marks to Registrant, it
`would contravene the intentions of trademark and
`service mark rights to protect consumers from
`confusion (i.e., as to who the Marshall Tucker Band
`is).
`
`Registrant is a Non-Exclusive Licensee Under the 1984
`Agreement and Industry Standards
`a. The Plain Language of the 1984 Agreement is
`Merely a License to MTI
`Aside from the fact that the public
`overwhelmingly associates the Marks with
`Petitioner, the contractual basis cited by
`Registrant to support its claim to the Marks is
`invalid in my opinion.
`
`As Donald Passman, Esq. states in the seventh
`edition of his book All You Need to Know About
`the Music Business (RosettaBooks, LLC, 2010)
`
`BOSCHAN.COM | (424) 248-8866
`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
`iii.
`
`

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`
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`Confidential
`Page 15 of 37
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`
`
`(called the “industry bible” by the Los Angeles
`Times and written for musicians):
`
`
` “Can you guess what your most
`
`important asset is?
`
`
`
` Apart from your good looks, charm, and
`
`talent, your most important asset is the
`
`group name. So, whatever else you do,
`
`by all means figure out what to do with
`
`your group name…if you only deal with
`
`your name in a written agreement, I will
`
`be happy…”
`
`
`
`Based on the similar and best available advice
`of Passman’s esteemed colleague, Ronald Taft,
`Esq. who counseled the members of The Marshall
`Tucker Band, the band indeed did diligently
`“deal with” its name in the written agreement
`dated February 22, 1984 between The Marshall
`Tucker Band, Inc., M.T. Industries, Inc., Toy
`Caldwell, Jerry Eubanks, Doug Gray, George
`McCorkle and Paul Riddle (the “1984
`Agreement”).
`
`In various answers to interrogatories, the
`basis cited by the Registrant for its claim of
`ownership of the Marks for products and
`services is such 1984 Agreement.
`
`Under the plain language of the first sentence
`of Section 4 of the 1984 Agreement, which very
`clearly sets forth the agreement among the
`parties as who exactly solely and exclusively
`own the Marks (line breaks, bold and
`identifiers in brackets added for clarity):
`
`
`“Marshall Tucker Band Name
`
`[Band members] Toy, Paul and George
`
`agree that the name Marshall Tucker
`
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`Confidential
`Page 16 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
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`
`
`
`Band and any names similar thereto
`
`(collectively "Name") shall be the
`
`sole and exclusive property of:
`
`(i)
`
`MTB [Petitioner] with
`
`respect to - future live
`
`performances,
`
`(ii) such companies as [band
`members] Doug and Jerry
`
`may elect with respect
`
`to the recordings
`
`recently financed by
`
`Doug ("Doug's Record")
`
`and any and all other
`
`recordings to be done in
`
`the future, and
`
`(iii) MTB with respect to any
`and all other media,
`
`areas and uses. …”
`
`
`
`To my knowledge, Registrant has failed to cite
`any reason why the above language, which
`effectively grants to Petitioner nearly all
`exclusive ownership rights to the Marks, is
`inapplicable.
`
`Note that in my investigation, I found that
`pursuant to an agreement dated January 31, 1996
`between H. Douglas Gray, Jerry W. Eubanks,
`Marshall Tucker Band, Inc. and MTB, Inc. (the
`“1996 Agreement”), Eubanks relinquished his
`rights to the name “The Marshall Tucker Band”
`and similar names. Registrant was not a party
`to this agreement and did not pay consideration
`to Eubanks for his rights to the name because
`Registrant merely had a license to use the name
`and was not impacted by this change in
`ownership of the Marks.
`
`
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`10833 WASHINGTON BLVD., SUITE 1
`CULVER CITY, CA 90232
`
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`Confidential
`Page 17 of 37
`
`MTB v. MTI
`Wednesday, July 4, 2018
`
`In any case, since Registrant is undoubtedly
`granted no ownership of the Marks in the first
`sentence of the “Marshall Tucker Band Name”
`section 4 of the 1984 agreement, I believe it
`must be relying on the sentences that follow
`for the basis of its claims. Section 4 of the
`1984 agreement continues:
`
`
`“…Without limiting the foregoing,
`
`everyone agrees that MTB, Doug, Jerry
`
`and such companies shall have the
`
`right to so use said Name with a band
`
`comprised of such persons, and number
`
`of persons, as MTB, Doug and Jerry
`
`may elect. Anything to the contrary
`
`notwithstanding, MTI [Registrant]
`
`shall have the right to use, and to
`
`permit others to use, the Name in
`
`connection with all previously
`
`released masters of the band and,
`
`all, other recordings of the band
`
`made prior to the date hereof (other
`
`than Doug's Record). Neither Toy,
`
`Paul, nor George shall have the right
`
`to use the Name in any manner
`
`whatsoever, whether with respect to
`
`live performance or otherwise, but
`
`they shall have the right to state as
`
`part of - their biography on the back
`
`(but not the front) of an album
`
`jacket (or similar packaging) that
`
`they were formerly with The Marshall
`
`Tucker Band.”
`
`
`
`However, such last three sentences of Section 4
`of the 1984 agreement do not convey ownership
`to any party. They merely convey licenses to
`
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`
`

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`Confidential
`Page 18 of 37
`
`MTB v. MTI
`Wednesday, July 4, 2018
`
`use the name in manners that might not
`otherwise be allowed – or were definitely not
`otherwise allowed without a separate license
`agreement in the case of Registrant’s uses – by
`the first sentence. Thus, the following
`sentence:
`
`
`“Anything to the contrary
`
`notwithstanding, MTI shall have the
`
`right to use, and to permit others to
`
`use, the Name in connection with all
`
`previously released masters of the
`
`band and, all, other recordings of
`
`the band made prior to the date
`
`hereof (other than Doug's Record)”
`
`
`
`constitutes a non-exclusive license for
`specific uses, plain and simple.
`
`b. Intentions of Parties in Light of Other
`Documents and Industry Standards
`Although the 1984 Agreement language alone is
`clear and sufficient to form the basis for an
`opinion as to the exclusive owners of the
`Marks, when we consider in our analysis the
`intentions of the parties based on other
`documents and then-current industry standards,
`we arrive at the same conclusion, as detailed
`below.
`
`
`1. Other Documents:
`Until relatively recently, Registrant
`evidently shared the opinion that
`Petitioner is the primary owner of the
`Marks. In fact, according to my June 27,
`2018 telephone conversation with him,
`minority shareholder of Registrant Doug
`Gray – a founding member of The Marshall
`Tucker Band - still shares this opinion
`and it is only the now-majority
`shareholder of Registrant, Ron Rainey,
`formerly the manager of The Marshall
`
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`
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`Confidential
`Page 19 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
`Tucker Band, who has changed his views on
`the owner(s) of the Marks.
`
`According to the documents provided by
`counsel for Petitioner as listed on
`Appendix E hereto, as the then manager of
`The Marshall Tucker Band, Rainey in 1999
`effectuated the engagement on behalf of
`Petitioner of experienced music trademark
`attorney Cheryl H. Hodgson, Esq. to
`register Petitioner’s Marks in New York,
`California, Tennessee and South Carolina.
`I have personally had the occasion to work
`with Ms. Hodgson and can attest to how
`thorough she is in her work and do not
`believe that she would have incorrectly
`registered the marks in the wrong entity’s
`name. Perhaps more germane to this matter
`is the fact that Rainey himself in his own
`related correspondence did not attribute
`the Marks to Registrant, but to Doug Gray
`(who was by that point the 100%
`shareholder of Petitioner and by that
`point was party to the 1996 Agreement
`whereby Eubanks sold his ownership in the
`Marks, leaving only Petitioner and Gray as
`the sole and exclusive owners of the
`Marks).
`
`Petitioner’s legal counsel at the Wilkes
`Law Firm PA asked Rainey in 2004 if he was
`handling the renewal of such
`registrations, however, I understand from
`Petitioner’s counsel that the state
`registrations of the Marks, which cover a
`variety of services and products including
`recordings, may not all have been renewed.
`However, Petitioner’s counsel provided us
`with renewal documentation of Petitioner’s
`South Carolina renewals of Marks
`registration, which Petitioner’s counsel
`states “have been maintained consistently
`since they were first registered, perhaps
`in the 1970s. We have the renewal
`certificates from 1999, 2004, 2009 and
`
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`CULVER CITY, CA 90232
`
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`Confidential
`Page 20 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
`2014…, and we will be renewing next year,
`also.”
`
`Not only did Rainey oversee the
`registration and renewals (or lack thereof
`as the case may be) in Petitioner’s name,
`but in his own document dated March 3,
`2010 entitled “Marshall Tucker Roadmap,”
`Rainey stated that Petitioner “is the
`owner of the band name, logo, merchandise
`rights, and is the legal touring entity”
`of The Marshall Tucker Band.
`
`Notably, Rainey’s description of the role
`of Registrant is simply that it “owns the
`master recording rights to the first seven
`Marshall Tucker Band albums.”
`
`This document shows that the 1984
`agreement did not transfer ownership of
`the Marks to Registrant. (And no
`subsequent documentation substantiating
`the basis for Registrant’s claim of
`ownership of the Marks has been produced
`to my knowledge.)
`
`According to all of the documents we
`reviewed, it was only relatively recently
`that Rainey first claimed that Registrant
`was an owner of the Marks.
`
`
`
`2. Industry Standards: Beyond documents,
`during my analysis I considered whether
`section 4 of the 1984 Agreement made sense
`in light of industry standards during the
`1980s. During the course of my career, I
`have reviewed at least dozens (if not
`hundreds) of 1970s and 1980s contracts
`between artists (including bands) and
`master rights holders.
`
`
`
`As shown in the chart on the following
`page, I compared to section 4 of the 1984
`Agreement the typical 1970s and early
`1980s deal points governing uses by master
`
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`
`

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`Confidential
`Page 21 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
`
`
`
`rights holders of artists’ name and
`likeness. Given the brevity of the 1984
`Agreement and its letter format, based on
`such analysis, I conclude that the third
`sentence of section 4 of the 1984
`Agreement largely comports with then-
`current industry standards for a name and
`likeness license to a master rights
`holder, so it is unlikely that the
`parties, who were represented by counsel
`who were knowledgeable about industry
`standards, intended anything significantly
`different than what the language in
`section 4 states.
`
`
`
`
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`
`

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`Confidential
`Page 22 of 37
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`MTB v. MTI
`Wednesday, July 4, 2018
`
`
`
`
`
`
`Industry Standard
`
`1984 Agreement
`
`Allows the master owners the
`
`Specified in the third sentence of
`
`right to use and allow others to
`
`the 1984 Agreement.
`
`use the names and likeness
`
`
`
`concerning artists
`
`The scope of use is limited to be
`
`The 1984 agreement specifies that
`
`in connection with phonog