## Facts

- Herb Reed founded the vocal group “The Platters” in 1953 and served as its manager and an original singer.
- Paul Robi joined the group in 1954 as a replacement member; Martha Robi never performed with the group.
- In 1956, the group members, including Reed and Paul Robi, assigned their interests in the name “The Platters” to The Five Platters, Inc. (FPI) and entered employment arrangements with FPI in exchange for equal shares of stock.
- Paul Robi ceased his relationship with the group in 1965 after a felony narcotics conviction and did not return to the group managed by Reed.
- In 1988, Paul Robi executed an assignment purporting to transfer his rights in “The Platters” to Martha Robi and died shortly thereafter.
- After the 1988 assignment, Martha Robi managed and presented a musical group called “The Platters” whose performers had no connection to the original group.
- Martha Robi sued in federal district court asserting exclusive rights to “The Platters” based on the 1988 assignment; Reed and related defendants claimed superior rights based on Reed’s founding and continuing association with the group.
- The district court granted summary judgment for Reed and the other defendants, concluding Paul Robi had no individually assignable rights and that Reed was entitled to use the mark to the exclusion of Martha Robi.

## Issues

1. Whether Paul Robi held an individual proprietary interest in the “The Platters” mark that he could validly assign to Martha Robi in 1988.
2. Whether Martha Robi acquired enforceable rights in the “The Platters” service mark based on that assignment.
3. Whether Herb Reed, as founder and continuing member/manager, held superior rights to use “The Platters” to the exclusion of Martha Robi.

## Decision

- The Ninth Circuit affirmed the grant of summary judgment for Reed and the other defendants.
- The court held Paul Robi had no individual right in “The Platters” that could be assigned to Martha Robi.
- The court held the 1988 assignment to Martha Robi was invalid.
- The court held Reed had the right to use the “The Platters” service mark to the exclusion of Martha Robi.

## Legal Principles

- When members of a performing group assign their interests in the group name to a corporation, individual members do not retain separate personal trademark ownership in the name inconsistent with that transfer.
- A departing group member who permanently leaves and does not maintain continuity with the performing group generally does not retain an independent proprietary right to the group name that can later be assigned.
- Ownership of a performing-group mark tracks the party that maintains continuity of the services offered under the mark and is positioned to control the quality associated with the mark’s goodwill.
- Use of a group name by performers with no authentic connection to the original group supports denial of claimed rights where the asserted ownership rests on an invalid assignment and would likely mislead consumers about source or continuity.

## Conclusion

The Ninth Circuit upheld judgment for Herb Reed because Paul Robi’s earlier transfer of interests and his permanent departure left him with no individually assignable rights in “The Platters,” while Reed’s continuous association and ability to control the quality and continuity of performances supported his exclusive entitlement to the mark.


Robi v. Reed, 173 F.3d 736 (9th Cir. 1999)