Opinion
18 MS 0302.
January 19, 2007
MEMORANDUM OPINION AND ORDER
On January 10, 2007, plaintiff William Hart moved in Part I by order to show cause to enjoin defendant Wilbert Hart from performing at a concert on January 13, 2007 at the Paradise Theater in New York. Plaintiff claimed that the defendant was acting in violation of a permanent injunction issued by the United States District Court for the District of New Jersey, which prevents the defendant from performing and promoting himself as a current member of the Delfonics singing group. On January 12, 2007, this Court conducted a hearing to determine whether an injunction preventing Wilbert Hart from performing at the January 13, 2007 concert should issue. At the end of the hearing I denied plaintiff's motion for an injunction. My oral opinion was not transcribed. This Opinion gives the Court's reasons for its ruling.
I. BACKGROUND
A. Factual and Procedural History
Brothers William Hart and Wilbert Hart were members of the Delfonics, a popular soul music group that produced hit songs such as "La-La (Means I Love You)" and "Didn't I (Blow Your Mind This Time)." At some point, the brothers parted ways, and a dispute developed over which brother could continue to perform under the name the Delfonics.
On June 30, 1998, District Judge Mary L. Cooper of the United States District Court for the District of New Jersey ruled that Wilbert Hart had infringed William Hart's trademark and servicemark in the name the Delfonics by performing "under the names THE DELFONICS, THE DELPHONICS, WIL HART, and THE DELFONICS and/or WIL HART and THE DELPHONICS." See Hart v. Hart, Civ. No. 95-1551 (MLC), slip op. at 1-2 (D.N.J. Jan. 26, 2001). As a result, Judge Cooper issued a permanent injunction, dated March 24, 2000 and amended on January 26, 2001, that ordered, inter alia, that:
Wilbert Hart, his agents, servants, employees and attorneys, and those persons in active concert or participation with Wilbert Hart who receive actual notice of this Order are hereby ENJOINED from: (1) using, performing under, promoting services or goods under, or otherwise employing the names THE DELFONICS, THE DELPHONICS, or any name confusingly similar thereto; except that Wilbert Hart may employ the name WIL HART [or WILBERT HART] FORMERLY OF THE DELFONICS [or DELPHONICS], if the word "FORMERLY" appears in typeface or audible volume at least the same size as the word "DELFONICS" or "DELPHONICS." . . .Id. at 2.
B. Plaintiff's Present Motion
In his present motion, plaintiff alleged that defendant Wilbert Hart, in connection with Heart Soul Productions and 98.7 Kiss FM radio station ("Kiss FM"), violated Judge Cooper's permanent injunction by promoting a January 13, 2007 concert at the Paradise Theater in New York using the names "WIL HART/DELFONICS" and "WIL HEART/DELFONICS." Pl.'s Att'y Affirmation at 2, 4. As a result, plaintiff requested that this Court: (1) enjoin Wilbert Hart from performing at the January 13, 2007 concert, and (2) hold the Defendant and those in active concert with him in contempt of court for violating Judge Cooper's permanent injunction.
C. The January 12, 2007 Hearing
On January 12, 2007, this Court conducted a hearing on plaintiff's motion, and heard presentations from counsel for the plaintiff, counsel for Kiss FM, and promoters from Heart Soul Productions. The participants at the hearing made the following relevant factual assertions.
Wilfredo Pesante, counsel for the plaintiff, presented to the Court a large color poster, approximately 3.5 feet by 2.5 feet, advertising a "One Love Reggae Legends in Paradise" concert scheduled for January 13, 2007 at the Paradise Theater in New York. The poster lists several classic soul acts as part of the concert, including "WIL HART/DELFONICS," and features a photograph of a soul group that is captioned "WIL HEART/DELFONICS." The poster indicates that the concert is presented by Heart Soul Productions. The poster also includes the logo of the Kiss FM radio station. Mr. Pesante indicated that, to the best of his knowledge, plaintiff William Hart saw and removed this poster from a wall in Philadelphia sometime shortly before January 3, 2007. (William Hart did not attend the hearing and accordingly his testimony on this and other relevant factual issues was not available.)
Mr. Pesante also presented evidence that Heart Soul Productions and Kiss FM had advertised Wilbert Hart as "Wil Hart and the Delfonics" for a concert in 2003. Ray Chandler and Charles Leake, promoters at Heart Soul Productions, provided a contrasting account and explanation of this event. These disputed facts, although potentially relevant to the contempt motion, were of minimal use in determining whether the Court should prevent Wilbert Hart from performing at the January 13, 2007 concert at the Paradise Theater.
James Rosenfeld, counsel for Kiss FM, asserted that Kiss FM had taken measures to ensure that Wil Hart would be referred to as "formerly of the Delfonics" when the radio station promoted or advertised the January 13, 2007 concert. In support, Mr. Rosenfeld presented to the Court: (1) a printout of the Kiss FM web page promoting the January 13, 2007 concert, which lists "WILL HART (formerly of the DELFONICS)" as a performer; (2) an e-mail sent by Chris Nadler of Kiss FM on December 20, 2006 providing details for the January 13, 2007 show, which lists "WIL HART (FORMERLY OF THE DELFONICS)" as a performer; and (3) two sheets of copy provided to Kiss FM DJs that promote the January 13, 2007 concert without any reference to Wil Hart or the Delfonics. Mr. Rosenfeld indicated that, although it was perhaps possible that a Kiss FM DJ had at some point referred to "Wil Hart and/of the Delfonics" when promoting the concert, the Kiss FM radio station had, as a matter of general policy, been referring to Wil Hart in the proper manner. Mr. Rosenfeld also stated that Kiss FM has been advertising for this show since late November or early December 2006, and did not receive any complaints from the plaintiff until around January 11, 2007.
Ray Chandler and Charles Leake, promoters at Heart Soul Productions, explained that the poster produced by Mr. Pesante was the result of a graphic design error that had subsequently been corrected. Chandler and Leake asserted that, to promote the concert, they had submitted information to a graphic designer that referred to "Wil Hart (formerly of the Delfonics)," but that the graphic designer had changed the text to "Wil Hart/Delfonics" for reasons related to aesthetics and spacing. Furthermore, Chandler and Leake stated that, after they learned about the graphic design problem around December 17, 2006, they corrected the graphic design around December 19, 2006 so that a revised poster properly referred to "WIL HART FORMERLY OF THE DELFONICS." In support, Chandler and Leake presented to the Court: (1) a letter from Pamela Hart and William Hart to Heart Soul Productions and the Paradise Theater, dated December 17, 2006, which complains that advertisements for the January 13, 2007 show at the Paradise Theater have been misusing the Delfonics name; (2) an e-mail from Heart Soul Productions to William Hart, dated December 19, 2006, which states: "It seems that there was some adjustments made by the graphic artist which may be causing some confusion, we have taken appropriate action to correct their mistake, and will forward you copy."; and (3) an e-mail from Heart Soul Productions to William Hart, dated December 19, 2006, with subject line, "Re: Graphic type correction to Jan 13, 2007 event," which includes a copy of the revised poster for the January 13, 2007 concert listing "WIL HART FORMERLY OF THE DELFONICS" as a performer. To explain the poster presented to the Court by Mr. Pesante, Chandler and Leake suggested that this poster must have been one of a small number of posters that had been printed prior to the graphic design correction.
As an initial matter of procedure, I note that Heart Soul Productions, a limited liability company, cannot proceed pro se; it must be represented by counsel in litigation. See, e.g., Jones v. Niagara Frontier Transp. Auth., 722 F.2d 20, 22 (2d Cir. 1983). Nonetheless, the Court may properly consider the statements of Leake and Chandler, in their roles as fact witnesses rather than counsel for Heart Soul Productions.
Mr. Pesante initially suggested that this letter was fraudulently created by Heart Soul Productions because it referred to "William Hart, the original Lead Singer of the Delfonics," a title Mr. Pesante insisted that he had never known William Hart to use. But Chandler and Leake produced a copy of another letter, sent by William Hart to Paradise Theater, regarding a matter unrelated to the present dispute, in which William Hart similarly referred to himself as "original Lead Singer of the Delfonics."
In the revised poster promoting the January 13, 2007 concert, the word "FORMERLY" appears in typeface that is the same size as the word "DELFONICS."
After reviewing the December 19, 2006 e-mails presented to the Court by Heart Soul Productions, Mr. Pesante claimed that these e-mails were fraudulently created because: (1) the subject line in the e-mails was in boldface type and the date line was in black type, while the to and cc lines were in a much lighter type, and (2) the e-mail printouts read "Friday, January 12, 2007 America Online: RCAHeartandSoul" at the bottom of each page. After comparing the Heart Soul Productions e-mails with the Kiss FM e-mail sent by Chris Nadler, Mr. Pesante conceded that the January 12, 2007 line at the bottom of the page could simply reflect the date that the e-mail was printed out, but Mr. Pesante maintained that a legitimate e-mail would feature a consistent shade of text, rather than lighter and darker text. In response, Leake defended the legitimacy of the e-mails, and explained that the particular appearance of an e-mail printout varies based on how the system is configured.
It is the view of this Court that the testimony of William Hart would have greatly assisted the Court in evaluating a number of relevant matters. He could have provided useful testimony about when and where he observed the concert poster and about the validity of alleged communications between Heart Soul Productions and himself in December 2006. However, as noted, William Hart was not present at the January 12, 2007 hearing. Mr. Pesante indicated to the Court that William Hart did not attend the hearing because he was "ill." I accept counsel's representation that William Hart told him that, but no affidavit or medical note was provided to support this assertion. Mr. Pesante suggested at the end of the hearing that the Court get William Hart on the telephone. I rejected that suggestion as not feasible and untimely.
II. DISCUSSION
A. Motion for Contempt
Plaintiff requests that this Court hold the defendant, and all persons acting in concert with him to promote the January 13, 2007 concert, in contempt of court for violating the permanent injunction issued by Judge Cooper. But such a contempt motion is not properly before this Court, in the Southern District of New York. Rather, as Mr. Pesante conceded at the hearing, a contempt motion for violation of a permanent injunction should be brought before the court that issued the injunction — here, the United States District Court for the District of New Jersey. For this reason, I decline to hold the defendant or associated persons in contempt of court, but express no opinion as to the appropriate resolution of that issue should it arise before the New Jersey District Court.
B. Motion to Enjoin Wilbert Hart from Performing
Plaintiff also requests that this Court enjoin defendant Wilbert Hart from performing at the January 13, 2007 concert at the Paradise Theater. This request is denied for the following reasons.
First, Judge Cooper's permanent injunction does not prevent Wilbert Hart from performing or referring to the Delfonics altogether. Instead, the order expressly provides: "Wilbert Hart may employ the name WIL HART [or WILBERT HART] FORMERLY OF THE DELFONICS [or DELPHONICS], if the word "FORMERLY" appears in typeface or audible volume at least the same size as the word "DELFONICS" or "DELPHONICS." Hart v. Hart, Civ. No. 95-1551 (MLC), slip op. at 2 (D.N.J. Jan. 26, 2001).
Second, the evidence indicates that plaintiff William Hart was aware of problems with how the concert was being promoted at least by December 17, 2006, and that plaintiff saw the offending poster in Philadelphia sometime before January 3, 2007. Yet plaintiff waited until January 10, 2007, just three days before the concert, to request an injunction preventing Wilbert Hart from performing. This delay constitutes laches and undermined William Hart's claim that he would be irreparably harmed by Wilbert Hart's performance. But Wilbert Hart would have been harmed if the Court had enjoined him from performing. These equitable considerations militated against an injunction. In addition, the producers of the concert would have been harmed by the injunction. Prejudice to third parties may be considered by a court of equity.
Third, although the poster presented to the Court by Mr. Pesante appears to violate Judge Cooper's order, Heart Soul Productions presented credible evidence that they undertook to correct the problematic use of "the Delfonics" in the poster. I am not persuaded by Mr. Pesante's allegations that the December 19, 2006 e-mails from Heart Soul Productions to William Hart were fraudulently created. Instead, I find there is evidence that Heart Soul Productions and Kiss FM made reasonable efforts to bring references to the Delfonics into compliance with Judge Cooper's order.
Fourth, there are factual uncertainties that could have been clarified by plaintiff William Hart, but he was not present at the hearing. As noted above, Mr. Pesante indicated that William Hart did not attend the hearing because he was ill, but no affidavit or medical note was provided to support this assertion. William Hart's absence leaves a gap in the plaintiff's evidence. As plaintiff, the moving party, bears the burden of persuading this Court that an injunction is justified, this gap in evidence is ultimately fatal to the motion.
For the reasons described above, the plaintiff has not met his burden of proof, he was guilty of laches, and the balance of hardships tips against him. I therefore declined to enjoin Wilbert Hart's performance at the January 13, 2007 concert at the Paradise Theater. However, at the hearing I imposed one condition: that Heart Soul Productions take reasonable steps to inform the audience that Wil Hart was formerly a member of the Delfonics. Wil Hart was to be introduced by the MC as "Wil Hart, formerly of the Delfonics," and any concert pamphlet or program was to refer to "Wil Hart, formerly of the Delfonics." This clarification would place the concert performance in substantial compliance with Judge Cooper's order. Even if some actions by the defendant or parties acting in concert with him violated Judge Cooper's order in some respects, I concluded that Wilbert Hart's performance at the January 13, 2007 concert would not cause further harm or prejudice to the plaintiff's interests if Wilbert Hart was presented at the concert in the manner that I have described.
III. CONCLUSION
For the foregoing reasons, plaintiff's motion to hold the defendant and those acting in concert with the defendant in contempt of court was denied. Plaintiff's motion to enjoin Wilbert Hart from performing at the January 13, 2007 concert at the Paradise Theater was denied, on the condition that Heart Soul Productions take reasonable steps to inform the audience that Wil Hart was performing as a former, and not current, member of the Delfonics.It is SO ORDERED.