PART ONE:  GREAT WHITE: THE INTRODUCTION

INTRODUCTION

Great White are a multi-platinum rock band, performing and recording under the GREAT WHITE Mark since 1982. Because of a history of self-destructive behavior, singer Jack Russell took a hiatus from the band in August, 2010, when he required surgery for a perforated bowel. At that time, Russell was performing on a stool and had fallen on stage. He was a danger to himself and the band’s reputation. The band brought in a new singer. They played dozens of shows without Russell. It was contemplated that Russell would return, but he did not regain his health. After nearly eighteen months, Russell told the wife of guitarist Mark Kendall that he was “taking the band’s name.” Ms. Kendall called a lawyer, who advised her to file for a trademark registration on GREAT WHITE, which she did in the name of the remaining band members. Over the weekend of December 9, 2011, Russell wrote the band a series of manic and disturbing emails, then announced he was starting his own band using the GREAT WHITE Mark. He began performing under the name “Jack Russell’s Great White,” which he later changed to “Great White featuring Jack Russell.” In March, 2012, he filed this lawsuit.Russell’s position is unprecedented. Several cases hold that departing members of bands do not take the band name when they leave. Russell should lose this case on that rule alone. However, Russell wants the band name even though he missed over 65 performances and did not police or protect the GREAT WHITE trademark during his absence. And even if he had trademark rights, his unwillingness to address his personal problems is abandonment in this instance, or, alternatively, he lost those rights be issuing a naked license to Defendants. Great White have moved on without Russell. 

FACTS
A. The Origins of the GREAT WHITE Mark

Great White is a rock band from Southern California. Before being called

“Great White,” the band was called “Dante Fox.” (Separate Statement of Undisputed Facts (“SUF”), ¶1.) 

Dante Fox was formed in 1978 by its current guitarist and Defendant and Counterclaimant Mark Kendall (“Kendall”). (SUF, ¶2.) When Kendall formed Dante Fox, Plaintiff Jack Russell (“Russell”) was serving a jail sentence in the California Youth Authority because of a shooting that took place  during a burglary. (SUF, ¶3.)  Russell was released in 1980, after serving approximately a year. (SUF, ¶4.) 

After being released, Russell auditioned as the singer for Dante Fox, and Kendall cast the deciding vote that he be admitted to the The name “Great White” arose in 1982 at the suggestion of Great White’s former manager Alan Niven. (SUF, ¶5.) 

Great White achieved great success between 1984 – 1995, with a gold/platinum album in 1987 (“Once Bitten”), a gold/double platinum album in 1989 (“Twice Shy”) and a gold album in 1990 (“Hooked”). The band sold over 8 million records. (SUF, ¶6.) 

The parties to this case are the classic Great White lineup: Plaintiff/vocalist

Russell on one side, and Defendants/Counterclaimants Kendall (guitar), Lardie (keyboards, guitar, production), and Audie Desbrow (drums) on the other. (SUF, ¶7.) 

B. Great White Productions, Inc. and The GREAT WHITE Mark

Niven and the band formed Great White Productions, Inc. in 1983. (SUF, ¶8.) In 1984, Mark Kendall was made president. (SUF, ¶9.)  Desbrow joined the band as drummer in 1985, and Lardie joined the same year. (SUF, ¶ 91.) 

Great White had signed a production agreement with Niven’s company, Stravinski Brothers. A production agreement binds that manager and artist more than a management contract, it gives the production company some control over the musical content, and the production company usually contracts directly with the record label to provide a finished product. (SUF, ¶10.)

In 1988, the band (Kendall, Lardie, Desbrow, Russell and bassist Tony

Montana) signed a Second Amendment to the Shareholders’ Agreement (the “Agreement”). The Ageement stated that: “To the extent (all results and proceeds of a Shareholders services) are capable of trademark, servicemark, and/or common law protection, all such rights shall be owned exclusively by the corporation.” (SUF, ¶11.) 

Russell testified at deposition he knew of no subsequent agreement that modified the Agreement. (SUF, ¶12.) 

The Agreement also stated that no member could leave the band and use the GREAT WHITE mark for performances; a terminated shareholder could only refer to himself as a former member of Great White. The Agreement was signed by Russell, Kendall, Desbrow, Lardie and Cardenas. (SUF, ¶13.)
Great White Productions, Inc. is now a suspended corporation. (SUF, ¶ 89.) 

Alan Niven testified that the terminated shareholder clause was added to “protect the majority against the individual; that if somebody leaves a partnership, the majority rules; that nobody can run off with the name. . . .” (SUF, ¶14.) 

C. Great White’s Decline in Popularity and the Rhode Island Fire

1. Great White’s Waning Popularity

After the acoustic “Sail Away” in 1994, (SUF, ¶15), the band parted ways with Niven. (SUF, ¶16.) As the 1990’s wore on, the band’s fortunes declined. (SUF, ¶18.)

In late 1999, vocalist Russell’s voice was damaged. Before a contracted European tour, he informed members of the band (some at the airport) that they would need to lip sync their performances. (SUF, ¶19.) Kendall had advance warning and had refused to go. (SUF, ¶20.) The first performance was in Madrid, Spain; shortly into the set, the band were booed from the stage. Desbrow returned home, and the rest of the band followed. (SUF, ¶21.) 

Because of the lip syncing, Kendall informed Great White Productions, Inc. that he was withdrawing from the corporation. He did not want to incur any liability because of the canceled tour. (SUF, ¶22.) In 2000, Desbrow had a falling out with Russell and left the band. (SUF, ¶23.) Kendall did not perform with Great White between January, 2000 and August 2001. He missed approximately 25 shows. He continued to receive royalties during this period. (SUF, ¶24.)\

2. Russell Leaves

On October 9, 2001, Russell informed band management that he was leaving for a solo career. He said that agents “shall not be authorized to offer Great White for shows, with me as lead vocalist, outside of the parameters above.” Russell wrote: “If any other members of the band wish to continue the use of the name for recording or touring, then I will agree to this. . . .” (SUF, ¶25.) The band did a “farewell” album in 2002 called “Thank You, Goodnight.” All of the Defendants in this case except

Desbrow appeared on that album. (SUF, ¶26.) 

In 2002, Russell started a solo career, releasing an album in a different style. He toured under a new corporation, Jack Russell Touring, Inc. (SUF, ¶27.) 

Eventually, Russell’s manager called Kendall, requesting he come on the road to play more Great White songs; that band was called “Jack Russell’s Great White.” Kendall does not believe this band was actually Great White. (SUF, ¶28.) 

3. The Tragic Rhode Island Fire and “Fake White”

“Jack Russell’s Great White” was the band that played at the tragic fire in the Station nightclub in West Warwick, Rhode Island on February 20, 2003. 101 people died when pyrotechnics caught illegal packing foam on fire. (SUF, ¶29.) Lawsuits were filed that took didn’t wrap up until 2010. (SUF, ¶30.) 

Following the fire, Russell and Kendall hired manager Obi Steinman to assist with re-building the band and conducting a benefit tour. Russell and Kendall formed a new corporation, Shark Touring, Inc., to administer the revenues. (SUF, ¶31.) They toured with a variety of support musicians; Kendall did not approach Lardie or Desbrow because he knew that paying their salaries would eliminate any money for the benefit. (SUF, ¶32.) 

Russell referred to this band as “Fake White.” (SUF, ¶33.) 

In 2005, the band took a hiatus. Russell sold mortgages and spent some time in a rehab center. Kendall recorded a solo record. (SUF, ¶34.) 

D. The 2006 Reunion

In 2006, Steinman approached the band about having a full reunion of the members who had last recorded in 1999. Those members included Russell, Kendall, Lardie, Desbrow and bassist Sean McNabb. (SUF, ¶35.) 

Russell referred to this as a “reunion.” In a January 31, 2007 email to Steinman, Russell wrote: So it needs to be made clear that this is a band. A partnership. No one member can use the Great White name. If I or any member is to leave the band quit or be fired or do any solo shows for extra cash they can’t use the logo or Jack Russell’s Great white (sic) as an example. . . . We can bill it only as Jack Russell of Great White or Formerly of Great White. Same goes for anyone. (SUF, ¶36.) 

This was verified in Jack Russell’s deposition: “Q. I'm reading what you said. ‘It needs to be made clear this is a band, a partnership. No one member can use the Great White name.’ A. Right.” (SUF, ¶37). 

During the “Fake White” period, Russell and Kendall received the lion’s share of pay for live performances. 

E. Russell’s Health Declines

For its reunion, the band recorded “Back to the Rhythm,” with Kendall and Lardie writing the music and Russell contributing on lyrics. Lardie once again produced the record, which was released in 2007. (SUF, ¶41.)

In April of 2008, Russell’s health began to fail. Russell also missed several previously contracted shows. The performing members of the band took over vocal duties. Specifically, Lardie, Kendall and Snyder traded vocals during at least eight performances. (SUF, ¶46).

Starting in May, 2009, Russell fell on stage. In May, 2010, Russell was living with his mother, and Mark Kendall’s wife Bridget was taking care of Russell’s mother.

In June, 2010 in an infamous video filmed by a fan in San Antonio, Russell fell from a stool during the opening minutes of a show. (SUF, ¶50.) The video of the fall in San Antonio circulated on the Internet. Kendall was criticized for not helping Russell. (SUF, ¶51.) 

2. Great White Carries On Without Russell

During this entire time, Great White hoped Russell would return, but he never did. (SUF, ¶61.) Terry Ilous of the band XYZ was hired to save dates that were booked. Ilous did nine shows, then Great White played a few shows with Jani Lane, the former singer of Warrant. Great White played one show in Sweden with another vocalist (Paul Shortino). Most consistently, Great White played with Ilous, who is now the singer for the band. In the 18 months after Russell left and before he filed this case, 9 shows were canceled, and band played over 65 shows without him. (SUF,

¶62.) 

Russell knew about Ilous, but he never policed any of Ilous’s performances. He made no efforts to police use of the GREAT WHITE mark, nor was he paid a royalty for any use of the GREAT WHITE mark during his absence. (SUF, ¶63.) He knew that the band had to fulfill a contract for a live album, but he did not discuss the commitments with anyone. (SUF, ¶69.) 

By December, 2011, tensions were high. On December 9, Russell phoned Steinman many times, but Steinman was at a function with his children. (SUF, ¶64.) 

Unbeknownst to Steinman or Russell, on December 7, 2011, Bridget Kendall had filed for a trademark on the GREAT WHITE Mark, in the name of Kendall, Desbrow and Lardie. Ms. Kendall filed for the trademark because Russell had said he was “going to take the name of the band.” Ms. Kendall called an attorney who advised the band to file for the mark. (SUF, ¶65.) 

Between December 10 and 11 Russell’s behavior was erratic. On December 10, 2011, he wrote a letter outlining his conditions for return to the band. (SUF, ¶ 66.) He later said that on December 10 he called Steinman and “fired” the band. (SUF, ¶66.) On December 11, he announced on Facebook that he was starting a new Great White. On December 11, he wrote a scandalous email criticizing each of the band members, He retracted everything within an hour. (SUF, ¶67.) At that point, enough was enough, and Great White decided to carry on without Russell.

Sometime later, Russell found out about the trademark registration and filed this lawsuit, claiming the band “stole” the name. (SUF, ¶68.) 

Great White continued to play shows. (SUF, ¶70.) Great White released a new album, “Elation,” in May, 2012. It was a critically acclaimed return to form. Four singles were released, one of which charted. (SUF, ¶71.) Great White has performed consistently, playing 50 more shows without Russell. (SUF, ¶93.) 

STANDARD

Defendants move for summary judgment on the issue of ownership of the GREAT WHITE trademark. If Defendants succeed, they will be entitled to judgment on their declaratory relief claim of ownership. They would also be entitled to summary judgment on all of Plaintiff’s claims relying upon ownership of the GREAT WHITE mark. Trademark ownership is an issue appropriate for summary judgment. A & L Labs, Inc. v. Bout–Matic LLC, 429 F.3d 775, 781 (9th Cir.2005); Fleischer Studios, Inc. v. A. V.E.L.A. Inc., 772 F.Supp.2d 1155, 1171 (C.D.Cal.2009).

Rule 56(c) requires summary judgment for the moving party when the evidence, viewed in the light most favorable to the nonmoving party, shows that there is no genuine issue as to any material fact, and that the moving party is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56(c); Tarin v. County of Los Angeles, 123 F.3d 1259, 1263 (9th Cir.1997). Where the moving party bears the burden of proof at trial, the moving party must present evidence, which if uncontroverted, would entitle it to prevail. UA Local 343 v. Nor–Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9^th Cir.1994).

Where the opposing party bears the burden of proof, the moving party’s burden is met by “ ‘showing’-that is, pointing out to the district court-that there is an absence of evidence to support the nonmoving party's case.” Celotex, at 325, 106 S.Ct. 2548. 

ARGUMENT

A. Counterclaimants Own The Great White Mark.

1. Russell Cannot Leave The Band And Take The Mark.

There is no dispute that trademark and servicemark rights exist in the GREAT WHITE Mark. GREAT WHITE has been in use since 1982, and use determines the existence of trademark rights and priority of ownership. See Sengoku Works Ltd. v. RMC Int’l Ltd., 96 F.3d 1217 (9th Cir. 1996). 

This case is about who, among joint users, owns those rights.

Several cases have been decided regarding trademark ownership in the

performing group context. See generally McCarthy on Trademarks and Unfair

Competition, “Dissolution and Change of Performing Groups,” § 16:45. By asserting ownership of the GREAT WHITE mark after leaving the band, Russell swims against the tide of all of that case law. Simply put, the law is clear that a departing member of a performing group does not take the name of the band. The leading Ninth Circuit case in this area, Robi v. Reed, 173 F.3d 736, 739-40 (9th Cir. 1999), reached this

exact result. The Robi court stated: “We adopt the holdings of HEC Enters., Ltd. And Kingsmen and hold that when Paul Robi left the group, he took no rights to the service mark with him. Rather, the mark remained with the original group.” 

Here, Jack Russell, the former singer of Great White, takes an extreme position.  In March, 2012, he filed this lawsuit to take the name of band that he has not performed with for since August, 2010, after that band played dozens of shows using the GREAT WHITE mark and in the absence of any agreement that Russell owned the mark or could return. 

Russell flies in the face of Robi and the cases it adopts. Robi states:

Courts that have confronted this problem have determined that members of a group do not retain rights to use the group's name when they leave the group. See, e.g., HEC Enters., Ltd. v. Deep Purple, Inc., 213 U.S.P.Q. 991 (C.D.Cal.1980) (former members of a group prohibited from performing under the band's name when members of the original group, with certain replacement members, continued to use the name); Kingsmen v. K-Tel Int'l, Ltd., 557 F.Supp. 178 (S.D.N.Y.1983) (holding, inter alia, that the former lead singer of The Kingsmen, who was with the group when it recorded the  hit song “Louie Louie,” did not have the right to use the name after his departure).173 F.3d at 739.

Russell’s argument is beyond the pale of any of these cases. Indeed, an article in the Los Angeles Lawyer analyzed this line of cases and reached the same conclusion. Discussing Robi, H.E.C. and other cases involving departing performers from groups, the authors conclude: “There are several other cases like these, and they all demonstrate the same  point: Without some written  agreement to the contrary a former band member cannot later use the original band name for a new band configuration.” Krakau & Mizhir, “Trademark Rights of Musical Groups”, Los Angeles Lawyer, May, 2007 (Bjorgum Dec., Exh. V.)

But Russell had no contract with the band stating that he either owned the name or could take it. (SUF, ¶¶ 11, 12, 36, 37.) As is shown above and will be discussed, the agreement between the members of Great White has always been that Great White is band and that trademark rights accrue to the benefit of the band.  

Knowing that he has a problem, Russell has attempted to argue that he “fired” Great White, stating that he is “taking (the name) and moving on.” (SUF, ¶ 66.) Russell knows that the law dictates that he cannot take the name from the band; thus, he has created the implausible scenario where, after taking 18 months off from the band without policing the trademark or doing anything that a trademark owner normally does, he can simply “fire” the band. 

Russell’s argument makes no sense. Both before he left and after he left, the remaining members of Great White continued to use the GREAT WHITE mark for live performances, and they continued to fulfill their obligations regarding shows that  were already booked. They also fulfilled their contractual duties and delivered a record to their record label. Russell showed no concern for any of these commitments. (SUF, ¶ 69.) 

He admits he did not police the GREAT WHITE. (SUF,¶ 63.) He simply wants the benefits of his former bandmates’ work and none of the responsibilities. 

B. Russell Cannot Avoid Summary Judgment On The Basis of His Allegation of “Continuous” Use of the Mark.

Russell’s only argument is the simplistic assertion that he has been the only member of Great White who was “continuously” involved in the band. This argument is factually incorrect and misleading. 

After the reunion but before his surgery, Russell missed eight erformances while other band members sang. (SUF, ¶46.) He did not perform with the band at all following his August, 2010 surgery, missing over 65 performances. (SUF, ¶62.) Therefore, Kendall has been the most “continuously” involved member. 

Russell has claimed repeatedly that “Mark quit the band.” Russell is referring to a period in 2000 – 2001 when Kendall was attempting to distance himself legally from Russell’s disastrous lip sync tour. Once he was satisfied that Russell would be singing again, and he would not be asked to fake his guitar parts, he rejoined the band for the few months before it disbanded. (SUF, ¶24.) 

Moreover, a temporary absence from the band does not mean that Kendall abandoned his interest in the GREAT WHITE mark. Over a thirty year period, there will be some issues and absences between band members. Moreover, as a matter of law, a “successful music group does not abandon its mark unless there is proof that the owner ceased to commercially exploit the mark’s secondary meaning in the music industry.” 

 Indeed, if the fact of Kendall’s short absence in 2001 is relevant, Russell’s “continuity” suffers the same problem, as he resigned from the band at the same time.  In September, 2001, Russell wrote to the band’s manager to give notice that he was leaving Great White for a solo career. He agreed that other members of the band could use the name for recording and touring. (SUF, ¶ 25.) 

The bottom line is that the first major phase of Great White’s career had been played about by around 2001. The band recorded a “farewell” live record. Everyone moved on. Then, of course, the tragic fire occurred at a show for “Jack Russell’s Great White,” and Russell and Kendall spent a few years performing benefit shows and rebuilding their reputation with side players. 

Everything changed again in 2007 when the reunion was announced. Musical director Lardie was brought back in, as was drummer Desbrow. Kendall and Russell began to split their income equally with the other members. The band recorded its first new material in eight years. (SUF, ¶¶ 38-40.) Great White became a creative entity again, and nobody missed shows except Russell. (SUF, ¶ 81.) Russell let his health decline and took an extended leave, never to return. But he cannot take the name GREAT WHITE. 

C. The Remaining Robi Factors Weigh in Favor of Defendants

The above analysis is enough for the Court to decide in favor of Defendants on the ownership issue. However, if the Court wishes to explore the remaining factors discussed or mentioned in Robi, it should still find that Defendants own the Mark, or, at the very least, that Russell does not own it.

1. Russell Was Not In A Position To Control Quality of Services

Robi states that Reed owned the Platters mark because, as between him and the Plaintiff, he had “continuity” in the group and was “in a position to control the quality of services” associated with the mark. Defendants have already shown that the “continuity” analysis is not the key factor in this case, and to decide it on the basis of brief absences from Great White would put form over substance. In addition, should the Court wish to consider who controls the services associated with the GREAT WHITE mark, it should find for Defendants.

i. The GREAT WHITE Mark Signifies a Band

Great White is a band. It is not Jack Russell. The core members of the band at one time were Russell, Kendall, Desbrow and Lardie. Now Russell is gone, but that does not change the fact that the GREAT WHITE mark is associated with a group of individuals. Indeed, if Great White were Jack Russell, there would never have been a need for Russell to resign (SUF, ¶ 25) or release a solo record (SUF, ¶ 27)

ii. The Parties Agreed The Band Owns GREAT WHITE

The GREAT WHITE mark has always signified a band that has at least two of the following members: Jack Russell, Mark Kendall, Audie Desbrow or Michael Lardie. (SUF, ¶7.) None of those individuals has ever performed under the Great White name in any fashion without at least one (and usually two or more) of the others. This principle – group ownership of the name – started in the beginning.

Lardie and Desbrow joined the band in 1985. Lardie was made a shareholder in the band’s corporation (Great White Productions, Inc.) in 1988 via the Second Amendment to the Shareholder’s Agreement (the “Agreement”). The Agreement, signed on January 1, 1988, stated:

To the extent (all results and proceeds of a Shareholders services) are capable of trademark, servicemark, and/or common law protection, all such rights shall be owned exclusively by the corporation. (GW66)

Russell testified at deposition he knew of no subsequent agreement that modified this Agreement. (SUF, ¶¶ 11-13.) 

The Agreement also stated that no member could leave the band and use the GREAT WHITE mark for any purpose other than to refer to himself as a former member. Specifically, a terminated shareholder “may refer to himself as a former member of the Group solely in interviews, but, without limiting the generality of the foregoing, not in any advertisements, billings or promotions.” (SUF ¶¶ 11,12.) 

The Agreement was signed by Russell, Kendall, Desbrow, Lardie and bassist Cardenas. As noted, Manager Niven testified this clause was used to prevent an individual from taking the name. (SUF ¶14.) Indeed, there is no testimony in this case that this clause ever expired. In the absence of a time for termination, a contact continues on for a reasonable time as determined by the court under the circumstances, and it becomes terminable at will. 1 Witkin, Summary of California Law, 10th (2005)

“Contracts”, § 143 (if circumstances do not dictate termination time, “the court will usually imply a reasonable time, after which the contract is terminable at will by either party on reasonable notice”). 

In this case, the reasonable time for performance would be the time that the core members of the band were together, i.e., until the present.  

Thus, the Agreement remains in place, and GREAT WHITE is owned by the band. Further, almost twenty years later--after breakups, resignations and a reunion--the members still understood that no member could take the name. Prior to the 2007 reunion, Russell wrote to manager Obi Steinman “No one member can use the Great White name. If I or any member is to leave the band quit or be fired or do any solo shows for extra cash they cant use the logo or Jack Russell’s Great white (sic) as an example.” (SUF, ¶ 36.)  

He also verified this to a vendor in 2007, writing that it was made clear to him that he could only book shows as “Jack Russell of Great White,” not “Jack Russell’s Great White.” (SUF, 77.) Then, in 2011, while Russell was out recuperating, he wrote to Steinman again, saying that he would not use the GREAT WHITE mark. Russell wrote on July 3, 2011: “I said I would never take out Jack Russell’s Great White, that is something I would never do no matter what happens.” (SUF, ¶ 59; Steinman Exh. B.) He even said that the band could keep performing as Great White, which he called “a cover band” (Id., GW0063.)

iii. The GREAT WHITE Mark Signifies A Classic Great White Line Up That Plays Blues-Based Rock Music

Because Great White is a band, the Mark is not associated with only one member; it is associated with core members of the “classic” lineup who collectively play blues-based rock n roll. Indeed, Russell called the version of the band that played benefit shows after the Rhode Island fire “Fake White.” 

For live performance, the Great White mark is associated with bluesy rock n roll music. As shown by the declarations of music veterans Mitch Lafon and Greg Napier, Great White is known as such a group. (SUF ¶¶ 75, 76.)

Further, the band’s audience knows and expects it to play certain songs, songs mostly from the band’s 1987 – 1992 period. For instance, both Great White and Jack Russell’s Great White play set lists the consist of almost the same songs: (i) “Rock Me” (released in 1987); (ii) “Lady Red Light” (1987); (iii) “Desert Moon” (1991); (iv) “Once Bitten, Twice Shy” (1989); (v) “Save All Your Love” (1987); “Mistabone” (1991); “Face The Day” (1985); “Down On Your Knees”) (1984); “House of Broken Love” (1991); “Can’t Shake It” (1991). (SUF, ¶¶ 78, 94.) 

With minor exceptions, the band that recorded all of those songs contained Lardie, Desbrow, Kendall and Russell. “Down On Your Knees” was from the band’s first record and didn’t feature Lardie or Desbrow. Lardie wasn’t a member of Great White for “Face The Day,” though he played keyboards on that album and engineered it the studio. Further, videos were made for all of those songs, and each Defendant appeared in each of those videos. (SUF, 79.) 

iv. After 2007, Great White Conducted Itself As A

Partnership With Lardie, Desbrow, Russell and Kendall

In late 2006, some of the members of Great White had resistance to the idea of a reunion. Desbrow, who in the early 2000’s had a history of not being paid, was opposed to re-joining. Only after it was explained to him that proceeds would be split and accounted for on a weekly basis did he decide to join the reunion. The same goes for Lardie – he would not join the reunited Great White unless money was split evenly and openly. (SUF, ¶¶ 37-39.)

During the years following the Rhode Island fire (2003 – 2005), the band performing with Kendall and Russell were “hired guns.” That band did not record or release any new material. This is borne out by payments. Russell and Kendall – the shareholders of Shark Touring, Inc. – were paid over $30,000 each in 2005. The next highest paid member made $7,114. (SUF, ¶ 38.)

After the reunion, all band members split their money evenly. (SUF, ¶¶39-40.) “A person who receives a share of the profits of a business is presumed to be a partner  in the business.” Cal. Corp. Code §16202.

Clearly, the members of Great White –who were splitting the proceeds of each performance, including merchandising income – were operating as partners. The Great White mark belonged to the partnership at that point. It did not belong to any individual.

Later, on July 11, 2012 when he had not been performing for almost a year,

Russell wrote: “P.S. If the band does not want me back, don’t worry I will not go out with Jack Russell’s Great White. Great White can continue to sadly tour as a cover band.” (SUF, ¶ 59.) 

v. Russell Never Controlled Licensing of the Great White Mark

Russell did not exercise individual control over the exploitation of the GREAT WHITE mark. For instance, in the band’s heyday, contracts were entered into by the corporation, and all members were shareholders. Mark Kendall was the president. (SUF, ¶ 9.) As an example, in 1990, a major merchandising deal was signed with BCL Limited. The deal was between BCL and “Great White Productions, Inc. f/s/o (for services of) Jack Russell, Audie Desbrow, Michael Lardie and Tony Montana p/k/a (professionally known as) Great White.” (SUF, ¶ 90.) Great White Productions, Inc.

represented that it owned the trademark “Great White.” (Id., sub paragraph 1(a)). 

After the reunion, in 2008, Great White negotiated to include some songs and its image on a slot machine. The Licensor of the GREAT WHITE mark was handwritten in as “Great White Jack Mark Audie Sean Michael.” (SUF, ¶90, Bjorgum Decl., Exh. Q.) All five members signed as the Licensor. As another example, the international distribution agreement for the reunion record was signed by Russell, Kendall and Lardie.” (SUF, ¶90, Bjorgum Decl., Exh. R.) 

2. Russell Was, At Most, A Minor Creative Force Behind the Music For Which Great White Is Most Well Known

Perhaps the most outrageous assertion in Russell’s Complaint is that he was the “creative director” of Great White. He contributed none of the music. Moreover, the classic Great White sound and image are in large part due to the input of former manager Alan Niven. (Indeed, as noted earlier, Niven was responsible for the change of the name to Great White.)

The deal signed with Niven’s company (Stravinski Brothers) was a production deal, which gave Niven far more control than would a management contract. A production deal “basically and simply means that I’m responsible for generating the record and I am responsible for getting that record distributed and promoted.” Niven essentially became the financier and overseer of the band, responsible for delivering a

package to the record labels. (SUF, ¶10.) Further, reviewing the band’s catalog from Niven’s days reveals that Niven was a co-writer on most of the original songs that the band still plays. 

For instance, composing credits on the “classic-era” songs that make up the bulk of the set lists for Great White and Russell’s band include: “Lady Red Light” (Kendall, Russell, Niven, Lardie); “Rock Me” (Kendall, Russell, Niven, Lardie); “Desert Moon” (Kendall, Russell, Niven, Lardie); “Call It Rock n Roll” (Kendall, Russell, Niven, Lardie); “Angel Song” (Kendall, Niven); House of Broken Love (Russell, Lardie, Niven). (SUF, ¶85.) 

The only song that both bands play that did not include a writer’s credit from Kendall, Niven or Lardie is “Save All Your Love.” In fact, the band’s biggest hit, “Once Bitten, Twice Shy,” is a cover song. Great White also released singles of other covers, including “Face The Day” and “Can’t Shake It” by The Angels from Australia, and “Substitute” by the Who. (SUF, ¶86.) 

Russell is not a proficient musician. He admitted at his deposition that he plays a little guitar and piano but “not enough to write a song with.” (SUF, ¶80.) Niven stated in his deposition, “If you see my name credit to a song, 98 times out of 100, it means I wrote the entire lyric and pretty much all of the melody. If you see Jack’s name next to mine on a credit, it means that he may have changed a melody line in the studio when we were recording.” (SUF, ¶86.) 

Finally, if there is any doubt as to the creative genesis of Great White material, the Court need only compare what each version of Great White has produced since Russell left the band. Defendants have produced an album of new material (“Elation”), which featured their first videos in over ten years and had a single (“Hard To Say Goodbye”) that went to a higher chart position than any song the band had done in over a decade. (SUF, ¶ 82.) 

Great White’s new material is being played on radio, and its shows are selling well to good reviews. (SUF, ¶95.) On the other hand, Russell’s band has produced nothing. In some interviews (SUF, ¶84; Russell Exh. 133), Russell has said he is working on new material.2 

However, during deposition in April, 2013, when asked how much new material has been completed, Russell’s drummer said “None.” (SUF, ¶84.) Russell’s bass player said songs were done, but then admitted that he had not recorded anything and didn’t know the status of the writing. (SUF, ¶84.) Russell’s guitarist Lochner said the new songs were “template” and probably written before he was “in the picture,” even though he has been in the band since January, 2012. (SUF, ¶84.) 

D. Even If Russell Has Some Ownership Interest in the Great White Mark, He Abandoned It

If this Court were to conclude that there is a triable issue of fact as to Russell’s ownership of the Mark, it should proceed to the next step and determine that Russell abandoned his rights in the GREAT WHITE Mark because of his rampant selfdestruction and failure to return to become physically capable of fronting Great White.  

The Lanham Act provides that a mark is abandoned: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. . .“Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. 15 U.S.C. Section 1127. “The requisite intent is an intent to resume a commercial level of use, not just an intent to resume a token level of use to try to avoid loss of rights.” 3 McCarthy on Trademarks and Unfair Competition § 17:11 (4th ed.)

2 “We’re working on some songs right now, and we’re getting reading to start laying down some new music. It really sounds like Great White….” (May 25, 2012 Interview, Russell Exh. 133.)

In another interview, when asked if there was any new music, Russell answered “Oh ya, we already got some stuff in the can.” Bjorgum Exh. P (Russell depo. Exh. 135.)

Here, to continue using the GREAT WHITE Mark, Russell had to be able to perform a full set of music, on key and without the assistance of a chair, crutches or his bandmates. He needed to be the dynamic frontman of a band. (SUF, ¶75-76.) 

The band’s manager, Obi Steinman, continually reached out to Russell and said that physical ability and lack of impairment on drugs were the conditions to Russell’s return. (SUF, ¶9.)

By September, 2011, Russell had not performed with Great White for over a year. It appeared that he would never be able to return. This constitutes abandonment of his trademark rights with regard to live performances using the name GREAT WHITE. “(T)he intent to resume use necessary to avoid abandonment is an intent to resume bona fide use of the designation in the ordinary course of business.” The Restatement Third, Unfair Competition § 30, comment b (1995). In the ordinary course of business with regard to live music, the vocalist or “frontman” is responsible for interacting with the crowd and moving about the stage. (SUF, ¶¶ 75-76.) 

Great White play high energy rock music; they cannot have someone fronting the band who is not able to move around the stage. In the San Antonio video from 2010, Russell was on a stool. Even with his latest band, he is in better form but does not appear able to fully command the stage. (Compare Russell Kendall Multimedia /Jack 2 “Rock Me,” “Desert Moon” and “House of Broken Love” with Jack3 / “Great White Desert Moon @ Santa Cruz”). “Because the abandonment inquiry is tied to the unique circumstances of each case, it is appropriate to look at the totality of the circumstances to determine if genuine, albeit limited, usage of the mark qualifies as a trademark use ‘in the ordinary course of trade’ under § 1127.” Electro Source, LLC v. Brandess–Kalt–Aetna Group, Inc., 458 F.3d 931, 940 (9th Cir.2006). 

The “course of trade” as a touring musician required that Russell be physically able to command a stage, move to the music, stand on his own power, engage the crowd and sing at full power. But since 2008, Russell’s health had been in decline. It was not uncommon for other members of the band to sing songs so that he could rest. (Kendall Decl. ¶30 and DVD showing Michael Lardie singing “Save All Your Love” and Kendall singing “Red Rooster”.) 

Russell’s substance intake did not slow down after his surgery. Russell may have started performing, but he never showed the requisite intent to resume using the GREAT WHITE Mark at the level required to represent the name. 

E. By Not Policing The Use of The GREAT WHITE Mark, Russell Engaged in Naked Licensing

Finally, whatever rights Russell may have had, he lost because of naked licensing. At times he claims that he let the band use the name to so they wouldn’t lose money. But he also admits that he exercised not quality control over the use of the GREAT WHITE mark for almost two years. (SUF, ¶63.) Assuming Russell had rights, he licensed them to the band with no restrictions. “The absence of an agreement with provisions restricting or monitoring the quality of goods or services produced under a trademark supports a finding of naked licensing.” FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 516 (9th Cir. 2010). 

The Court can make this finding on summary judgment. Id. Accordingly, the Court could simply find here that Russell did not monitor the quality or use of the GREAT WHITE mark and therefore lost whatever rights he had. 

CONCLUSION

For the foregoing reasons, the Court should find that Defendants and Counterclaimants Desbrow, Lardie and Kendall own the GREAT WHITE mark, or that, in the very least, Russell does not own it.

Dated: April 29, 2013

KARISH & BJORGUM, PC

By: _/s/ A. Eric Bjorgum_______________

A. Eric Bjorgum

Attorneys for Defendants MARK KENDALL,

MICHAEL LARDIE, AUDIE DESBROW and

BIGG TIME ENTERTAINMENT, INC. and

Counterclaimants GREAT WHITE

ENTERTAINMENT, INC., MARK KENDALL,

AUDIE DESBROW AND BIG TIME

ENTERTAINMENT, INC