Yocum v. Covington

In 1940, Clark Yocum (petitioner) joined the Pied Pipers vocal group. In the mid-1940s, the Pied Pipers entered into an agreement providing that each member would own an equal interest in the group. That interest would revert to the survivor(s) upon the demise of any member, with any replacement members to serve as employees, not joint owners. In 1967, Yocum was no longer physically able to perform and contracted with Lee Gotch, a former Pied Pipers performer, to allow Gotch to use the Pied Pipers name for a vocal group in exchange for 5 percent of the gross income from Gotch’s group. The one-page contract made no provision for supervision, quality control, or performance standards. Thereafter, Yocum, as the sole surviving owner under the contract, continued to claim ownership of the Pied Pipers name, collected royalties on his previous recordings, and sought work for a Pied Pipers group as an owner-manager or licensor. In the late 1970s, Yocum landed a licensing arrangement that enjoyed some success. In 1970, Warren Covington (respondent), a dance-band trombonist, appeared in an ad hoc studio group called the Pied Pipers that was organized by Jo Stafford, a member of the original group, to make a recording with RCA Records (RCA). Yocum objected to this use of the Pied Pipers name but did not inquire as to what was being recorded and did not ask to monitor the sessions. Yocum settled his ownership claim with RCA for approximately $400. In 1973, Covington organized his own Pied Pipers vocal group and applied to register the service mark. The registration was issued in 1974, and Covington continuously used the mark thereafter. Yocum petitioned to cancel Covington’s registration of the Pied Pipers mark.