Jackson v. Samuels et al

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
STEVEN JACKSON,
Plaintiff,
v.
LORENZO SAMUELS, et al.,
Defendants.
Case No. 24-cv-741-ABA
MEMORANDUM OPINION
In the 1960s, a group of singers in Baltimore formed The Softones. The group
went on to have many successful years of performances and popular recordings. This
case arises because two individuals dispute which of them is the rightful owner of the
Softones trademark: Plaintiff Steven Jackson, one of the original Softones, or Defendant
Lorenzo Samuels, whom one of the other original members, Byron Summerville, invited
to perform as a “Softone” starting in 2009. Mr. Jackson contends he has always
remained a member of the group, and as the only surviving original member now holds
the group’s trademark rights. Mr. Samuels contends Mr. Jackson left the group
sometime before 2009, when Mr. Samuels joined, and thus lost any common law
trademark rights from his earlier years in the group.
The parties have filed motions for summary judgment. In the words of The
Softones’ hit 1973 single, Mr. Jackson and Mr. Samuels each claims, “I’m Gonna Prove
It.”1 But at this stage, genuine factual disputes preclude the Court from granting
summary judgment to either side (or to another defendant, a restaurant that advertised
1 The Softones, I’m Gonna Prove It/Guns (Vinyl Record, Avco Records Corp. 1973); Best
Selling Soul Singles, Billboard, Apr. 14, 2026, at 26.
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one of Mr. Samuels’s performances). A trial will be necessary for a factfinder to assess
credibility and otherwise weigh the evidence. Accordingly, the motions will be denied.
I. 	BACKGROUND
Although there are vehement disputes about the membership and activities of
The Softones after the mid-2000s, the parties do not dispute the group’s membership
and activities before then, during its first several decades. The original members of The
Softones met in the 1960s while they were in junior high school. ECF No. 63-10 ¶¶ 4–6.
Marvin Brown invited Mr. Jackson to join the nascent group after seeing him perform
during a school talent show. Id. The Softones’ line-up was somewhat “fluid” during its
early years, at least in part due to the Vietnam War, but eventually became settled
during the mid-1970s with five members: Jackson, Brown, Elton Lynch, Byron
Summerville, and Matthew Fenwicks. See id. ¶ 6. In the 1970s, ‘80s, and ‘90s, the group
recorded several albums in the soul genre, regularly performed live, and made television
and film appearances. See id. ¶¶ 11–14; ECF Nos. 63-8; 63-12.
The parties dispute the group’s roster over the past two decades. In Mr. Jackson’s
telling, he has remained a member of The Softones even as each original member left or
passed away, and has continued to perform in The Softones continuously—sometimes
with less frequency, but with sufficient regularity that no reasonable factfinder could
conclude that he ever “left” the group. ECF No. 70-1 ¶ 3. As for the other original
members, Mr. Fenwicks left the group relatively early in its history to pursue another
career.2 ECF No. 63-10 ¶ 15. Mr. Summerville died in 2012, but Mr. Jackson contends
2 It is not clear from the record whether Mr. Fenwicks has since died or merely left the
group a long time ago. But either way, the parties agree that he left the group at some
point, and has no claim to trademark rights that would affect the analysis below.
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that he had been “dismissed from the group several years earlier.” Id. Work was
occasionally slow for The Softones over the past 20 years, and there is no dispute that
Mr. Jackson would sometimes perform with other groups. But he maintains that he has
never stopped being a member of and performing with The Softones. Id. ¶ 14. Following
the deaths of Mr. Brown in 2020 and Mr. Lynch in 2022, Mr. Jackson now performs as
The Softones with two new members: Johnnie Johnson and Michael Muse. ECF Nos.
63-9; 63-10 ¶ 3, 15.
Mr. Samuels, who is representing himself, tells a different version of the past 20
years in Softones history. Mr. Samuels’s factual claims about his membership in the
group are almost entirely disputed by Mr. Jackson. Mr. Samuels contends that he was
invited to join The Softones in 2009 by Byron Summerville, prior to Mr. Summerville’s
death in 2012. ECF No. 67 at 1. Mr. Samuels disputes Mr. Jackson’s claim that Mr.
Summerville had been “dismissed” from The Softones by 2009, when Mr. Summerville
and Mr. Samuels performed together. Compare ECF No. 67 at 1 (Mr. Samuels stating in
his brief that he was “invited to join ‘The Softones’ by Byron Summerville in 2009) with
ECF No. 63-10 ¶ 15 (Mr. Jackson’s declaration, stating “Byron Summerville died in 2012
although he had been dismissed from the group several years earlier”). Mr. Samuels
claims that when Mr. Summerville invited him to join the group, Mr. Jackson was the
one who had “left” The Softones, and had done so several years earlier to perform
instead with a group called The Fonics. ECF No. 67 at 2; see also ECF No. 75-1
(declaration of Harry Easley stating that he “was the lead singer of ‘The Softones’ from
2006-2008” and that Mr. Jackson was not in the band at that time, and that Mr.
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Samuels took over as lead singer in his place around 2008).3 Mr. Jackson specifically
disagrees on this point, contending that he never departed the band, and rather it was
Mr. Summerville who was fired. ECF No. 63-10 at 3. Mr. Jackson admits that he
performed with The Fonics in 2008–2012 but contends this was to “supplement” his
work with The Softones, not to replace it. ECF No. 70-1 ¶ 4. Mr. Samuels, for his part,
contends that he continued to perform in his version of The Softones after Mr.
Summerville’s death in 2012, and that he has continuously performed with his Softones
through the present, sometimes performing as “The Softones Revue.” ECF No. 63-14 at
22.
In December 2021, it came to Mr. Samuels’s attention that no trademark was
registered for “The Softones.” He saw that as an opportunity, and applied to register
federal wordmarks for THE SOFTONES and THE SOFTONES REVUE as applied to live
performances by a musical group. See ECF No. 63-14 at 47–51; U.S. Trademark
Application Serial No. 97/192,796; U.S. Trademark Application Serial No. 97/193,279.
Mr. Jackson learned of these applications several months later and filed his own
registration application for The Softones mark. See ECF No. 63-14 at 55–59; U.S.
Trademark Application Serial No. 97/285,512. Mr. Jackson’s application was suspended
by the U.S. Patent and Trademark Office (PTO) because Mr. Samuels’s applications
“ha[d] an earlier filing date” and, if Mr. Samuels’s application was registered, the PTO
3 Mr. Easley’s declaration was originally rejected from the docket because Mr. Easley
himself submitted it, and he is not a party to this case. At the motions hearing, it became
clear that Mr. Samuels was not aware that this declaration had been rejected. Because
Mr. Samuels is pro se, the Court will forgive this procedural error and direct the Clerk of
Court to docket Mr. Easley’s declaration. Counsel for Mr. Jackson also stated at the
hearing that Mr. Easley was not properly disclosed as a witness. Whether Mr. Easley will
be permitted to testify at trial is not presently before the Court.
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may “refuse registration” of Mr. Jackson’s mark because of “a likelihood of confusion.”
ECF No. 63-14 at 68. The PTO subsequently awarded Mr. Samuels registration number
7,076,872 for THE SOFTONES (the ‘872 Mark) and 7,237,429 for THE SOFTONES
REVUE (the ‘429 Mark) in December 2023. See ECF No. 63-14 at 47–51.
A few months after the PTO approved Mr. Samuels’s registration, Mr. Jackson
sued Mr. Samuels for trademark infringement and to cancel the registrations. Mr.
Jackson’s amended complaint asserts nine counts. ECF No. 4. He later voluntarily
dismissed three of them. ECF No. 32. The remaining counts are:
• 	trademark infringement and unfair competition under the Lanham Act
(specifically, 15 U.S.C. § 1125(a)) and Maryland common law (counts 1 and 2)
(the “Infringement Counts”), and
• 	cancellation of Mr. Samuels’s THE SOFTONES and THE SOFTONES REVUE
marks due to likelihood of confusion (counts 6 and 8) and/or due to fraud
(counts 7 and 9) (the “Cancellation Counts”).
While the main dispute is between Mr. Jackson and Mr. Samuels, there is also a
B-side. Mr. Jackson is suing a seafood restaurant in Gambrills, Maryland, Crofton
Princess LLC (d/b/a “Blue Dolphin”), for infringement. Mr. Jackson contends that the
Blue Dolphin hosted at least three musical performances by Mr. Samuels’s Softones and
advertised those performances on social media. ECF No. 63-4. The last of those
performances took place on March 28, 2024. Id. at 6. Prior to that performance, counsel
for Mr. Jackson emailed the Blue Dolphin informing it of Mr. Jackson’s common law
trademark and Mr. Samuels’s alleged infringement. ECF No. 4-6 at 6–7. Blue Dolphin
took down the advertisement in question (and took it down a second time after an
employee re-posted it without knowing about the communications with Mr. Jackson’s
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counsel), but apparently did not cancel the performance, in reliance on Mr. Samuels’s
promoter’s statement that Mr. Samuels had a trademark for The Softones. Id. at 1–5;
ECF No. 4 ¶ 75, 79.
Mr. Jackson had also initially named Shelton Price and The Cornelius Project
LLC as Defendants. ECF No. 4. Mr. Price and The Cornelius Project (of which Mr. Price
is a member) promoted, advertised, and sold tickets for certain performances by Mr.
Samuels. ECF No. 4 ¶¶ 3–4, 24; ECF No. 72 at 4. Mr. Jackson has since entered a
stipulated injunction with those defendants, which the Court granted, and has
voluntarily dismissed his claims against these parties. ECF No. 73.
All three remaining parties have moved for summary judgment. Mr. Jackson has
moved for summary judgment on the Infringement Counts (Counts 1 and 2), and the
Cancellation Counts based on likelihood of confusion (Counts 6 and 8); he has not
moved for summary judgment on the Cancellation Counts based on fraud (Counts 7 and
9). ECF No. 63. Mr. Samuels has moved for summary judgment on all of Plaintiff’s
counts, and seeks an injunction to prevent Mr. Jackson from using the registered
Softones marks. ECF No. 67. Mr. Samuels argues that Mr. Jackson left The Softones and
thus lost ownership over the mark. Id. at 2. The Blue Dolphin has moved for summary
judgment in its favor on Mr. Jackson’s claims, arguing that it cannot be “secondarily
liable” even if Mr. Samuels committed trademark infringement. ECF No. 65.
II. 	LEGAL STANDARD
Summary judgment is appropriate when “there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). A moving party meets its burden when the nonmovant “fails to make a showing
sufficient to establish the existence of an element essential to that party’s case” and
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when the nonmovant bears “the burden of proof at trial.” Celotox Corp. v. Catrett, 477
U.S. 317, 322 (1986). If the non-moving party fails to confront the motion with
“sufficient evidence . . . for a jury to return a verdict for that party,” the movant is
entitled to summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986); Celotox, 477 U.S. at 323 (“[A] complete failure of proof concerning an essential
element of the nonmoving party’s case necessarily renders all other facts immaterial.”);
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (“When the
moving party has carried its burden under Rule 56(c), its opponent must do more than
simply show that there is some metaphysical doubt as to the material facts.”). In making
this determination, the Court views all facts, and all reasonable inferences drawn from
those facts, in the light most favorable to the nonmoving party. Matsushita, 475 U.S. at
587–88. “When cross-motions for summary judgment are before a court, the court
examines each motion separately, employing the familiar standard under Rule 56 of the
Federal Rules of Civil Procedure.” Simply Wireless, Inc. v. T-Mobile US, Inc., 115 F.4th
266, 277 (4th Cir. 2024) (quoting Desmond v. PNGI Charles Town Gaming, L.L.C., 630
F.3d 351, 354 (4th Cir. 2011)).
III. 	DISCUSSION
A. 	Does Mr. Jackson or Mr. Samuels own the Softones trademark?
Mr. Jackson has sued Mr. Samuels for infringement and unfair competition
under 15 U.S.C. § 1125(a) and Maryland common law, and to cancel his trademark
registration. ECF No. 4 ¶¶ 80–149. And through their cross-motions for summary
judgment, Mr. Jackson and Mr. Samuels each contends that he is the sole rightful owner
of the Softones trademarks.
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1. 	The undisputed elements of Plaintiff’s claims
Before getting to the question of ownership, several points pertinent to Mr.
Jackson’s claims are not in dispute. Though section 1125(a) is labeled as targeting “false
designations of origin,” it provides in substance “a federal cause of action for trademark
infringement” for unregistered marks. Matal v. Tam, 582 U.S. 218, 225 (2017). “To
establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) that
it owns a valid mark; (2) that the defendant used the mark ‘in commerce’ and without
plaintiff's authorization; (3) that the defendant used the mark (or an imitation of it) ‘in
connection with the sale, offering for sale, distribution, or advertising’ of goods or
services; and (4) that the defendant’s use of the mark is likely to confuse consumers.”
Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012) (quoting 15 U.S.C.
§ 1114(a), the federal provision for infringement of registered marks). “The Fourth
Circuit has noted that the test for a false designation of origin/unfair competition claim
is essentially the same as the test for trademark infringement.” Entrepreneur Media,
Inc. v. JMD Ent. Grp., LLC, 958 F. Supp. 2d 588, 594 (D. Md. 2013) (applying the same
four-factor standard to claims under §§ 1114 and 1125); see also JFY Props. II LLC v.
Gunther Land, LLC, Case No. 17-cv-1653-ELH, 2019 WL 4750340, at *15 (D. Md. Sept.
30, 2019) (“The standards for asserting Lanham Act claims for trademark infringement
and unfair competition based on the inappropriate use of a mark are largely the same.”).
“This test also applies to claims for trademark infringement and unfair competition
under Maryland law.” Original Dells, Inc. v. Soul 1 Ent. Grp., Case No. 23-cv-95-TDC,
2024 WL 4052818, at *7 (D. Md. Sept. 5, 2024), report and recommendation adopted,
2024 WL 4892587 (D. Md. Sept. 25, 2024).
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The record does not reflect any dispute over three of these four elements as
concerns Mr. Jackson’s claims against Mr. Samuels. Mr. Samuels performed as The
Softones without Mr. Jackson’s authorization and received payment for his musical
performances. This satisfies elements 2 and 3, as Mr. Samuels’s performances entailed
using the mark in commerce and in connection with services rendered. See 15 U.S.C.
§ 1127 (“a mark shall be deemed to be in use in commerce . . . on services when it is used
or displayed in the sale or advertising of services and the services are rendered in
commerce.”).
Element 4, likelihood of confusion, is also not in dispute. To evaluate likelihood
of confusion, courts in the Fourth Circuit look to a nine-factor test:
(1) the strength or distinctiveness of the plaintiff’s mark as
actually used in the marketplace; (2) the similarity of the two
marks to consumers; (3) the similarity of the goods or services
that the marks identify; (4) the similarity of the facilities used
by the markholders; (5) the similarity of advertising used by
the 	markholders; 	(6) 	the 	defendant's 	intent; 	(7) 	actual
confusion; (8) the quality of the defendant’s product; and (9)
the sophistication of the consuming public.
George & Co. LLC v. Imagination Ent. Ltd., 575 F.3d 383, 393 (4th Cir. 2009). A
protracted analysis of confusion under the factors is not necessary here. The “Softones”
word marks used by Mr. Samuels and Mr. Jackson are identical, and are used in the
same geographic market (Baltimore/Washington, D.C.) and economic market (musical
services). Mr. Samuels has not contested likelihood of confusion, and has himself
argued that Mr. Jackson’s use of the mark has caused confusion with his own group. See
ECF No. 63-14 at 44. Thus, confusion is not disputed here. See Wonderbread 5 v. Gilles,
115 U.S.P.Q.2d 1296, 2015 WL 4380986, at *7 (T.T.A.B. 2015) (“[W]hen the parties are
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claiming rights in the same mark for the same goods or services, likelihood of confusion
is inevitable.”).
So the central dispute is over element 1: ownership.
2. 	Legal standards: ownership of musical group trademarks
“At common law, trademark ownership is acquired by actual use of the mark in a
given market.” Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 267
(4th Cir. 2003). “The first user, then, to appropriate and use a particular mark—the
‘senior’ user—generally has priority to use the mark to the exclusion of any subsequent—
or junior—users.” Id. at 268. Mr. Jackson claims that he has a senior, common law right
to the Softones trademarks because he has been performing with the group since it
began and is the sole surviving member. Mr. Samuels contends that Mr. Jackson’s case
fails on the ownership element. Mr. Samuels essentially contends that (1) Mr. Jackson
has no common law rights in the Softones mark because he left the group in the 2000s
and (2) because Mr. Jackson lacks a pre-existing, senior common law right, Mr.
Samuels’s federal registration gives him priority.
At the outset, the Court notes that Mr. Jackson’s failure to register a trademark in
The Softones is not decisive, because he claims a senior common law mark. “Even if a
trademark is not federally registered, it may still be enforceable under [15 U.S.C.
§ 1125(a)], which creates a federal cause of action for trademark infringement.” Matal v.
Tam, 582 U.S. 218, 225 (2017); see also Marcon, Ltd. v. Helena Rubenstein, Inc., 694
F.2d 953, 956 (4th Cir. 1982) (“[A] party claiming prior use of a trademark may seek to
cancel another party’s registration of the mark under § 14 of the Lanham Act.”); U.S.
Search, LLC v. U.S. Search.com Inc., 300 F.3d 517, 523 (4th Cir. 2002) (“A party
claiming prior use of a trade or service mark may, as LLC does here, seek to enjoin a
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defendant’s use of its registered mark and cancel that defendant’s registration of the
mark under § 14 of the Lanham Act.”). Mr. Samuels is not entitled to summary
judgment merely because he holds a federal registration, as he has argued. See ECF No.
67 at 3.4
Because federal registration alone does not establish ownership when a senior
user claims pre-registration common law rights, the key question is whether Jackson
had a senior common law claim to the Softones mark. Answering this question involves
untangling the complex problem of common law trademark ownership in the context of
musical groups with multiple members and changing rosters. Though the Fourth Circuit
and Maryland courts have not addressed this issue,5 several other courts have.
In Robi v. Reed, the Ninth Circuit had to determine which member of The
Platters, an R&B vocal group, had the superior claim to trademark ownership over the
ensemble’s name. 173 F.3d 736 (9th Cir. 1999). Synthesizing the holdings of several
cases that addressed competing claims among musicians who performed with groups at
different times, the Ninth Circuit concluded that “members of a group do not retain
4 Mr. Samuels also contends that Mr. Jackson lacks common law rights because he was
not an original Softones member but was instead “recruited” to the group in the late
1960s when Mr. Jackson and the other Softones were in junior high school. See ECF No.
67 at 2–3. This argument is not successful either. Mr. Samuels does not appear to
dispute that Mr. Jackson spent at least 30 years as a Softone and was with The Softones
when it first became prominent in the mid-1970s. Under the music ensemble trademark
ownership cases discussed below, Mr. Jackson’s association with and control over The
Softones’ musical services is enough to give him common law trademark rights
(assuming he did not leave the band in the mid-2000s—more on that shortly).
5 The Court is aware of only one district court opinion within the Fourth Circuit related
to music ensembles and trademarks: Five Platters, Inc. v. Purdie, 419 F. Supp. 372 (D.
Md. 1976). That case involved agreements between the parties about the use and
ownership of the trademarks, id. at 378–79, so it is of limited relevance to the question
here regarding ownership of the mark as a matter of common law.
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rights to use the group’s name when they leave the group,” because “there is no
inalienable interest at stake that would attach to the departing member.” Id. at 739–40
(emphasis added). By contrast, “a person who remains continuously involved with the
group and is in a position to control the quality of its services retains the right to use of
the mark.” Id. at 740. Applying these standards, the court concluded that the rights were
held by the defendant, Herb Reed, “who founded the group and is the only person who
has remained and performed with it from its inception.” Id. Mr. Reed had that right
rather than Paul Robi (or Mr. Robi’s assignee) because although Mr. Robi had been a
member of The Platters for a number of years, he had “severed his relationship with the
group in 1965, when he was arrested and convicted of felony narcotics possession
charges.” Id. at 738. The Robi court did not flesh out what it means for an individual
member to “leave” a group because in that case there was no dispute that Mr. Robi had
in fact entirely ceased performing with the group: he had not only gone to prison but
also did not attempt to return to the group after he was released or claim that he had
done so. Id. at 738.
Robi is consistent with a similar, more recent case from the Eleventh Circuit
involving a funk group, The Commodores. Commodores Ent. Corp. v. McClary, 879
F.3d 1114 (11th Cir. 2018). In that case, original members of The Commodores sued
another original member, Thomas McClary, who had left the group over twenty years
prior to the suit. Id. at 1121–22. Drawing on Robi and other cases on trademark
ownership and control, the Commodores court concluded that the “continuing members
of the original group” owned the trademark rights rather than Mr. McClary, who had
ceased performing with the band over 25 years earlier, attempted to reunite with the
band, and then formed his own group using the “Commodores” name. Id. at 1133. The
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Court held that “common-law rights to the marks remained with the group members
who continued to use and exert control over the group ‘The Commodores,’ and no
reasonable juror could have found otherwise.” Id. at 1132–33.
Several key principles emerge from these cases, as well as from the other
persuasive authorities and scholarly sources addressing similar issues. See, e.g., Bell v.
Streetwise Recs., Ltd., 640 F. Supp. 575 (D. Mass. 1986); Leftenant v. Blackmon, Case
No. 18-cv-1948-EJY, 2023 WL 362663, at *2–6 (D. Nev. Jan. 23, 2023); Wonderbread
5, 115 U.S.P.Q.2d 1296, at *7–14; 2 McCarthy on Trademarks and Unfair Competition
§ 16:45 (5th ed.) (hereinafter “McCarthy on Trademarks”).
First, in the absence of an agreement to the contrary, a music ensemble’s
trademark rights remain with the ensemble itself. See Robi, 173 F.3d at 739–40;
Commodores, 879 F.3d at 1131–32. The right to enforce the trademark stays with those
individuals currently affiliated with the ensemble who “control[] the quality and
reputation of the band” and have authority over “performances and business decisions.”
Commodores, 879 F.3d at 1133. But the individual trademark rights of the members do
not travel with them. Instead, they are akin to a contingent property right that exists
only as long as a band member is still in the group. Thus, when a musician leaves a
band, they “[leave] behind [their] common-law rights to the marks.” Commodores, 879
F.3d at 1121; see also Robi, 173 F.3d at 739 (“[M]embers of a group do not retain rights
to use the group’s name when they leave the group.”).
These rules follow from the fundamental purpose of trademark law, which is to
avoid consumer confusion by protecting single, identifiable sources of commercial goods
and services. See Vidal v. Elster, 602 U.S. 286, 300 (2024) (“[T]rademarks developed
historically to identify for consumers who sold the goods (the vendor) and who made the
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goods (the manufacturer). In that vein, a basic function of trademark law has always
been to prohibit confusion as to the source of good[s] or services.”) (quotations and
citations omitted); Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 147
(2023) (“Confusion as to source is the bête noire of trademark law.”); Int’l Bancorp, LLC
v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359, 381
(4th Cir. 2003) (“[A]voidance of consumer confusion is the ultimate end of all
trademark law.”). Unlike other forms of intellectual property such as copyrights or
patents, courts disfavor “fragmented” ownership of trademarks to avoid giving rise to
more than one source associated with the same mark. See McCarthy on Trademarks
§ 16:40.6 To allow departing individual members of a band to take trademark rights with
them would create multiple fragmented sources of the trademarked musical services,
leading to consumer confusion as to which group is the authentic version—i.e., which
group is the The Softones. See Crystal Ent. & Filmworks, Inc. v. Jurado, 643 F.3d 1313,
1324 (11th Cir. 2011) (explaining, in a music ensemble case, that “[t]rademark law
ordinarily does not permit two entities to share a mark due to the consumer confusion
that would ensue.”); Bell v. Streetwise Recs., Ltd., 761 F.2d 67, 76 (1st Cir. 1985) (“When
arguing parties are, in a sense, both responsible for the success of a name, a court may
6 Some district courts have appeared more open to the concept of fragmented trademark
co-ownership when presented with cases where the members of a band had entered an
agreement allowing for individual use and/or separate rights. See, e.g., Lightfoot v.
DeBruine, Case No. 20-cv-666-PHX-DJH, 2023 WL 2665732, at *3, 8–12 (D. Ariz. Mar.
28, 2023); Piccari v. GTLO Prods., LLC, 115 F. Supp. 3d 509, 511–17 (E.D. Pa. 2015). No
such agreement is in the record here, and the opinions in those cases recognize
trademark law’s general, default preference for unified ownership. Additionally, the
parties in those cases were both original members, unlike the suit here between an
original band member and a party who joined later, and where the parties never
performed together.
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find it difficult to decide which, in fact, ‘owns’ the name; the temptation may be great to
say ‘both own it’ or try to ‘divide’ the name among them. The public interest, however,
normally requires an exclusive award.”) (Breyer, J., and Coffin, J., jointly concurring).
The Platters, the ensemble at the center of the Robi case, is a prime example of this
issue: their rotating musical roster spawned numerous splinter groups with “Platters” in
the name, as well as over 40 years of litigation across several state and federal
jurisdictions. See Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239, 1243–
45 (9th Cir. 2013).
If leaving a band has such legal import for whether an individual member may
perform under the band’s name (or have a contingent right to enforce the band’s
trademark rights), that leads to an obvious question with significance for this case: what
does it mean to “leave a band” (or here, a vocal ensemble)? The cases that have
confronted this issue generally look to factors such as whether a musician manifests an
explicit intent to leave; ceases creative activities with the band such as rehearsing,
songwriting, performing, and recording; and/or no longer participates in business
decisions. For example, in Commodores, the court held that Mr. McClary did not have a
right to perform as a “Commodore” because he “did not join the group to make business
decisions about performance schedules or recordings,” “stopped writing songs with the
group,” and “was not involved with the group’s decisions about performances, whether
about the songs to be performed, the personnel to be involved, or the production details
of the shows.” 879 F.3d at 1133–1134. In Leftenant, the court held that various band
members lost their common law trademark rights by ceasing to perform or record with
the band, “undisputed[ly] resign[ing],” and/or having “no involvement with the
management” of the band. 2023 WL 362663, at *3–5. On the other end of the spectrum,
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original band members who have remained continuously with the band and still
participate in creative and business decisions will almost always have the right to
perform under the band’s name and enforce the band’s trademarks. See Robi, 173 F.3d
at 740; Commodores, 879 F.3d at 1132–133.
So if (1) during a group’s existence its common law trademarks belong to the
current group and (2) a member who leaves the group loses the right to enforce the
trademarks, where does that leave the Softones trademark? Can Mr. Jackson enforce the
trademark and thereby preclude Mr. Samuels from performing as a Softone and collect
damages? Or is Mr. Samuels the one with the exclusive right to perform as a Softone?
3. 	Applying those standards, genuine factual disputes do not
permit deciding at this stage whether Mr. Jackson or Mr.
Samuels is the rightful owner of the Softones trademark
To analyze these questions, it helps to divide the Softones’ history into three
periods: (1) from its formation through the mid-2000s, (2) from the mid-2000s to
around 2013, and (3) from 2013 to the present. It is the middle period that is most
relevant for current purposes. During that period, it is undisputed that Mr. Jackson was
not frequently performing as a Softone, but rather periodically as a Fonic, and Mr.
Samuels was performing as a “Softone” with one of the true Softones’ original members,
Byron Summerville. Beyond that, however, the evidence is disputed in two critical
dimensions that preclude granting summary judgment to either side.
i. 	Did Mr. Jackson “leave” the Softones (in 2006 or
any other time)?
The first critical disputed factual question is whether Mr. Jackson left the
Softones. This is important because, as noted above, if Mr. Jackson “left” the Softones
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within the meaning of cases like Commodores, Robi, and Leftenant, his trademark
rights in the ensemble would extinguish, remaining with the ensemble as an entity.
Mr. Samuels contends Mr. Jackson did leave the Softones, in or about 2006. And
there is evidence supporting that contention. Mr. Samuels himself states that Mr.
Jackson left The Softones; that statement appears not only in his summary judgment
brief but also in his interrogatory responses. See ECF No. 67 at 2, 5; ECF No. 41 ¶ 4.
“[S]elf-serving declarations can defeat summary judgment.” Harrell v. DeLuca, 97 F.4th
180, 187 (4th Cir. 2024); see also Fed. R. Civ. P. 56(c)(4) (allowing the court to consider
affidavits or declarations). And although Mr. Samuels’s brief and cross-motion for
summary judgment are not sworn declarations, the Court will also consider these
statements for purposes of summary judgment because Mr. Samuels is self-represented.
See Folse v. Hoffman, 122 F.4th 80, 84 (4th Cir. 2024) (“[T]rial courts are encouraged
to liberally treat procedural errors made by pro se litigants.”) (quoting Bauer v.
Commissioner, 97 F.3d 45, 49 (4th Cir. 1996)); Hammock v. Andoh, Case No. 21-cv-
796-DLB, 2025 WL 2402198, at *1 n.1 (D. Md. Aug. 19, 2025) (crediting a pro se
litigant’s “statements in his opposition” as evidence for summary judgment).
Even if the Court did not credit Mr. Samuels’s statements in his opposition, he
makes similar claims in his interrogatory responses: “I never performed with Marvin
Brown and Steven Jackson as a member of the Softones. As a matter of fact, Brown and
Plaintiff were already no longer members of the group when I joined in 2009.” ECF No.
41 ¶ 4; see also Fed. R. Civ. P. 56(c)(3) (“The court need consider only the cited
materials, but it may consider other materials in the record.”). These statements are also
consistent with the excerpts of Mr. Samuels’s deposition provided by the parties, in
which he testified that he was invited to join The Softones by Mr. Summerville and
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considers his ensemble to still be the authentic Softones. See ECF No. 63-14 at 34 (“[W]e
are not a tribute group. We are The Softones . . . [T]hat’s how I was hired as.”). Plus
there is the signed declaration of a witness, Harry Easley. ECF No. 75-1. Mr. Easley
states that he “was the lead singer of ‘The Softones’ from 2006-2008” and that Mr.
Jackson was not in the band at that time. Id. Mr. Easley left the group in approximately
November 2008, and states that Mr. Samuels became the lead singer thereafter and has
remained the lead singer. Id.
Further, while Mr. Jackson has submitted documentary evidence of his
performances with The Softones, none of these materials appear to show activities
between 2006 and 2012. See ECF No. 63-8 at 34 (a performance contract dated
December 17, 2005); ECF No. 63-11 at 4 (advertising a performance for The Softones
with Mr. Jackson on March 16, 2013). This apparent gap from 2006 to 2012 coincides
with the same period in which Mr. Samuels contends that Mr. Jackson was not only not
in the band, but had left the band. Mr. Samuels’s version of the timeline—that Mr.
Jackson left The Softones around 2006—is not contradicted by the documentary record
in this respect. See In re Marriott Int’l, Inc., Customer Data Sec. Breach Litig., 626 F.
Supp. 3d 814, 837 (D. Md. 2022) (“When opposing parties tell two different stories, one
of which is blatantly contradicted by the record . . . a court should not adopt that
version.”) (quoting Scott v. Harris, 550 U.S. 372, 380 (2007)).
From this evidence—even if it were just Mr. Samuels’s own statements—a
reasonable juror could conclude that Mr. Jackson left the Softones as of 2006, that he
was no longer in the band when Mr. Samuels joined in 2009, and that, because leaving
the band extinguished his common law rights, Mr. Jackson does not have the senior
claim to the Softones mark to enforce against Mr. Samuels. And that conclusion would
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apply even if Mr. Jackson later returned to performing with a splinter version of The
Softones. See Commodores, 897 F.3d at 1134 (“Even if the evidence could support a
finding that McClary rejoined the group—and in no way does it afford that inference—it
could not support the conclusion that McClary should be able to use the group’s name
while performing separately from the group.”).
But Mr. Jackson also has evidence supporting his contention that he never “left”
The Softones, but rather was merely taking a hiatus from performing as a Softone
because demand during the mid-2000s for The Softones’ tones was, well, soft. Mr.
Jackson has submitted numerous posters, news articles, recordings, and performance
contracts showing his activities with The Softones. See ECF Nos. 63-3, 63-5, 63-8, 63-11,
63-12. The declaration of Mr. Jackson’s manager, Ms. Jackson-Hodges, adds that during
roughly the same time as the critical “middle period,” from 2008 to 2012, Mr. Jackson
performed with Mr. Brown and a third musician in another vocal R&B group called The
Fonics. ECF No. 63-7 ¶ 9. Ms. Jackson-Hodges states that the reason Mr. Jackson was
performing with The Fonics was not that he had left The Softones, but rather because
“demand for live performance work for The Softones was not particularly robust.” Id.
Ms. Jackson-Hodges goes on to maintain that Mr. Jackson did not “stop performing as
The Softones,” id., and points out that musicians can, of course, perform with multiple
groups. Based on this evidence, a reasonable factfinder may very well conclude that Mr.
Jackson’s performances with The Fonics were essentially a side gig, and that Mr.
Jackson was simultaneously a “member” of both groups.
So there is evidence from which a reasonable jury could go either way on the
question of whether Mr. Jackson left The Softones in approximately 2006. And under
the standards articulated above, this factual question is material to ownership: if Mr.
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Jackson left The Softones ensemble, he left behind his trademark rights and would no
longer have a senior claim with priority over Mr. Samuels’s registration; if not, his
common law rights well predate Mr. Samuels’s registration. But there is another set of
factual disputes too.
ii. 	Was Mr. Summerville a member of The Softones in
2009?
The second critical dispute revolves around Mr. Summerville’s status in 2009,
when he invited Mr. Samuels to perform with him. As noted, this is important because if
Mr. Summerville had left The Softones (or, as Mr. Jackson contends, been fired from the
group) before 2009, then he and Mr. Samuels were not authorized to be performing as
The Softones—and thus Mr. Samuels cannot have succeeded to any Softones trademarks
after Mr. Summerville died in 2012. On this issue too, there is evidence supporting each
side.
Mr. Jackson contends Mr. Summerville had been fired, and has provided
supporting declarations as evidence. Mr. Jackson states in his declaration that Mr.
Summerville “died in 2012 although he had been dismissed from the group several years
earlier.” ECF No. 63-10 ¶ 15. Ms. Jackson Hodges further states in her declaration that
she began booking The Softones in 2007 and that the group consisted only of Brown,
Jackson, and Elton Lynch at that time. ECF No. 63-7 ¶ 4.
In contrast, Mr. Samuels contends that Mr. Summerville had never been “fired”
but rather remained part of the true Softones during the period in question (roughly
2006–2012). Mr. Samuels states that he was “invited to join ‘The Softones’ by Byron
Summerville in 2009,” ECF No. 67 at 1, at least implying that Mr. Summerville was in
fact part of “The Softones” in 2009. See also, e.g., ECF No. 70-2 at 17 (Mr. Samuels
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explaining in his deposition that he did not include original Softones members in his
trademark registration application because “[w]hatever I do for the trademark, . . . it be
mainly for Byron Summerville. Summerville was the one who got me started in this. . . .
If I was to include anybody, it would be a member of Summerville’s family.”). The
upshot of that perspective, if true, is that it is Mr. Samuels (along with Mr. Summerville)
who was performing as the true Softones during that period.
In short, there is evidence from which a reasonable jury could either conclude
that Mr. Summerville had been fired before 2009 (which would entitle Mr. Jackson to
prevail in his claims against Mr. Samuels), or that Mr. Summerville had not been fired
(which would mean Mr. Jackson might not prevail7). This dispute, together with the
7 Even if Mr. Summerville had not been fired and Mr. Jackson did leave The Softones,
Mr. Jackson might still prevail, because there is also a question of whether Mr. Samuels
would have gained any rights to The Softones upon Mr. Summerville’s death in 2012.
Mr. Samuels claims he has been performing as The Softones continuously since Mr.
Summerville’s death. See ECF No. 41 ¶ 8. But Mr. Samuels has not submitted any
documentary evidence showing his performances between 2012–2021, whereas Mr.
Jackson has. If Mr. Jackson’s The Softones performed continuously through this period
and Mr. Samuels’s The Softones did not, it is possible that Mr. Samuels’s The Softones
abandoned its rights, and Mr. Jackson regained common law rights via a new version of
the group that would still pre-date Mr. Samuels’s 2021 registration.
Alternatively, even if Mr. Samuels’s The Softones was performing from 2012–2021, that
would mean his control of the Softones mark began at roughly the same time as Mr.
Jackson’s The Softones group started. As explained above, Mr. Jackson’s documentary
record showing his Softones performances picks back up in 2013. See ECF No. 63-11 at
4. Mr. Samuels testified that, prior to Mr. Summerville’s death in 2012, he was merely a
“work-for-hire.” ECF No. 70-2 at 7. That means that prior to 2012, he may not have had
common law rights in The Softones—as essentially an independent contractor, he likely
would not have been in a position to “control[] the quality and reputation of the band”
and make “business decisions.” Commodores, 879 F.3d at 1133. So if Mr. Samuels and
Mr. Jackson both started controlling separate Softones groups in roughly 2012-2013, it
is possible (depending upon how the facts unfold at trial) that neither has a senior claim
through prior use. That scenario would require the Court to look to a separate legal
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dispute about whether Mr. Jackson left the group sometime before 2009, means that
neither party has shown that he is entitled to summary judgment.
4. 	A sidenote: “abandonment”
In the course of arguing that he remained a Softone during the critical period,
Mr. Jackson argues that even if he did not perform with The Softones for an extended
period of time, he did not abandon his right to enforce the Softones mark. ECF No. 70 at
2–5. The Fourth Circuit has recently clarified that the Lanham Act’s statutory
abandonment test applies to common law trademarks. See Simply Wireless, Inc. v. T-
Mobile US, Inc., 115 F.4th 266, 284 (4th Cir. 2024), cert. denied, 145 S. Ct. 1898 (2025)
(“[W]hen common law ownership of a trademark has been established, the § 1127
statutory abandonment test is the only proper inquiry for a judicial assessment of
whether ownership rights in a trademark have been lost.”). Under the abandonment
test, “three years of nonuse of a valid common law trademark creates a rebuttable
presumption of abandonment. At that point, the burden shifts to the putative owner of
the trademark . . . to demonstrate that it intended to resume use of its trademark, and
that such intention was formed during the three-year presumption period.” Id. at 278.
The original owner must intend to resume use “in the reasonably foreseeable future
framework that other authorities have outlined in situations where band members have
equal-in-time but competing claims to a mark. See Crystal Ent. & Filmworks, 643 F.3d
at 1322 (“Because [Plaintiff] failed to prove that it first appropriated the . . . mark, the
district court was required to determine the owner of the mark where prior ownership
by one of several claimants cannot be established. . . . To determine ownership in a case
of this kind, a court must first identify that quality or characteristic for which the group
is known by the public. It then may proceed to the second step of the ownership inquiry,
namely, who controls that quality or characteristic.”) (quoting Bell v. Streetwise
Records, 640 F. Supp. at 581).
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rather than at some unspecified future date.” Id. (quoting Emergency One, 228 F.3d at
537).
But here, abandonment is not a directly applicable doctrine. Abandonment
entails “non-use of [a mark] by the legal owner.” Emergency One, 228 F.3d at
(emphasis added, quoting Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847, 850 (2d
Cir. 1992)). It involves discontinued use of a mark itself, after which the mark “returns
to the public domain.” George & Co. LLC v. Imagination Ent. Ltd., 575 F.3d 383, 400
(4th Cir. 2009). Neither party here contends that the Softones mark was abandoned by
its legal owner, The Softones. Rather, Mr. Samuels’s contention is that Mr. Jackson left
The Softones in or before 2006, and the band continued with other personnel, including
Mr. Summerville, Mr. Easley, and eventually Mr. Samuels. Thus, the dispute here is not
over whether Mr. Jackson (or anyone else) abandoned the mark, but rather whether Mr.
Jackson lost the right to enforce the mark by leaving The Softones. See Commodores,
879 F.3d at 1136 (“Our conclusions about the relevance of McClary [the departing
member] leaving the band have nothing to do with whether or not he abandoned his
rights to the marks in question. We need not determine today whether or not McClary at
some time abandoned his ownership of the marks. Instead, we determine that he does
not have the rights to use the marks but that the marks are otherwise valid.”). To be
sure, a number of the principles underlying the abandonment doctrine overlap
conceptually with the principles relevant to whether Mr. Jackson or Mr. Summerville
“left” The Softones. But strictly speaking, and construing the evidence in the light most
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favorable to Mr. Samuels, the legal owner of the Softones mark—i.e., The Softones
ensemble—never stopped using the mark, so the mark itself was never abandoned.8
B. 	The Jackson–Blue Dolphin dispute
Although Mr. Jackson’s claims primarily concern Mr. Samuels, he has also sued
the Blue Dolphin, a restaurant that advertised one of Mr. Samuels’s “Softones”
performances. The dispute between Mr. Jackson and the Blue Dolphin also has spawned
cross-motions for summary judgment.
As for Mr. Jackson’s motion, his claims against the Blue Dolphin depend on his
ownership of a pre-existing common law trademark that Mr. Samuels infringed.
Because the Court has concluded that genuine factual disputes preclude adjudication at
this stage of which party is the rightful owner of the Softones trademark, it will also deny
the motion against Blue Dolphin for the same reasons.
That leaves Blue Dolphin’s motion for summary judgment. As explained above,
Mr. Samuels’s summary judgment motion is denied because, construing the record in
the light most favorable to Mr. Jackson, Mr. Jackson owned a common law trademark
that was infringed by Mr. Samuels. Even after incorporating that argument into the
analysis of Blue Dolphin’s motion, however, that still leaves the question of whether the
Blue Dolphin can be liable for advertising Mr. Samuels’s Softones group.
8 Mr. Jackson also argues that, if Mr. Samuels’s version of events is credited, his
registration is still subject to cancellation because Mr. Samuels did not include the other
members of his version of The Softones band. ECF No. 70 at 5–10. But Mr. Jackson has
sued for claims of infringement and cancellation based on his prior common law claim
to the mark. Thus, for purposes of his summary judgment motion, the primary issue is
the viability of Mr. Jackson’s common law right, not other potential issues with Mr.
Samuels’s registration.
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The central dispute between Blue Dolphin and Mr. Jackson concerns the “use in
commerce” element of the infringement test because Blue Dolphin argues that it cannot
be liable merely for advertising Mr. Samuels’s Softones. In its opposition and cross-
motion for summary judgment, Blue Dolphin did “not dispute in any material way the
allegations of fact contained in Plaintiff’s Motion for Summary Judgment.” ECF No. 65-1
at 1. Instead, Blue Dolphin argues that even if Mr. Samuels is liable for trademark
infringement, Blue Dolphin cannot be liable for trademark infringement for advertising
and hosting Samuels’s Softones because secondary vendor liability does not apply in the
trademark context. Id. at 2–4. In his reply, Mr. Jackson confirmed that he is only suing
Blue Dolphin directly for its infringing advertisements, not secondarily for hosting Mr.
Samuels’s Softones. ECF No. 66 at 8 (“Plaintiff submits that the Blue Dolphin is liable
for its advertising, not for its hosting”).
It is the Blue Dolphin’s own advertisements, not Mr. Samuels’s performances,
that form the basis of Mr. Jackson’s claims against the Blue Dolphin. Thus, the Court
need not evaluate the Blue Dolphin’s potential contributory or vicarious liability. See id.;
see also Rosetta Stone, 676 F.3d at 163 (“Contributory infringement” imposes liability
“upon those who facilitate or encouragement infringement” by others) & 165
(“‘Vicarious liability’ in the trademark context is essentially the same as in the tort
context: the plaintiff seeks to impose liability based on the defendant’s relationship with
a third party tortfeasor.”). Mr. Jackson is not pressing these theories of liability.
Blue Dolphin’s publication of advertisements using The Softones mark is a use in
commerce sufficient to satisfy the elements of a direct trademark infringement claim.
Under the Lanham Act, a mark is used in commerce on services “when it is used or
displayed in the sale or advertising of services and the services are rendered in
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commerce.” 15 U.S.C. § 1127 (emphasis added); see also Seguros R. Vasquez, Inc. v.
Aguirre, Case No. 19-cv-1484-TDC, 2020 WL 3447754, at *3 (D. Md. June 24, 2020)
(“The use of a trademark in a Google advertisement . . . plainly can support a Lanham
Act trademark infringement claim.”); First Capitol Consulting, Inc. v. NetTax, LLC, et
al., Case No. 23-cv-7837, 2025 WL 3692147 (C.D. Cal. Dec. 16, 2025) (“Courts have held
that the use of a trademark on social media and in business communications satisfies
the ‘use in commerce’ element of a Lanham Act claim.”). Construing the evidence in the
light most favorable to Mr. Jackson, a reasonable factfinder could conclude that Blue
Dolphin used The Softones mark in a Facebook post seemingly designed to encourage
customers to spend money on food at the restaurant during Mr. Samuels’s
performances. ECF No. 63-4. There also is evidence from which a reasonable factfinder
could conclude that Blue Dolphin’s use of the mark was likely to cause confusion with
the common law Softones trademark allegedly belonging to Mr. Jackson. Blue Dolphin
is not entitled to summary judgment on the basis of its advertising argument.
Although the Court will deny Blue Dolphin’s motion for summary judgment on
liability, the record indicates that even if Mr. Jackson eventually prevails on liability for
Blue Dolphin’s infringement, any damages likely would be minimal. It appears
undisputed that Blue Dolphin relied in good faith on Mr. Samuels’s promoter’s
representations about the trademarks—after all, Mr. Samuels had a federal registration
for the marks. See ECF No. 4-6 at 2 (Blue Dolphin responding to counsel for Mr.
Jackson by writing “I have forwarded all communication [t]o the promoter who says the
artist has trademarked the name?”). It also is undisputed that Blue Dolphin took down
the offending advertisements once it was contacted by counsel for Mr. Jackson (and
after accidentally re-posting the Facebook post, Blue Dolphin took it down once more).
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Id. at 3 (Blue Dolphin employee writing to counsel for Mr. Jackson, “I apologize [the
advertisement] was posted by my granddaughter in error [a]nd was taken down already.
I accept responsibility for [h]er actions [and] I assure [you] it was not intentional[.] She
was not aware of any pending litigation”); ECF No. 4 ¶ 79 (Mr. Jackson acknowledging
in his complaint that “the infringing advertisement appears to have been removed”). To
be sure, a finding of willfulness is “not a prerequisite for an award of profits in
infringement cases.” Variety Stores, Inc. v. Walmart Inc., 852 F. App’x 711 (4th Cir.
2021). And, unlike in the copyright context, a de minimis defense has not been
recognized in trademark law. See Jalinski Advisory Grp., Inc. v. JBL Fin. Servs. Inc.,
Case No. 19-cv-1914-DDN, 2022 WL 4546895, at *4 (E.D. Mo. Sept. 29, 2022). That
said, Blue Dolphin’s seeming good faith and its minimal actual use of the asserted
trademark would not likely amount to much in the way of damages, even if Mr. Jackson
prevails on liability. See Romag Fasteners, Inc v. Fossil, Inc., 590 U.S. 212, 219 (2020)
(“[W]e do not doubt that a trademark defendant’s mental state is a highly important
consideration in determining whether an award of profits is appropriate.”). Nonetheless,
because its Facebook posts did constitute trademark infringement if the evidence is
construed in Mr. Jackson’s favor, the Court will deny Blue Dolphin’s motion for
summary judgment.
IV. 	CONCLUSION
Because there are several material factual issues related to the common law
ownership of the Softones trademark that must be resolved before any party can prevail,
the Court will deny the motions for summary judgment. A separate order will follow.
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Date: February 13, 2026
Adam B. Abelson
United States District Judge
/s/
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