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ASK DR. BYRDS

Batch #2: June 27, 1997


About Ask Dr. Byrds

Ask Dr. Byrds is a place for that Byrds-related question that's been bugging you for all these years. If Dr. Byrds doesn't know the answer, he'll throw the question open to readers. And if you have corrections or elaborations to an answer by Dr. Byrds, by all means send it in. Direct your questions to byrds@ebni.com. Names, handles, and E-mail addresses of correspondents will be published unless the writer asks that they be withheld or leaves them off the message. Please begin the subject line of your e-mail with the letters "ASK:"
This is an archived batch of older submissions to Ask Dr. Byrds. To read a different batch, use the appropriate link below:

#1: April 10, 1997

#2: June 27, 1997

#3: August 5, 1997

Current

Date: Tue, 27 May 1997 05:46:57 +0000
From: Tomcat (813@mlode.com)
Subject: Unlawful Arrogation Of The Name "The Byrds"

Tim,

Tomcat here. I only became aware of your ByrdWatcher website earlier this year. It is certainly well-organized with helpful links galore, and your information is extremely well-documented with bibliographies galore -- representing countless hours of studious concentration and dedication, no bout adoubt it!

However, I will take you up on your offer on the ByrdWatcher Welcome Page:

"And of course, we want your feedback, at byrds@ebni.com. Correct mistakes; offer opinions; ask questions."

At Byrds v. Byrds 1989-1990 is written this statement:

"To show they did not concede the name to Clarke, McGuinn, Hillman and Crosby performed together as the Byrds at the tribute to Roy Orbison in February, 1990."

I disagree strongly with that assertion, and the legality of it. Noted Byrds scholar Johnny Rogan writes in Timeless Flight:

"There was no doubting the antipathy that had occured as a result of the legal action and some disparaging comments were forthcoming from Clarke and the others, although that was nothing new in the Byrds' story. McGuinn, Crosby and Hillman made another appearance, BILLED AS 'THE ORIGINAL BYRDS', at a tribute concert for the late Roy Orbison at the Universal Amphitheater." (Timeless Flight, Rogan, 3rd edition, "Epilogue", page 277, emphasis mine.)

Federal District Judge William J. Castagna ruled against McGuinn, Crosby and Hillman in late May, 1989 in favor of Michael Clarke regarding ownership of the name "The Byrds". After all, "possession IS nine tenths of the law," and Roger McGuinn himself concedes:

"When we went to court to get the name of the band, we didn't establish ownership. The judge ruled in favor of Michael Clarke because he had been using the name and we [Crosby, Hillman and McGuinn] hadn't used it in years. When Michael died, the name went to his estate..." --McGuinn in Cleveland Scene.

This statement by Roger McGuinn all but admits that Michael Clarke legally established FULL ownership of the name "The Byrds" at the time of Judge William J. Castagna's ruling in May of 1989. This is further supported by the fact that McGuinn, Crosby & Hillman did NOT bill themselves as "The Byrds" at the Roy Orbison Tribute on Saturday, February 24, 1990, but billed themselves as "The Original Byrds" instead -- something Roger McGuinn would like everyone to forget. Had McGuinn, Crosby and Hillman had ANY right whatsoever to use the name "The Byrds" at the Roy Orbison Tribute, they most assuredly would have done so.

This naturally leads one straight to the Nashville Session and the Byrds Boxed Set booklet in which Roger Mcguinn claims the name "Byrds" not only for the Nashville Session, but for the Roy Orbison Tribute as well. This, I believe (knowing Roger as I do), is a blatant and brazen -- as well as unlawful -- arrogation of the name "The Byrds", which is now lawfully owned by the estate of the late Michael Clarke.

Since Roger McGuinn concedes that the name is now fully in the hands of the estate of the late Michael Clarke, then that means that SOMEWHERE along the way, Michael Clarke established FULL legal ownership of the name "The Byrds". If this can be proven to have been fully established at the time of Judge William J. Castagna's ruling in May of 1989 -- as I believe it WAS -- then not only has the name "The Byrds" been unlawfully arrogated, but Chris Hillman's 1981 natural maple G & L (possibly Music Man) bass guitar, which hangs between Roger McGuinn's two 1970 Rickenbacker 12-strings in the Rock and Roll Hall of Fame + Museum, doesn't have 15 minutes of fame with The Byrds

-at any time
-at any place
-on any stage
-or in any studio

and is therefore a complete forgery. (Forgery = counterfeit guitar.)

Well, you asked for my feedback, and you got it!!!

Keep up the good work with the ByrdWatcher website! :-)

Tomcat

Lawful owner of the "Eight Miles High" Rickenbacker: McGuinn's main studio and stage guitar from December 1965 to the end of the Byrds in 1973
http://www.uark.edu/~kadler/rmcguinn/byrds.gif
http://www.ntsource.com/~berris/byrds1.jpg
http://user.aol.com/itrstudio/roger2.jpg
http://www.vincentflanders.com/byrd2.gif
http://www.vincentflanders.com/byrd.gif
http://www.vincentflanders.com/rm.gif


Hi Tomcat! Thanks for the kind words about the site. Thanks also for the chance to clarify the legal situation around the Byrds name a bit further, since a lot of people share the misconception that Michael Clarke "owned" the Byrds name after Judge Castagna's ruling in 1989. In fact, that ruling left the ownership of the name legally unsettled. We've consulted with our very own at-turn-turn-turn-ey on this question, and below is the answer we got. The 1989 ruling referred to here and by Tomcat is reprinted in its entirety on pages 231 and 232 of Rogan's book, Timeless Flight.


The 1989 Lawsuit

First let's look at the legal situation at the time of Judge Castagna's ruling. Here's the basic background: Crosby, McGuinn and Hillman sued Michael Clarke in 1989 for deceptive trade practices, unfair competition, and false advertising. There was no trademark claim, apparently because no one owned the trademark at the time. Clear ownership of a trademark would have settled things immediately, and presumably have prevented a lawsuit from occurring. (For reasons of space, I will refer to Crosby as the lead plaintiff since his manager Bill Siddons was spearheading the lawsuit on behalf of Crosby, McGuinn and Hillman.)


The Standard for a Preliminary Injunction

When, as here, plaintiffs file suit asking a judge to make someone stop doing something, they typically seek a preliminary injunction immediately after filing suit. The judge quickly holds a hearing where the parties argue over whether the judge should enjoin (that is, forbid) the activity in question for the time being, starting immediately, and pending the outcome of the actual lawsuit. Typically the actual trial "on the merits" would not conclude until many months or even years later, so the preliminary injunction procedure allows a judge to make a temporary decision about the case when the judge is persuaded it's necessary.

In order to persuade a judge to issue a preliminary injunction, the plaintiffs have to show four things: first, that the plaintiffs have a substantial likelihood of prevailing on the merits (i.e., at the eventual trial); second, that the plaintiffs would be irreparably injured without the injunction; third, that the plaintiffs' threatened injury outweighs the damage that the injunction would cause to the other party; and fourth, that issuing the injunction would not harm the public interest.

If the plaintiffs fail to demonstrate any of these four elements to the judge's satisfaction, the judge will deny the injunction. As you can imagine, the outcome of preliminary injunction proceedings frequently gives the parties a pretty clear idea what the judge's thinking is in the case, and often leads to the settlement of the entire case. For example, a judge might well rule that the plaintiffs in a given case did not show a substantial likelihood of winning on the merits. This would send a clear signal to those plaintiffs that their chances of winning on the merits were slim, at least in front of that judge.


Judge Castagna's 1989 Ruling

Rogan's book is actually quite precise about what happened in this case. Judge Castagna ruled against Crosby et al. on the preliminary injunction motion. The only basis for that decision cited in his opinion is that the plaintiffs failed to show that they would be irreparably injured if he did not issue an injunction. His rationale was that (1) they could cite only one clear instance of public confusion in four years, and (2) if Clarke's actions were so harmful, the others wouldn't have waited four years to sue him. (As the page in question states, this analysis shows that Clarke's lawyers successfully blurred the very real distinction between Gene Clark's outfit and Mike Clarke's.)

The judge's opinion didn't say anything about the likelihood of the plaintiffs' success on the merits. He didn't say, "Michael Clarke is the rightful owner of the Byrds name." He didn't say, "Crosby and company are not the rightful owners of the Byrds name." He just said he would not issue an injunction against Clarke while the trial was pending.

At this point Crosby et al. had a judgment call to make. They could see the case through to a trial, or they could give up. Not unreasonably, they concluded that it was too expensive to go to trial and that their chances of succeeding with this judge were not as good as they would like. Therefore, they dropped the suit. As a result, no judge, including Judge Castagna, has ever ruled on the question of whether the Byrds name belongs to Clarke, or to Crosby, McGuinn and Hillman, or to Gene Clark for that matter.


McGuinn's Supposed Admission

On the basis of McGuinn's comments in the Cleveland Scene, Tomcat postulates that at some later date, the legal right to the name must have been resolved in favor of Mike Clarke. I think that's extremely unlikely. Legal proceedings are public documents, so any further proceedings about the Byrds name would certainly have been picked up by the media and Byrds fandom. The only alternative would be that they reached some sort of settlement in which Mike Clarke paid some amount of money to Crosby, McGuinn and Hillman and they renounced any claim they might have on the name. Again, it seems unlikely that such a deal could happen without fans hearing about it. And besides, how likely is it that Crosby, McGuinn and Hillman would sell Mike Clarke their rights in the name, whatever their extent? For that matter, how likely is it that Mike Clarke could come up with any money to pay the others for such a settlement?

I don't think we can rely too heavily on the quote by McGuinn. Roger McGuinn is a smart man, but he isn't a lawyer, and neither are the writers for the Cleveland Scene. I don't think we should treat the statement as if it were one drafted by his attorney and submitted in a pleading. Taken literally, McGuinn's quote might lead you to believe that Clarke "owned" the Byrds name, but if that's really what he said (and meant), he was mistaken. I think the more likely explanation is that he was speaking casually, or that the conversation was transcribed or edited so as to make it seem that way.

And anyway, most of what McGuinn said is an accurate, if imprecise, summary of the actual legal situation described above. In other words, the judge did rule in favor of Clarke -- except that he ruled for Clarke in the injunction proceeding, not in a trial on the merits. And the reasons McGuinn gives for the ruling are more or less as stated in the judge's opinion. The entire quote would be absolutely correct if it contained the following boldfaced revisions: "When we went to court to get the name of the band, we didn't establish ownership -- and neither did Clarke. The judge ruled in favor of Clarke in the preliminary injunction proceeding because he had been using the name and we [Crosby, Hillman and McGuinn] hadn't objected to it for four years. When Michael died, his rights in the name, to the extent he had any such rights, went to his estate..."

A couple words about Clarke's estate: When someone dies, all of his property goes into his estate automatically, so that an executor can distribute that property in accordance with the will of the deceased. So any right Clarke had to the Byrds name would indeed have gone to his estate. That doesn't mean he really had any such right in the first place -- it just means that if he did have any rights, they would become part of the estate and eventually be distributed to his heirs or sold to pay off his debts. If the executor had sold Clarke's rights to someone, the new owner would have only the rights possessed by Clarke at the time of his death. In this case, those rights are unsettled. A new owner could try suing Crosby, McGuinn and Hillman to prevent them from using the name, and then a judge would make a determination about whether Clarke's rights in the name were, total, or non-existent, or something in between. (An interesting question is whether McGuinn, Crosby, and/or Hillman tried to purchase Clarke's rights (if any) from his estate, which would have resolved the whole issue rather tidily and helped provide a bit of money for his heirs.)


Blatant, Brazen, and Unlawful Arrogation?

From a legal standpoint, after the May 1989 ruling, both sides had a strong incentive to use the name "Byrds" in order to bolster their claims to ownership, even if they didn't intend to sue the other side to prevent them from using it. (Bolstering their claim would help their defense if they got sued by the other side, and it would help them on the trademark front as well, where all parties were staking claims to the name.) In fact, if either side had failed to use the Byrds name, their opponents would have argued that they had effectively conceded their claim to the other side.

I hadn't noticed that McGuinn, Crosby and Hillman billed themselves as "the original Byrds" (as opposed to just "the Byrds") at the Roy Orbison Tribute. From a legal standpoint, this is not a very meaningful distinction. If in fact, Clarke were later found by a judge to have complete rights in the band name, calling themselves "the Original Byrds" would not have protected Crosby et al. from liability because it was no less likely to confuse the public than just calling themselves "the Byrds." In any event, as you point out, they certainly claimed the name by using those performances and the Nashville Sessions on a release under the Byrds name.

Similarly, if a judge were to have ruled that Crosby et al. had complete rights in the band name, the fact that Clarke's group called itself "The Byrds featuring Mike Clarke" would not have protected him from liability, either.

Yes, these post-ruling uses of the name by Crosby, McGuinn and Hillman were "blatant and brazen," because the whole point in using the name is to ensure that the general public associated them, and not Clarke, with the band name. Clarke's use of the name was similarly "blatant and brazen," because he shared the goal of associating the Byrds name with himself, at least theoretically. The real issue is whether the use of the name was "an unlawful arrogation" of the Byrds name.

The answer is, it depends who owns the name. The owner is whoever a judge says is the owner, and no judge has ever said who the owner is. Given Clarke's death, it seems unlikely that any judge will ever make such a determination (though it remains a theoretical possibility). Under those circumstances, everyone's use of the name is potentially an unlawful arrogation.

It is worth noting that Clarke also declined to pursue his counterclaims against McGuinn, Crosby and Hillman, or to sue them for performing as the Byrds, or to sue them for issuing the 1990 sessions on the Boxed Set. If he was confident about his claim to the name, he might have done just that. (Of course, sales of the Boxed Set presumably have the effect of increasing attendance at his own shows, so it might have been counterproductive to sue.)


Hillman's 1981 G & L Guitar

That leaves us with the guitar-related issue: Is Chris Hillman's 1981 guitar a "forgery" or a "counterfeit"? As those words are usually used, I'd say, no. It would be a forgery or a counterfeit if it had been made by somebody other than G & L, who then pasted a G & L logo on it in an attempt to convince a purchaser that it really was a G & L. I guess your real point is that the guitar is misleadingly labelled, or not appropriately included in the exhibit of Byrds memorabilia at the Rock Hall. Even here I have to disagree. I believe the exhibit states clearly that the guitar was used in the recording of the 1990 Nashville sessions. Here I think the Hall is entitled to rely on Sony's determination that the 1990 sessions were by the Byrds. In any event, the exhibit includes a handbill from the 1977 McGuinn/Clark concerts, and mementos from McGuinn's youth, so the Rock Hall clearly takes a broad view of what is relevant to an exhibition of Byrds-related memorabilia. I think this is an appropriate choice by their curators, and consistent with their approach in other exhibits. And as a practical matter, would we have them return the handbill and the guitar to the donors with an explanation of why they had been disqualified from the exhibit? With that policy, it wouldn't take long to tick off every donor.

As to the ownership and identity of any other Byrd-related guitars, I have advised my client ByrdWatcher that I am not able to offer any legal opinion, but I did like looking at the pictures at the URLs provided in Tomcat's sig.file.


Okay, it's me, Dr. Byrds again. Sheesh, I guess that's what I get for asking a lawyer. Good thing he's helping out on a pro bono basis! Thanks for the question, Tom.



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