The opinion of the court was delivered by: Judge Trauger
Pending before the court is the Motion for Summary Judgment filed by the defendants, (Docket No. 28 at 1*fn1 ), to which the plaintiffs have responded (Docket No. 39), and the defendants have replied (Docket No. 44). For the reasons discussed herein, the defendants' motion will be denied.
FACTUAL BACKGROUND and PROCEDURAL HISTORY*fn2
Plaintiffs Edward Enoch and MTB&E, LLC ("MTB&E"),*fn3 a corporation of which Mr. Enoch is the manager,*fn4 seek a declaratory judgment that they are the rightful owners of the trademark "The Stamps Quartet." Mr. Enoch was married to Shirley Sumner Enoch, one of the defendants in this case, from 1970 to 1980. (See Docket No. 11 ¶ 22) During approximately that time, as well as from 1990 through 1998, Mr. Enoch performed and recorded songs with a gospel music group, entitled "J.D. Sumner and the Stamps Quartet," that included Ms. Enoch's father, J.D. Sumner.*fn5
In 1963, J.D. Sumner helped to form "The Stamps Quartet, Inc.," which is the corporate defendant in this case. According to the defendants, in 1976, Mr. Sumner became the sole holder of all interest in this corporation. (Docket No. 11 ¶¶ 14, 17) During his time performing with "J.D. Sumner and the Stamps Quartet," Mr. Enoch was an employee of "The Stamps Quartet, Inc."
On May 23, 1993, J.D. Sumner executed a last will and testament. A concurrently executed and attached Living Trust Agreement purported to give Mr. Sumner's grandson, Jason Enoch, all right, title, and interest in "The Stamps Quartet, Inc." In 1998, Mr. Sumner executed another Living Trust Agreement. This agreement indicated that these same rights should be given to Shirley Sumner Enoch. In the event of Ms. Sumner's death, this latter agreement specified that all right, title, and interest was to be divided between Jason Enoch and Kathy Hall, another of Mr. Sumner's grandchildren. (See Docket No. 44, attached 1998 Living Trust Agreement at 3) The defendants also have produced an undated, unsigned document in which Jason Enoch apparently conveys to Shirley Sumner Enoch "any and all right, title, or interest which I may have or may ever [have] had in The Stamps Quartet, Inc." (See Docket No. 44, attached Sale and Conveyance)
Mr. Sumner died on November 16, 1998. Following his death, Shirley Sumner Enoch, whose position with The Stamps Quartet, Inc. is disputed but who, according to the plaintiffs, at least had the authority to "close up the group," informed the group's touring members that she was taking the group "off the road." (See Docket No. 43 ¶¶ 17-18) In 2003, Edward Enoch began using the trademark "The Stamps Quartet" for "entertainment services in the nature of live performances by a musical group."*fn6 (See Docket No. 39 at 2) The plaintiffs continue to use this trademark at present. According to the defendants, they do as well. (See Docket No. 28 at 12)
On December 19, 2003, counsel for Shirley Sumner Enoch and Frances Sumner Dunn sent Mr. Enoch a cease a desist letter, demanding that he cease use of the trademark "The Stamps Quartet," noting that Ms. Enoch and Ms. Dunn intended to challenge in court any issuance of a trademark by the United States Patent and Trademark Office ("PTO") to Mr. Enoch, and advising him to contact them if he desired to negotiate a license for the trademark's use. (See Docket No. 1, Ex. A) Counsel purporting to represent only Shirley Sumner Enoch sent a similar letter on March 24, 2004, this time to counsel for both Mr. Enoch and MTB&E. (See id., Ex. B) On September 9, 2004, counsel again purporting to represent only Ms. Enoch sent a cease and desist letter to counsel for Mr. Enoch, with no mention of MTB&E. (See id., Ex. C)
The defendants at one time filed an application with the PTO to register the trademark "The Stamps Quartet," but they later abandoned it. MTB&E subsequently applied for the same trademark. Its application was uncontested by the defendants, and the trademark's registration was granted to MTB&E on July 26, 2005.
On October 12, 2004, the plaintiffs filed their Complaint for Declaratory Judgment. The defendants counterclaimed on November 1, 2004, seeking a declaratory judgment stating that, among other things, the plaintiffs had infringed on their trademark and engaged in unfair competition. (See Docket No. 11 at 4) The defendants, on December 1, 2005, moved for summary judgment on the plaintiffs' efforts to secure a declaratory judgment. (See Docket No. 28 at 1)
I. Although MTB&E has Standing to Bring Suit, Edward Enoch Does Not
The defendants claim that both the corporate plaintiff, MTB&E, and the individual one, Edward Enoch, lack standing to bring suit. While their first claim is incorrect, their second one has merit.
The defendants base their argument that MTB&E lacks standing on uncontroverted evidence that the corporation's articles of incorporation were revoked on October 13, 2003. (See Docket No. 42 ¶ 23) Although potentially persuasive under other circumstances, the effects of this revocation were negated by the reinstatement of the articles on January 23, 2006, which renewed the corporation's ability to bring suit. See T.C.A. § 48-24-203 (2005) ("When the reinstatement is effective, it relates back to and takes effect as of the effective date of the administrative dissolution, and the corporation resumes carrying on its business as if the administrative dissolution had never occurred."); Blaylock & Brown Constr. Co. v. Collierville Bd. of Mayor & Alderman, 23 S.W.3d 316, 323 (Tenn. Ct. App. 1999), permission to appeal denied, June 19, 2000.
Tennessee courts have clearly indicated that this renewed capacity can cure a defect in standing that existed at the time a corporation or other such entity filed suit. For instance, in Blaylock, a homeowner's association that lost its corporate status in 1990 due to administrative dissolution appealed, in 1997, a Health Department permit that allowed the defendant to operate an incinerator. See id. at 318, 323. Approximately two months after it filed suit, the association's corporate status was reinstated. See id. at 324. The Court of Appeals ultimately upheld the association's power to bring such a suit, finding that "the reinstatement of the Homeowner's Association's corporate status effectively restored its capacity to pursue its appeal . . . ." See id. at 323. Additionally, in Grand Valley Lakes Prop. Owners Assoc. v. Cary, the Court of Appeals upheld an association's standing to file suit, despite the fact that its corporate charter, which had been revoked two years prior, was not reinstated until thirteen days after its filing. 897 S.W.2d 262, 268-69 (Tenn. Ct. App. 1994), permission to appeal denied, Jan. 3, 1995.
Here, the plaintiff's corporate status was not reinstated until approximately fifteen months after it brought suit in this court. The defendants have not cited--and the court's own research has not revealed--any evidence that the comparatively longer time between the plaintiff's filing and their renewal of corporate status, as compared to the shorter time periods at issue in Blaylock and Grand Valley Lakes, should influence the plaintiff's standing to bring ...