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THE STAIN Settles Lawsuit

Oct 6, 2006
IPFrontline

Licensing deal gone awry

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After a three and a half year legal battle over the name THE "STAIN", Jon Stainbrook's band THE STAIN has settled their court case with STAIND. Founded by Stainbrook in 1980, THE STAIN has been performing live shows and received worldwide acclaim for music used in TV, video, and DVD for national and international markets. THE STAIN was also the stage band for Howie Mandel, as part of his act during two tours. THE STAIN's recordings have been used by ESPN, MTV, Disney, FOX, Mountain Dew, Jose Cuervo, Coke, Budweiser, BASF, and Nissan.

Stainbrook registered a trademark for THE "STAIN" with the U.S. Patent and Trademark Office. In 1999, Stainbrook and STAIND entered into a licensing agreement, which granted STAIND the right to use Stainbrook's internationally established, well-known, and federally registered trademark for THE "STAIN" for promotion of STAIND. THE STAIN retained sole rights to their music and publishing. In 2003, STAIND sued Stainbrook in a New York Federal Court over the 1999 licensing agreement in an attempt to cancel Stainbrook's rights in the trademark. Judge Miriam Cedarbaum, the presiding judge in the Martha Stewart stock scandal, ruled in favor of Stainbrook. In New York, Stainbrook represented himself pro se, defeating STAIND's nationally recognized entertainment attorney Brad Rose of Pryor, Cashman, Sherman, & Flynn.

One year after losing in New York, STAIND again sued Stainbrook, but this time in an Ohio Federal Court using a different attorney. Stainbrook had no choice but to counter-sue STAIND and retained intellectual property attorney Anthony J. DeGidio. Stainbrook initially agreed to license THE "STAIN" trademark to STAIND in an act of goodwill and tried to resolve the issues in an amicable manner, but attempts to reach STAIND at all levels, from their management, booking, record label, and legal counsel, were fruitless.

Instead of talking to Stainbrook, STAIND retained legal counsel and sued him. STAIND guitarist Mike Mushok claimed during the 2005 deposition in Toledo, Ohio that STAIND avoided Stainbrook because they were not made aware of promises a Geffen Records Executive made to Stainbrook on their behalf during the 1999 licensing negotiations. Several lawyers later, the parties settled their claims in 2006. The parties partially re-negotiated the 1999 licensing agreement, which allows Stainbrook and STAIND the right to use the trademark in certain areas.

Previously, Stainbrook had refused other bands' requests to use or purchase his trademark. In 1994, Living Colour knowingly infringed on Stainbrook's registered trademark, which prompted Living Colour and Sony to terminate further pressings of Living Colour's 1993 album entitled "Stain". Also, Stainbrook forced the Los Angeles band Lit, formerly known as Stain, to change their name.

As he has done since the early 1980s, Stainbrook continues to write custom soundtrack music for a show on a national sports network. He is also finalizing his thesis to complete his Masters degree at The University of Toledo. Stainbrook is eager to put the negative ordeal of litigation behind him and to move forward with the creation of his art, which is after all, music.

A major portion of Stainbrooks life has been spent in civil service and supporting charities. Through his numerous volunteer activities, Stainbrook has supported a multitude of community programs including Easter Seals, Mom's House, CitiFest, Lutheran Social Services, Rock the Vote, Kidney Foundation, Salvation Army, Homeless Awareness Project, and Race for the Cure. Stainbrook plans to donate a substantial portion of the proceeds of the settlement to the formation of faith-based substance abuse awareness and counseling organization for young adults.

http://www.thestain.net

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