Third Pentacle Settles Suit Against Fleshlight Over Unpaid Royalties

DAYTON, Ohio—Third Pentacle owner Tom Leach, owner of ThatOneProgram, filed suit June 21 against Fleshlight parent company Interactive Life Forms and former partner Raven Riley, alleging trademark infringement.

Leach told AVN that the case was settled favorably for both parties, the terms of the settlement are confidential and the suit against ILF was dismissed with prejudice. AVN has learned that the case was resolved June 30.

However, Leach’s attorney David Brannon confirmed that the suit against Riley herself is still pending and in litigation.

“We’re both happy with how [the settlement] turned out,” ILF Executive Vice President Brian Shubin told AVN. “There was a slight breakup of three parties—Raven Riley, Tom Leach and us—and we went back and rectified the situation and passed out royalties that were deserved from Fleshlight Girls’ sales. It was simply an issue of parties splitting so we went back and rectified it. The monies were due so we paid them up.”

In the suit Leach claimed that ILF, its owner Steve Shubin and Riley, breached a licensing agreement that was entered into in March 2007 that licensed Riley’s name to ILF for the purposes of making Raven Riley-branded sex toys.

According to court documents, while Leach and Riley were 50-50 partners in Third Pentacle at one point, the pair was engaged in a lawsuit of their own in June 2008, the result of which caused Leach to assume sole ownership of Third Pentacle.

In May 2005, Third Pentacle and Leach applied to trademark the name Raven Riley. The request was never officially granted because of the company’s “prior attorney’s failure to respond to a question regarding the mark,” according to court docs. The application for the mark was considered abandoned in Aug. 2007.

On at least three separate occasions, Leach contacted ILF to request that they cease using the name Raven Riley in conjunction with a line of Fleshlights and that the company has violated its licensing agreement with Third Pentacle.

Leach claimed that despite his requests, ILF continued to sell the products resulting in confusion in the marketplace, unfair competition and violation of his common-law trademark causing his business irreparable harm and loss of revenue.

Leach alleged that ILF ceased paying him royalties under the licensing agreement as of May 2008. However, according to Leach, ILF cut him a check in Oct. 2008 that it failed to sign. ILF asked for the check back in order to fix the defect, but it was not returned to Leach.

Interestingly, ILF owner Shubin attempted to register the Raven Riley trademark this February. Riley also attempted to register her distinct mark on the very same day, which Leach claims puts her in violation of the operating and settlement agreements they entered into in April 2009, in which Riley was divested of her half of Third Pentacle.

Attempts to reach Riley via email for comment were unsuccessful at post time.