concurring.
We agree that Judge Wyzanski’s opinion correctly states the law governing this case as he views the record. And, we join that opinion with one exception concerning the course of action to be followed on remand: The district court, before issuing an injunction, should allow the parties an opportunity to present further evidence and argument in light of our opinions today.
To explain why we reach this conclusion, we specify two mistakes that we believe the district court made. First, the court entered a decree that, in effect, left both plaintiffs and defendants free to use the *76trade name. Even if this result were fair as between the parties, it is not fair in respect to the public. It creates the very ‘source’ confusion that legal trademark, and tradename, doctrine developed to avoid. When arguing parties are, in a sense, both responsible for the success of a name, a court may 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. See 1 J. McCarthy, Trademarks and Unfair Competition § 16:14 at 752-54 (1984). In short, we do not view the “unclean hands” doctrine as sufficient, on the facts of this case, to justify continuation of public confusion.
Second, both district court and magistrate jumped without explanation from their finding that the public associated the name NEW EDITION with the plaintiffs to the conclusion that the name belonged to the plaintiffs. This conclusion does not necessarily follow. After all, firms frequently develop ‘fictional names’ and hire employees to play the named role. The firm’s express purpose may be to have the public associate the fictional name with the live employee; but that association does not automatically give the employee the right to the name. Presumably, for example, CBS, not Richard Boone, owns the name “Paladin.” Cf. De Costa v. Columbia Broadcasting System, Inc., 520 F.2d 499 (1st Cir.1975). In the absence of a specific contract, to decide who owns the name may require a court to examine all relevant circumstances, including the history of the parties’ relation to each other and their likely understandings, see 1 J. McCarthy, Trademarks and Unfair Competition, § 16:14 at 755 (1984), in order to reach an equitable decision.
These points, implicit in the panel’s full opinion, suggest to us that both magistrate and district court viewed this case through a very different legal lens than do we. That fact together with the difficult nature of the legal task — creating an ‘equitable relationship’ (involving both control of the name and perhaps offsetting compensatory monetary payments) — means that the parties should have further opportunity to present evidence and argument before the district court reaches a decision. It may well be, for example, as Judge Wyzanski writes, that the record clearly shows the plaintiffs were Streetwise employees and could not have been anything more. Yet, the plaintiffs were not total strangers to the name NEW EDITION. Suppose there were evidence that they had hired StreetWise as a kind of agent, to promote and to sell both them and their name in the very different nationwide record market? We do not say there is any such evidence. We believe only that, given the change in legal theory that we enunciate, the parties in fairness ought to have an opportunity to make their case again before an injunction issues.