Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation

Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).

The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA.  "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.

First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard.  The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.

Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act.  "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB."  Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB.  Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff.  To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff.  Accordingly, Hard Rock was granted summary judgment dismissing the case.

Super Bowl Shuffle Case Belongs In Federal Court; Remand Denied

Den v. Renaissance Marketing Corp., No. 14-cv-2999, 2014 BL 303007 (N.D. Ill. Oct. 28, 2014).

In case concerning defendants' alleged use of the "Super Bowl Shuffle" without plaintiff' authorization, a federal court in Illinois held that the case should remain in federal court as preempted by the federal Copyright Act.  Accordingly, plaintiffs' motion to remand to state court was denied.

The Super Bowl Shuffle is a song and music video trumpeting the success of the 1985 Chicago Bears.  Plaintiffs initially brought a case in Illinois state court alleging that defendants were not assignees of the record label's interest and therefore defendants were improperly benefiting from the marketing, distribution and licensing of the song without authorization.  Defendants removed the case to federal court, claiming that the state-law claims (for constructive trust, injunctive relief, conversion, unjust enrichment, and accounting) were preempted by the Copyright Act.  Plaintiffs moved to remand to state court.

The Court held that removal of the case to federal court, under 28 USC 1441, was proper.  The Court found that the Copyright Act preempted the state law causes of action for conversion, declaratory judgment and injunctive relief.  17 USC 301.  Plaintiffs were not just seeking to enforce the royalty agreement with the label, as defendants allegedly were improper assignees of the contract.  The rights seeking plaintiff sought to enforce were really copyright claims, protecting plaintiffs "against the world."  Other claims -- for constructive trust, unjust enrichment, and an accounting -- were not preempted, but the Court retained supplemental jurisdiction.