Emerald City Mgmt., LLC v. Kahn, No. 15-40446 (5th Cir. Mar. 8, 2016) [decision].
The Fifth Circuit vacated a preliminary injunction ordering the leader of a band called "Downtown Fever" to transfer control of a Facebook account to the band's manager who had registered the mark "Downtown Fever." The lower court had issued an injunction barring defendant from using the band name, and the defendant thereafter voluntarily de-activated the band's Facebook page. Then, the lower court found that the plaintiff should be granted an injunction ordering the defendant to give control of the Facebook page. However, the appeals court found that was an abuse of discretion because "neither shutting down a Facebook account nor blocking administrator access to a Facebook account constitutes 'use in commerce' of a trademark. Because the Facebook page was not accessible to anyone, the defendant was not using the trademark.
Showing posts with label Trademark. Show all posts
Showing posts with label Trademark. Show all posts
April 19, 2016
Former Commodores Band-Member Properly Enjoined From Using "Commodores" Or Performing Under "Commodores" Name
Commodores Entertainment Corp. v. McClary, No. 14-14883 (11th Cir. Apr. 15, 2016).
The 11th Circuit affirmed a preliminary injunction enjoining the defendants from using the "The Commodores" mark and from performing under the name "The Commodores featuring Thomas McClary" or "The 2014 Commodores." The Commodores were a popular funk/soul group on the Motown label in the 1970s (hits included Brick House and Three Times a Lady). In the early 1980s, two fo the original members of hte group left to embark on solo careers, including defendant McClary. The remaining members, as the plaintiff corporation, continued to perform and registered four trademarks. In 2014, defendant McClaray began performing songs made famous by the band in the 1970s with his own band called "The Commodores featuring Thomas McClary" or "The 2014 Commodores." This use gave rise to litigation, and the lower court granted plaintiff a preliminary injunction. The 11th Circuit affirmed, finding that defendant's use was likely to confuse and therefore plaintiff was likely to succeed on the merits, and further that the plaintiff had standing and had made a showing of irreparable harm. Lastly, the Court found that there was no error with the distric court's conclusion that the defendants may be enjoined extraterritorially (i.e., outside of the United States).
The 11th Circuit affirmed a preliminary injunction enjoining the defendants from using the "The Commodores" mark and from performing under the name "The Commodores featuring Thomas McClary" or "The 2014 Commodores." The Commodores were a popular funk/soul group on the Motown label in the 1970s (hits included Brick House and Three Times a Lady). In the early 1980s, two fo the original members of hte group left to embark on solo careers, including defendant McClary. The remaining members, as the plaintiff corporation, continued to perform and registered four trademarks. In 2014, defendant McClaray began performing songs made famous by the band in the 1970s with his own band called "The Commodores featuring Thomas McClary" or "The 2014 Commodores." This use gave rise to litigation, and the lower court granted plaintiff a preliminary injunction. The 11th Circuit affirmed, finding that defendant's use was likely to confuse and therefore plaintiff was likely to succeed on the merits, and further that the plaintiff had standing and had made a showing of irreparable harm. Lastly, the Court found that there was no error with the distric court's conclusion that the defendants may be enjoined extraterritorially (i.e., outside of the United States).
March 17, 2016
Rapper Can't Use "Rolls Royce" Name Or Images
Rolls-Royce Motor Cards v. Davis, No. 15-0417 (D.N.J. Mar. 11, 2016).
On an unopposed motion for default judgment, the Court entered a permanant injunction restraining the defendant rapper from using the name "Rolls Royce Rizzy" and using Rolls Royce imagery. Plaintiff brought claims for trademark infringement, unfair competition, false designation of origin, and trademark dilution under the Lanham Act, and was awarded default judgment on those claims. However, Plaintiff was not awarded default judgment on its claim for unfair competition under New Jersey common law.
On an unopposed motion for default judgment, the Court entered a permanant injunction restraining the defendant rapper from using the name "Rolls Royce Rizzy" and using Rolls Royce imagery. Plaintiff brought claims for trademark infringement, unfair competition, false designation of origin, and trademark dilution under the Lanham Act, and was awarded default judgment on those claims. However, Plaintiff was not awarded default judgment on its claim for unfair competition under New Jersey common law.
February 18, 2016
"Rat Pack" Generic For Live Shows
TRP Entertainment v. Cunningham, No. 13-16754 (9th Cir. Feb. 16, 2016) [non-precedential].
The 9th Circuit held that the term "The Rat Pack" is generic in the context of live shows about or in tribute to members of the Rat Pack, therefore not identifying any particular producer of a Rat Pack tribute show. Further, the lower court correctly ordered a disclaimer of the term "The Rat Pack" modifying the plaintiff's trademark registration pursuant to 15 USC 1119.
The 9th Circuit held that the term "The Rat Pack" is generic in the context of live shows about or in tribute to members of the Rat Pack, therefore not identifying any particular producer of a Rat Pack tribute show. Further, the lower court correctly ordered a disclaimer of the term "The Rat Pack" modifying the plaintiff's trademark registration pursuant to 15 USC 1119.
December 15, 2015
Default Judgment Entered In Grooveshark Case
Arista Records v. Tkach et al., No. 15-cv-3701 (SDNY Dec. 11, 2015).
The Court granted Plaintiff record companies a default judgment on their claims for copyright infringement, trademark counterfeiting, unfair competition, and cybersquatting claims based on the websites "grooveshark.io" and "grooveshark.pw". The plaintiffs had obtained a preliminary injunction, and the defendants did not respond to either the injunction or the complaint in any manner. The Court entered a judgment permanently enjoining Defendants' use of the "Grooveshark" marks and the infringing domains. Plaintiff UMG was also awarded $4 million for the trademark infringement, $400,000 for the cybersquatting, and statutory damages on the copyright claim of over $13 million. Plaintiffs were also granted their attorney's fees, to be calculated on a later submission.
The Court granted Plaintiff record companies a default judgment on their claims for copyright infringement, trademark counterfeiting, unfair competition, and cybersquatting claims based on the websites "grooveshark.io" and "grooveshark.pw". The plaintiffs had obtained a preliminary injunction, and the defendants did not respond to either the injunction or the complaint in any manner. The Court entered a judgment permanently enjoining Defendants' use of the "Grooveshark" marks and the infringing domains. Plaintiff UMG was also awarded $4 million for the trademark infringement, $400,000 for the cybersquatting, and statutory damages on the copyright claim of over $13 million. Plaintiffs were also granted their attorney's fees, to be calculated on a later submission.
October 29, 2015
Stratotone Mark For Guitars Was Abandoned, Permitting Junior Use
Agler v. Westheimer Corp., No. 14-099 (N.D. Indiana 10/28/15).
In a trademark infringement action concerning the mark STRATOTONE for guitars, the Court held that an abandonment of the mark permitted a junior user's use of the mark. A period of non-use by one of the parties triggered a presumption of abandonment, which was not rebutted.
In a trademark infringement action concerning the mark STRATOTONE for guitars, the Court held that an abandonment of the mark permitted a junior user's use of the mark. A period of non-use by one of the parties triggered a presumption of abandonment, which was not rebutted.
October 28, 2015
Will.i.am Denied Registration of :I AM" Trademark For Sunglasses
In re i.am.symbolic, llc, Serial Nos. 85044495 (TTAB mailed Oct. 7, 2015).
Black Eyed Peas frontman, "will.i.am," was refused registration of the mark I AM for use on sungalsses, on the basis of an existing mark for sunglasses for which there was a finding of likelihood of confusion. However, the application was permitted to proceed for other goods identified in the application under Class 9.
Black Eyed Peas frontman, "will.i.am," was refused registration of the mark I AM for use on sungalsses, on the basis of an existing mark for sunglasses for which there was a finding of likelihood of confusion. However, the application was permitted to proceed for other goods identified in the application under Class 9.
September 28, 2015
Most "BOSTON" Trademark Claims Dismissed In Dispute Between Former Band Members
Scholz v. Goudreau, No. 13-cv-10951 (D. Mass. Memo & Order Sep. 21, 2015).
In a trademark dispute between two original members of the band BOSTON, the Court dismissed most of the claims against a guitarist on the band's first two albums concerning the promotion of his current musical endeavors. Plaintiff's direct trademark infringement claims were dismissed with respect to various advertisements and performances, as well as defendant's use of meta-tags on his website. The contributory infringement claim survived summary judgment only with respect to defendant's invovlement with one band on the issue of direct control and monitoring of that band's advertisements and promotions. Plaintiff's claim for dilution by tarnishment failed because the alleged use, in connection with a political event, was not a use in commerce. As to unfair competition under the Lanham Act and Mass. state common law, plaintiff failed to establish evidence of reputational injury. As to breach of contract, plaintiff fialued to establish that defendant (and not third parties) violated a prior settlement agreement by deviating from the agreed to term "formerly of BOSTON". As to the "Truth In Music Statute," under Mass. state law, the Court found the statute applicable only to performances in Mass., and as to the two subject performances in the state, neither group sought to perform under the BOSTON name.
In a trademark dispute between two original members of the band BOSTON, the Court dismissed most of the claims against a guitarist on the band's first two albums concerning the promotion of his current musical endeavors. Plaintiff's direct trademark infringement claims were dismissed with respect to various advertisements and performances, as well as defendant's use of meta-tags on his website. The contributory infringement claim survived summary judgment only with respect to defendant's invovlement with one band on the issue of direct control and monitoring of that band's advertisements and promotions. Plaintiff's claim for dilution by tarnishment failed because the alleged use, in connection with a political event, was not a use in commerce. As to unfair competition under the Lanham Act and Mass. state common law, plaintiff failed to establish evidence of reputational injury. As to breach of contract, plaintiff fialued to establish that defendant (and not third parties) violated a prior settlement agreement by deviating from the agreed to term "formerly of BOSTON". As to the "Truth In Music Statute," under Mass. state law, the Court found the statute applicable only to performances in Mass., and as to the two subject performances in the state, neither group sought to perform under the BOSTON name.
August 6, 2015
Taylor Swift Must Be Deposed, Despite Her World Tour
Blue Sphere, Inc. v. Swift et al., No. 8:14-cv-00782-CJC-DFM (C.D. Cak. filed 08/04/15) [Doc. 65].
Despite her world tour, and claims that she has no knowledge about Plaintiff's claims, Taylor Swift must be deposed in a trademark action. The Court denied her motion for a protective order, finding that that, notwithstanding the "apex doctrine" that protects high-level corporate executives from harassing depositions, "the extraordinary circumstances that would warrant a pr otective order prohibiting the deposition of a named party are not present here." Further, Swifts schedule -- including her world tour -- was not a basis for a protective order. "There is no evidence in the record to show that Plai ntiffs have been inconsiderate of Swift’s schedule. To the contrary, the record shows just the opposi te. Nor does the evidence suggest that Plaintiffs have sandbagged Swift’s deposition to coincide with her world tour; instead, the record shows that, as in most cases, most deposi tions have been left until the end of the discovery period."
Despite her world tour, and claims that she has no knowledge about Plaintiff's claims, Taylor Swift must be deposed in a trademark action. The Court denied her motion for a protective order, finding that that, notwithstanding the "apex doctrine" that protects high-level corporate executives from harassing depositions, "the extraordinary circumstances that would warrant a pr otective order prohibiting the deposition of a named party are not present here." Further, Swifts schedule -- including her world tour -- was not a basis for a protective order. "There is no evidence in the record to show that Plai ntiffs have been inconsiderate of Swift’s schedule. To the contrary, the record shows just the opposi te. Nor does the evidence suggest that Plaintiffs have sandbagged Swift’s deposition to coincide with her world tour; instead, the record shows that, as in most cases, most deposi tions have been left until the end of the discovery period."
July 9, 2015
Keith Urban PLAYER Trademark Case Dismissed
Beckett v. Urban et al., No. 15-cv-1407 (C.D. Cal. dated July 6, 2015).
A trademark infringment and dilution claim against country music star Keith Urban, concerning the mark PLAYER, was dismissed on the pleadings. The Court found that plaintiff’s mark of “PLAYER” and Defendant s’ mark “Player by Keith Urban” are not sufficiently similar. Defendants use of the phras e “by Keith Urban” clearly denotes that Keith Urban is the good’s source, dispelling any potenti al confusion with Plaintiff’s band “PLAYER.” Further, the Court found that Plaintiff’s and Defendants’ goods and servicees are not closely re lated. Plaintiff’s trademark is for audio and video recordings featuring music and artistic performances by a rock band and for entertainment services in the nature of live audio performances by a rock band. Defendants are marketing a guitar and guitar lesson kit complete with audio a nd video recordings that teaches a consumer to use and play guitar. As to the dilution claim, Plaintiff failed to allege that his mark is sufficiently famous.
A trademark infringment and dilution claim against country music star Keith Urban, concerning the mark PLAYER, was dismissed on the pleadings. The Court found that plaintiff’s mark of “PLAYER” and Defendant s’ mark “Player by Keith Urban” are not sufficiently similar. Defendants use of the phras e “by Keith Urban” clearly denotes that Keith Urban is the good’s source, dispelling any potenti al confusion with Plaintiff’s band “PLAYER.” Further, the Court found that Plaintiff’s and Defendants’ goods and servicees are not closely re lated. Plaintiff’s trademark is for audio and video recordings featuring music and artistic performances by a rock band and for entertainment services in the nature of live audio performances by a rock band. Defendants are marketing a guitar and guitar lesson kit complete with audio a nd video recordings that teaches a consumer to use and play guitar. As to the dilution claim, Plaintiff failed to allege that his mark is sufficiently famous.
July 8, 2015
Jackson 5 Tribute Band Trademark Cancelled
Wonderbread 5 v. Gilles, TTAB No. 92052150 (TTAB 6/30/2015).
This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members. The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band. The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians. Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.” Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it. The application was therefore void ab initio, and the registration was cancelled.
This case involves a dispute about who owns the band’s name in the wake of the departure of one of the band’s five members. The band, a Jackson 5 tribute band, filed a petition to cancel a trademark registration obtained by a former member who filed the application for the registration only 3 days after he was fired from the band. The court found by a preponderance of the evidence that the mark WONDERBREAD 5 was not “personal” to the applicant/departing-band-member (Gilles), or for that matter, any of the band members as individual musicians. Rather, the mark signified the collective “style and quality” of the group, and the partnership, not the departing band member, controlled those qualities. That is to say, the mark WONDERBREAD 5 identified a Jackson 5 tribute band, not a “particular performer combination.” Thus, because the consuming public did not associate the mark with a particular member (but rather, a style of tribute band), the applicant did not "own" the mark when he applied for it. The application was therefore void ab initio, and the registration was cancelled.
February 11, 2015
Everyday I'm Hustlin' Lawsuit Against LMFAO Survives
Roberts v. Gordy, No. 13-24700 (S.D. Fla. dated Feb. 5, 2015).
Performer Rick Ross brought this action against the group LMFAO over use of "Everyday I'm Hustlin'" / "Everyday I'm Shufflin'" in defendant's song Party Rock Anthem. LMFAO moved to dismiss on the pleadings plaintiff's copyright and trademark infringement claims. The Court denied the motion, finding at this stage of the proceedings, plaintiff's allegations were sufficient. Whether the phrase was copyrightable, or the works were substantially similar, were not appropriate for a motion on the pleadings as those issues would require a fact intensive inquiry. Similarly, a factual inquiry was required on the trademark claim as to whether the phrase had acquired distinctiveness/secondary meaning.
Performer Rick Ross brought this action against the group LMFAO over use of "Everyday I'm Hustlin'" / "Everyday I'm Shufflin'" in defendant's song Party Rock Anthem. LMFAO moved to dismiss on the pleadings plaintiff's copyright and trademark infringement claims. The Court denied the motion, finding at this stage of the proceedings, plaintiff's allegations were sufficient. Whether the phrase was copyrightable, or the works were substantially similar, were not appropriate for a motion on the pleadings as those issues would require a fact intensive inquiry. Similarly, a factual inquiry was required on the trademark claim as to whether the phrase had acquired distinctiveness/secondary meaning.
January 23, 2015
Don Henley Suit Against Clothing Company Survives Dismissal
Henley v. Duluth Holdings, No. CV 14-7827 DSF (C.D. Cal. Jan. 21, 2015).
Don Henley's lawsuit concerning an advertisements for Henley-style shirts that urged customers to “Don a henley, take it easy,” survives defendant's motion to dismiss. The defendant apparel company had argued that the promotion was a joke. The Court found that Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.
Don Henley's lawsuit concerning an advertisements for Henley-style shirts that urged customers to “Don a henley, take it easy,” survives defendant's motion to dismiss. The defendant apparel company had argued that the promotion was a joke. The Court found that Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.
January 13, 2015
Iggy Azalea Granted Preliminary Injunction To Prevent The Posting Of Early Recordings
Kelley v. Primco Management, Inc., No. 14-cv-07263 (C.D. Cal. Jan. 12, 2015).
Pop star Iggy Azalea obtained a preliminary injunction based on claims that Defendants misappropriated the contents of her computer and began releasing infringing songs and music videos. Defendants claims that they had authority to use Azalea's name, likeness and various intellectual property assets pursuant to a Recording Agreement. Azalea claimed that the document was forged, and that was the key issue before the Court because no party disputed that Defendants had exploited Azalea's copyrights, trademarks and right of publicity. The Court held an evidentiary hearing and discussed the evidence presented on whether the document was forged. It concluded that, even though there was sharply conflicting testimony, Azalea had at the very least raised serious questions about the validity of the agreement, and therefore had raised serious questions going to the merits of her claims which were enough to grant a preliminary injunction. The court then considered the factors necessary for a preliminary injunction -- likelihood of success on the merits, threat of irreparable harm, balancing the equities, and the public interest -- and found that an injunction was warranted. Azalea was ordered to post a $20,000 bond.
Pop star Iggy Azalea obtained a preliminary injunction based on claims that Defendants misappropriated the contents of her computer and began releasing infringing songs and music videos. Defendants claims that they had authority to use Azalea's name, likeness and various intellectual property assets pursuant to a Recording Agreement. Azalea claimed that the document was forged, and that was the key issue before the Court because no party disputed that Defendants had exploited Azalea's copyrights, trademarks and right of publicity. The Court held an evidentiary hearing and discussed the evidence presented on whether the document was forged. It concluded that, even though there was sharply conflicting testimony, Azalea had at the very least raised serious questions about the validity of the agreement, and therefore had raised serious questions going to the merits of her claims which were enough to grant a preliminary injunction. The court then considered the factors necessary for a preliminary injunction -- likelihood of success on the merits, threat of irreparable harm, balancing the equities, and the public interest -- and found that an injunction was warranted. Azalea was ordered to post a $20,000 bond.
December 5, 2014
Motion For Judgment As Matter Of Law, Or For New Trial, Denied In Beastie Boys/Monster Case
Beastie Boys v. Monster Energy, 1:12-cv-06065-PAE (SDNY filed 12/04/14) [Doc. 181].
After a jury awarded plaintiff Beastie Boys a verdict on their copyright and trademark claims, defendant Monster moved for a judgment as a matter of law under Federal Rule of Civil Procedure 50. As to the Copyright Act claim, Monster argued that the evidence was insufficient to support the finding of willful infringement on which the award of enhanced statutory damages was based. As to the Lanham Act claim, Monster argued that the evidence was insufficient to support either a finding of a false endorsement or that
Monster acted with intentional deception. Monster alternatively moved for a new trial under
Rule 59 or for a reduction in damages. The court denied Monster’s motions.
After a jury awarded plaintiff Beastie Boys a verdict on their copyright and trademark claims, defendant Monster moved for a judgment as a matter of law under Federal Rule of Civil Procedure 50. As to the Copyright Act claim, Monster argued that the evidence was insufficient to support the finding of willful infringement on which the award of enhanced statutory damages was based. As to the Lanham Act claim, Monster argued that the evidence was insufficient to support either a finding of a false endorsement or that
Monster acted with intentional deception. Monster alternatively moved for a new trial under
Rule 59 or for a reduction in damages. The court denied Monster’s motions.
November 6, 2014
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.
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.
October 16, 2014
Former Band Member Enjoined From Using "Commodores" Mark For His New Band
Commodores Entertainment Corp. v. Thomas McClary, 6:14-cv-1335 (M.D. Fla. dated Oct. 9, 2014).
The Court granted the band "The Commodores" a preliminary injunction enjoining one of its founding members from performing under the name “The Commodores featuring Thomas McClary” or “The 2014 Commodores.”
First, the Court found that Plaintiff has demonstrated a substantial likelihood of success on its trademark infringement claim. Defendant had left the band in 1984. "When members of a band dispute ownership of a mark associated with the band, courts have found that members who remain active and associated with the band have better title to the mark than those who do not." Continuing, "Defendant no longer has a valid claim to ownership over the Marks. Rather, the band members who remained after Defendant left in 1984 have prevailing ownership because they maintained continuity with the group and have been in a position to control the quality of services of the Marks associated with the band name. Defendant has not put forward any evidence to suggest that he maintained quality or control over the Marks associated with The Commodores after he left; rather, it was the other original band members who stayed with the group that continued to control the nature and quality of the Marks, went on to win a Grammy, and further expanded the band’s fan base and recognition." (Internal cit. om.).
The Court also found that there is a likelihood that consumers would confuse the Grammy award winning band, ‘the Commodores,’ with the ‘The Commodores featuring Thomas McClary’ and/or ‘The 2014 Commodores'. Due to the trademark infringement, there was a presumption of irreparable harm, and the Court found the balance of equities in plaintiff's favor.
The Court granted the band "The Commodores" a preliminary injunction enjoining one of its founding members from performing under the name “The Commodores featuring Thomas McClary” or “The 2014 Commodores.”
First, the Court found that Plaintiff has demonstrated a substantial likelihood of success on its trademark infringement claim. Defendant had left the band in 1984. "When members of a band dispute ownership of a mark associated with the band, courts have found that members who remain active and associated with the band have better title to the mark than those who do not." Continuing, "Defendant no longer has a valid claim to ownership over the Marks. Rather, the band members who remained after Defendant left in 1984 have prevailing ownership because they maintained continuity with the group and have been in a position to control the quality of services of the Marks associated with the band name. Defendant has not put forward any evidence to suggest that he maintained quality or control over the Marks associated with The Commodores after he left; rather, it was the other original band members who stayed with the group that continued to control the nature and quality of the Marks, went on to win a Grammy, and further expanded the band’s fan base and recognition." (Internal cit. om.).
The Court also found that there is a likelihood that consumers would confuse the Grammy award winning band, ‘the Commodores,’ with the ‘The Commodores featuring Thomas McClary’ and/or ‘The 2014 Commodores'. Due to the trademark infringement, there was a presumption of irreparable harm, and the Court found the balance of equities in plaintiff's favor.
September 18, 2014
Taylor Swift Faces Trademark Action Concerning Merchandise
Blue Sphere, Inc. v. Swift, Case No. SACV 14-00782-CJC (C.D. Cal. Sep. 17, 2014).
The Court denied country-star Taylor Swift's motion to dismiss plaintiff's trademark infringement and dilution case. Defendants contended that Plaintiffs had failed to show a likelihood of confusion. The Court found that while it is possible that Plaintiffs may not be able to present sufficient evidence to survive a summary judgment motion, they had plausibly alleged facts to survive a motion to dismiss. Plaintiffs alleged that they own the mark LUCKY 13, and further alleged that the Defendants’ use of the identical LUCKY 13 mark in connection with the sale of t-shirts online and through the online promotion of a “Lucky 13 Sweepstakes” is likely to cause confusion. The Court also found that Plaintiffs sufficiently alleged that the mark is famous so that the dilution claim survived.
The Court denied country-star Taylor Swift's motion to dismiss plaintiff's trademark infringement and dilution case. Defendants contended that Plaintiffs had failed to show a likelihood of confusion. The Court found that while it is possible that Plaintiffs may not be able to present sufficient evidence to survive a summary judgment motion, they had plausibly alleged facts to survive a motion to dismiss. Plaintiffs alleged that they own the mark LUCKY 13, and further alleged that the Defendants’ use of the identical LUCKY 13 mark in connection with the sale of t-shirts online and through the online promotion of a “Lucky 13 Sweepstakes” is likely to cause confusion. The Court also found that Plaintiffs sufficiently alleged that the mark is famous so that the dilution claim survived.
August 26, 2014
Beatles Tribute Band Trademark Registration Denied For Entertainment Services Because Specimen Did Not Show Live Performance
In re Titan Music, Inc., Serial No. 77344197 (TTAB Aug. 20, 2014).
Trademark applicant "Titan," a Beatles cover band, filed an application to register the mark FAB AGAIN for “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances” in International Class 41. Registration was denied, and the TTAB affirmed the denial.
The issue with registration was was the specimens provided by the applicant, which were print-outs from CDBaby and Last.fm. The TTAB found:
Trademark applicant "Titan," a Beatles cover band, filed an application to register the mark FAB AGAIN for “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances” in International Class 41. Registration was denied, and the TTAB affirmed the denial.
The issue with registration was was the specimens provided by the applicant, which were print-outs from CDBaby and Last.fm. The TTAB found:
Applicant’s specimens may show use of the mark on or in connection with goods (compact discs featuring music) or services (streaming of audio material via a global computer network); however, the specimens do not show use of the mark in connection with “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances.” It is not enough for Applicant to be a provider of services; Applicant also must have used the mark to identify the identified services for which registration is sought. [Cit. om.] As indicated above, for entertainment services such as those rendered by a musical band, the performance must be live. And while a performance can be recorded, the recording is not itself a performance.
This decision should not be read as finding that the mark FAB AGAIN, as actually used on the specimens, would not be perceived by potential purchasers as a trademark (for compact discs featuring music) or a service mark (for streaming of audio material via a global computer network). The problem is that the specimens of record fail to show use of the mark FAB AGAIN in connection with the services identified in the application, that is, “entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances.”
June 23, 2014
Injunction Entered On Use Of Platters Band Name
Herb Reed Enterprises, Inc. v. Monroe Powell's Platters, LLC, No. 2:11-cv-02010 (D. Nev. June 17, 2014).
The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance. First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS. There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants. Second, the court found a likelihood of confusion under the 9th Circuit test. Accordingly, a permanent injunction was appropriate. Damages were also awarded for both domestic and foreign profits.
The Court granted plaintiffs' motion for summary judgment, granting plaintiffs approximately $60,000 and enjoining defendants from using the mark THE PLATTERS in connection with any vocal group or live musical performance. First, the Court found that plaintiffs have common law rights in THE PLATTERS mark, even though they do not have a registered mark in THE PLATTERS, based on their registered mark HERB REED AND THE PLATTERS. There was no genuine issue of fact that plaintiffs owned interests in THE PLATTERS mark and that those interests were superior to defendants. Second, the court found a likelihood of confusion under the 9th Circuit test. Accordingly, a permanent injunction was appropriate. Damages were also awarded for both domestic and foreign profits.
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