No Trademark Infringement In Karaoke Case

Phoenix Entertainment v. Rumsey, No. 15-2844 (7th Cir. July 21, 2016).

The 7th Circuit affirmed dismissal of two trademark claims brought by a karaoke company, a serial trademark plaintiff, because the plaintiff had not plausibly alleged that the defendants' conduct resulted in consumer confusion as to the source of any tangible good sold in the marketplace.  Applying the Supreme Court's Dastar decision distinguishing between copyright and trademark claims, the Court noted: "In evaluating Slep-Tone's claims of trademark infringement, we must therefore ask ourselves what the tangible good at issue is, and whether the unauthorized use of the plaintiffs' marks (including trade dress) might cause consumers to be confused about who produced that good. Or is the real confusion, if any, about the source of the creative conduct contained within that good? If the latter, the confusion is not actionable under the Lanham Act."  In the instant case, "The defendants are not selling compact discs with karaoke tracks and billing them as genuine Slep-Tone tracks, in the way that a street vendor might hawk knock-off Yves Saint Laurent bags or Rolex watches to passers-by. Whatever wrong the defendants may have committed by making (or causing to be made) unauthorized copies of Slep-Tone's tracks, they are not alleged to have held out a tangible good sold in the marketplace as a Slep-Tone product. Consequently, the defendants' alleged conduct is not actionable as trademark infringement."

7th Cir. Affirms Dismissal of 50/50 Case for Failure To Allege Confusion

Eastland Music Group v. Lionsgate Entertainment, No. 12-2928 (7th Cir. 2/21/2013) [Doc. 22].

Plaintiff was the proprietor of the rap duo Phifty-50, and registered “PHIFTY-50” as a trademark.  Plaintiff also claimed a trademark in “50/50” and contends that defendants infringed its rights by using “50/50” as the title of a motion picture that opened in 2011.  The district court dismissed the case under Rule 12(b)(6).  The 7th Circuit affirmed dismissal.


"This complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any
confusion about the film’s source—and any such allegation would be too implausible to support costly litigation."  Additionally, "If there is any prospect of intellectual property in the phrase 50/50, Eastland Music is a very junior user and in no position to complain about the 2011 film. Phifty-50 entered a crowded field, and its rights are correspondingly weak and narrow."  "Only a confusion about origin supports a trademark
claim, and “origin” for this purpose means the “producer of the tangible product sold in the marketplace.” 539 U.S. at 31. Eastland Music’s complaint does not (and could not plausibly) allege that consumers treat it as the producer or source of the film 50/50, or treat Lionsgate as the producer of the 2003 rap album."