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."

Lennon - Complaint

Below is the complaint in Lennon et al. v. Premise Media Corp., L.P. et al., No. 08-cv-3813-SHS (S.D.N.Y. filed April 22, 2008). A couple highlights:

Paragraph 20 - noting the influence of Internet bloggers

Paragraph 23 - alleging that the defendants obtained synch licenses to use other songs in the film. Does this implicate bad-faith or willfulness? If Defendants' affirmative defense is Fair Use, there is split authority on whether bad-faith precludes a fair use defense. Judge Leval (and others) argue that a defendant's bad faith has no place in fair use analysis.

Paragraph 25 - end credits list Imagine, but do not state that permission was granted. Again, how does this implicate bad-faith or willfulness? Fair use?

Paragraph 36 - seeks permanent injunction and damages on copyright claim

THIRD CLAIM - is based on The Lanham Act sec. 43(a), infringement of unregistered mark. Does Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) foreclose this claim? Dastar holds that the section 43(a) does not apply to claims arising out of a failure to attribute or credit the origin of creative work; rather, such claims are cognizable under the Copyright Act. Are Plaintiffs making such a claim? See Contractual Obligation Productions LLC v. AMC Networks Inc., No. 04-cv-2867, 4/7/08 N.Y.L.J. "Decision of Interest" (S.D.N.Y. March 25, 2008). It appears that rather than alleging that Defendants are failing to credit the origin of Imagine, Plaintiffs' claim is a sponsorship claim.

Exhibits A & B - Noticeably absent is an SR registration. Imagine is a Pre-72 work; thus, Plaintiffs include publishers of the song, but not a record label. However, state common law copyright may protect Pre-72 recordings - why do Plaintiffs omit a common law claim from their complaint?

Read this doc on Scribd: Lennon v Premise Media Corp COMPLAINT