Marshall Tucker Band TM Action Dismissed Because Mark Not Used In Commerce

Marshall Tucker Band v. MT Industries, No. 16-420 (D. S.C. Mar. 1, 2017).

In an action by the Marshall Tucker Band alleging trademark infringement, dilution, declaratory judgment, and trademark cancellation under federal law and a host of state-law claims, the Court granted the defendants' Rule 12(b)(6) motion to dismiss because the complaint failed to allege that the defendant actually uses the mark in commerce.  Instead, the complaint relied upon statements made by the defendant  when it applied to register two federal trademarks consisting of the mark (The Marshall Tucker Band) to satisfy the use in commerce requirement.  The Court held: "Completely absent from the SAC are any allegations of Defendants’ actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs’ federal trademark infringement claim fails as a matter of law."  The trademark dilution claim was dismissed for the same reason, and the Court declined to exercise supplemental jurisdiction over the remaining state law claims.

Rick Ross "Mastermind" Album Not Trademark Infringement Upon Cancelling Plaintiff's Registered Mark

Caiz v. Roberts, No. 15-9044 (C.D. Cal. Dec. 15, 2016).

Plaintiff rapper's trademark infringement claim against Rick Ross (and others) over Ross's album title "Mastermind" was dismissed at summary judgment because the Court found that Plaintiff's registered mark "Mastermind" was merely descriptive and had not acquired secondary meaning and therefore should be cancelled.  The Court also dismissed plaintiff's trademark dilution claim because the "Mastermind" mark was not famous, as required under the Lanham Act.  However, summary judgment was denied as to Defendant's trademark fair use defense.  Plaintiff's remaining claims were also dismissed.

"DJ Logic" Not Famous Enough to Win Trademark Case Against Rapper "Logic"

Kibler v. Hall, No. 15-2516 (6th Cir. Dec. 13, 2016).

The Sixth Circuit affirmed summary judgment for defendants, holding that a disc jockey named "DJ Logic" was not famous enough to succeed on his trademark dilution claims against the rapper performing as "Logic" and there was no likelihood of consumer confusion.  As to the trademark infringement claim, the parties agreed that the DJ's mark was protectable so the Court focused on "the likelihood that potential buyers of rap would believe Kibler’s music is Hall’s or vice-versa." and applied the 6th Circuit's balancing-test to find that "because no reasonable jury could find a likelihood of confusion based solely on a few instances of actual confusion, defendants are entitled to judgment as a matter of law on Kibler’s federal trademark infringement and related state law claims."  As to the dilution claim, 

Kibler’s evidence clearly falls short of the high threshold for fame under the Lanham Act. “DJ LOGIC” is simply in a different league from the marks that have met this threshold. Indeed, having failed to show that his mark is commercially strong for even trademark infringement purposes, Kibler cannot point to a triable issue here.

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.

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.

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.

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.

6th Cir. Affirms Dismissal Of "Soul Men" TM Case

Moore v. Weinstein Co. et al., No. 12-5715 (6th Cir. filed Oct. 31, 2013) (decision here).

Plaintiff, Sam Moore of the group "Sam & Dave", appealed an adverse judgment on his trademark infringement and common law claims against the producers and distributors of a 2008 movie called "Soul Men" (starring Samuel L. Jackson and Bernie Mac) and its soundtrack.  The 6th Circuit affirmed dismissal.

Plaintiff argued that defendants had violated his right of publicity.  The Court disagreed, finding that the movie "added significant expressive elements to any purported use of Moore's identity."

Plaintiff also argued that defendants had committed trademark dilution under the Tennessee Trademark Act, of the mark SOUL MEN.  But, Plaintiff failed to provide evidence of the mark's fame.

Accordingly, the 6th Circuit affirmed summary judgment for defendants.

Trademark Claim Over Band Name Dismissed For Lack Of Standing And Failure To State A Claim

Newsboys v. Warner Bros. Records Inc. et al., No. 3:12-cv-0678 (M.D. Tenn. - Nashville filed July 11, 2013) [Doc. 41].

Plaintiffs filed suit under the Lanham Act against defendants -- music distributors and the band New Boyz -- alleging trademark infringement of the mark NEWSBOYS.  The court concluded that the plaintiffs Newsboys Inc. lacked standing to pursue its claims because the other plaintiff, Wesley Campbell, is the sole owner of the Newboys trademark.  Also, the Court concluded that because Campbell's registered trademark is limited to "live musical performances of a religious nature rendered by a group," he had failed to allege plausible facts of the likelihood of confusion of the two groups.

No Proof of Famousness - Dilution Sum. Judgment Denied

Irby v. Thompson, No. 05 Civ. 9935, NYLJ 6/5/09 "Decision of Interest" (S.D.N.Y. May 29, 2009) (Swain, J.)

Action arists out of the alleged use and dilution of the mark "Hi-Five" by defendants via the production, marketing, and distribution of recordings under the "Hi-Five" name without the consent of former "Hi-Five" bank members (plaintiffs). Plaintiff's second motion for summary judgment denied.

Dilution, 15 U.S.C. 1125(c). Dispute as to whether the mark "Hi-Five" is famous. Plaintiffs provided no evidentiary proffers to establish the mark's fame other than information contained in documents purporting to be pritntouts from the website of the RIAA, for which plaintiffs failed to proffer the necessary foundational support and authentication pursuant to Fed. R. Evid., Art. VIII. Therefore, plaintiffs failed to carry their burden of demonstrating that the "Hi-Five" mark is famous as a matter of law. (The Court expressly decided, fn. 6, that the purported RIAA records were not subject to judicial notice pursuantt o Rule 201 of the Fed. R. of Evid.)

Failure to Prosecute, Fed. R. Civ. P. 41. The Court directed plaintiffs to "show cause" as to why Plaintiffs' claims against all defendants other than a media marketing and distribution business (that allegedly marketed and distributed the recordings in question) should not be dismissed for failure to prosecute.

Summary Judgment. In denying Plaintiffs' second motion for summary judgment, the court held that "No further dispositive pre-trial motions will be entertained."

Beatles Complaint Available

The complaint in Apple Corp v. Fuego Entertainment is available online. [Request a copy.]

Of particular interest is the FACTS section, which serves as a supplement to the vast library of Beatles history, and their early days at the Star Club in Germany.

Legal Counts:

• Unauthorized Fixation and Trafficking in Sound Recordings (Injunctive Relief / Damages)


• Common Law Copyright Infringement (Pre-72 Recordings) (Injunctive Relief / Damages)


• Trademark Infringement (Injunctive Relief / Damages)


• Federal Unfair Competition (Injunctive Relief / Damages)


• Common Law Unfair Competition and Trademark Infringement (Injunctive Relief / Damages)


• Federal Dilution (Injunctive Relief / Damages)


• Dilution and Injury to Business Reputation (Injunctive Relief)


• Unauthorized Publication of Name or Likeness (Injunctive Relief / Damages)

[Apple Corps Limited v. Fuego Entertainment, Inc. et al., No. 1:08-cv-20748-WMH (S.D.Fla. filed Mar. 21, 2008)]

Oh, Yoko - Petition to Cancel LENNON Mark

Oh, Yoko...

TMZ reports that "Lennon Murphy, a singer-songwriter whose band is called Lennon, has been sued by Yoko for 'tarnishment' of her widow's name [sic] and for 'fraudulently' registering the name as a trademark." However, it rather appears that Yoko Ono (as she herself clarified) filed a petition for cancellation with the Trademark Trial and Appeal Board seeking to cancel Trademark Registration No. 2676604, based on Registration numbers 1769796 and 1488395 for the marks JOHN LENNON.

Petitioner claimed Murphy obtained her registration fraudulently, and that Murphy's mark dilutes and/or tarnishes her late husband's surname. Petitioner did not, however, make a section 2(d) likelihood of confusion claim in her petition (15 U.S.C. 1052). USPTO TTAB Cancellation number 92048785; filed 1/18/08.

The petition is unusual in certain respects. Whether the petitioner intended to bring a likelihood of confusion claim is unclear. When filing the petition to cancel electronically, petitioner did identify Section 2(d) as a cause, however the petition has no pleadings referring to likelihood of confusion.

Additionally, it is interesting that the substance of the fraud allegation is that applicant did not identify that her first name was Lennon. However that fact was disclosed in that she filed the application as an individual, in her own name, Lennon Murphy.

Lastly, according to TMZ, Murphy asserts that the band has a co-existence agreement to use the LENNON mark (Yoko gave her "blessing"), raising a possible acquiesence argument.

[Documents can be accessed via the USPTO Trademark website, by searching TESS for the above registration numbers and then clicking the TTAB tab.]