United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
L. WHITE UNITED STATES DISTRICT JUDGE.
Entertainment Partners, LLC ("Phoenix") brings this
action against three eating and drinking establishments -
Sports Legends LLC ("Sports"), doing business as
the Blarney Stone Sports Bar & Grill; Kann Inc.
("Kann"), doing business as KT's Smokehouse
Saloon; and Borgettis Bar & Grill, Inc. ("Borgettis)
- and an individual, Anthony Utz ("Utz"), owner of
Mo' Karaoke & DJ Service, alleging the four
defendants are liable under §§ 32 and 43(a) of the
Lanham Act, 42 U.S.C. §§ 1114(1) and 1125(a),
respectively, for violating its trademarks and engaging in
unfair competition. Phoenix also alleges the four have
violated Missouri's antidilution statute, Mo.Rev.Stat.
§417.061, and the common law prohibition against unfair
Sports and Borgettis, and Kann all move to dismiss under Rule
12(b)(6) of the Federal Rules of Civil Procedure for failure
to state a claim.
CHOICE" and "SOUND CHOICE & Design" are
two federal service mark registrations owned by Phoenix. (Am.
Compl. ¶ 27 and App'x A, ECF No. 18.) SOUND CHOICE
is "a leading brand of karaoke accompaniment tracks . .
. particularly well known to commercial karaoke
operations." (Id. ¶19.) These tracks are
re-recorded and released on CD ("compact discs plus
graphics") or MP3 ("MPS3 plus graphics")
formats. (Id. ¶21.) "Separately from the
communicative content of the karaoke accompaniment tracks
(i.e., the sound recording and the synchronized lyric and
cueing displays), SOUND CHOICE-branded karaoke accompaniment
tracks are marked with an identifying logo that appears at
the beginning and end." (Id. ¶22.) The
"tracks are wildly popular among karaoke entertainment
providers, patrons, and home consumers." (Id.
¶23.) "According to some estimates . .. more than
half of all accompaniment tracks played at karaoke shows in
the United States originated from [Phoenix's]
recordings." (Id. ¶24.) This popularity is
attributed to the tracks usually being "the most
faithful to the sound of the original recording artist and as
providing the most accurate singing cues as part of the video
display." (Id. ¶25.) Similarly, the
association of the SOUND CHOICE brand with a karaoke
operator's business or an establishment's karaoke
shows "confers on the operator and venue a perception in
the marketplace - and among karaoke patrons - of legitimacy
and professionalism." (Id. ¶26.)
Kann, and Borgettis all contract with Utz to put on karaoke
shows at their establishments. (Id. ¶32-33.)
These shows are advertised as being, and are held, at
specific times. (Id. ¶34.) Utz provides the
sound equipment over which the tracks are played and
"control[s] the organization and flow of the
performances." (Id. ¶35.) He acts as the
emcee of the show and encourages the establishments'
"patrons to purchase food and/or beverages and tip their
Sports, Kann, and Borgettis (hereinafter collectively
referred to as "Defendants") cause or permit the
SOUND CHOICE marks to be displayed "repeatedly and
frequently" during the karaoke shows. (Id.
¶36.) The display of the marks "in connection with
the services, regardless of the particular song being played,
acts as a general advertisement for the services as well as
an indicator of the quality of the services being
provided." (Id. ¶40.) None, however, have
a "license, permission, authorization, or acquiescence
from Phoenix" for playing the SOUND CHOICE tracks.
(Id. ¶43.) Moreover, Utz copied the tracks
"from an illicit source." (Id. ¶37.)
alleges that "the frequent, repeated display of the
Sound Choice Marks across numerous instances of widely
disparate songs" "likely" causes patrons to
"view the display of the Sound Choice Marks as an
indicator of the affiliation, connection, or association of
the Defendants with Phoenix, or of Phoenix's sponsorship
or approval of the services and related commercial
activities, rather than merely as indicating Phoenix as the
creator of the underlying communicative content of any
particular song being performed." (Id.
¶41.) Thus, the patrons are "likely to be confused
regarding the origin or sponsorship of the services being
supplied regarding the affiliation or connection of
[Defendants] with Phoenix, based on their mistaken belief
that the services being provided are provided with
Phoenix's knowledge and approval." (Id.
¶44.) Defendants profit from the display of the Sound
Choice marks during karaoke shows, but Phoenix is damaged by
it. (Id. ¶45-48.) Defendants also profit from
infringing "numerous other producers' intellectual
property rights." (Id. ¶66-67.)
damage, Phoenix seeks to hold Utz directly liable and Sports,
Kann, and Borgettis (hereinafter collectively referred to as
the "Venue Defendants") secondarily liable. Phoenix
also seeks equitable relief from Utz and injunctive relief
against all Defendants. Defendants seek the dismissal of this
action. The Court will first address Utz's motion.
survive a 12(b)(6) motion to dismiss, 'a complaint must
contain sufficient factual matter, accepted as true, to state
a claim to relief that is plausible on its face.'"
McShane Constr. Co. v. Gotham Ins. Co., 867 F.3d
923, 927 (8th Cir. 2017) (quoting Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009)). This plausibility
standard '"asks for more than a sheer possibility
that a defendant has acted unlawfully.'" In re
Pre-Filled Propane Tank Antitrust Litig., 860 F.3d 1059,
1063 (8th Cir. 2017) (quoting Iqbal, 556
U.S. at 678). Rather, "[a] claim has facial plausibility
when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.'" McShane
Constr. Co., 867 F.3d at 927 (quoting Iqbal,
556 U.S. at 678). "'[Determining whether a complaint
states a plausible claim for relief ... [is] a
context-specific task that requires [this] [C]ourt to draw on
its judicial experience and common sense.'"
Id. (quoting Iqbal, 556 U.S. at 678-79)
(second and third alterations in original).
I: Trademark Infringement.
is a form of entertainment, originating in Japan, in which a
person sings the vocal line of a popular song to the
accompaniment of a prerecorded backing tape, and the voice is
electronically amplified through the loudspeaker system for
the audience." Slep-Tone Entm't Corp. v. Wired
for Sound Karaoke and DJ Servs. LLC, 845 F.3d 1246, 1247
(9th Cir. 2017) (per curiam) (internal quotations
omitted). A "karaoke jockey manages and plays the music
and shows the displays, announces the songs, and identifies
whose turn it is at the microphone." Phoenix Entm
't Corp. v. Boyte, 247 F.Supp.3d 791, 793 (S.D. Tex.
2017). As illustrated by this litigation and
"hundreds" of others brought by Phoenix or its
predecessor, Slep-Tone Entertainment Corporation, see Amended
Complaint at 5, karaoke shows are popular. See id.
issue in Count I, titled "Trademark Infringement under
15 U.S.C. § 1114(1), " is Phoenix's claim that
its two SOUND CHOICE service marks were infringed when
displayed by Defendants during karaoke shows and in
advertising such shows. Phoenix alleges that this display is
likely to cause confusion among the establishments'
patrons as to (a) the origin or sponsorship of the services
being supplied and (b) the affiliation of, or connection
between, Defendants and Phoenix.
'trademark' is any word, name, symbol, or device, or
any combination thereof- used by a person ... to identify and
distinguish his or her goods, including a unique product,
from those manufactured or sold by others and to indicate the
source of the goods ...." Lovely Skin, Inc. v.
Ishtar Skin Prods., LLC, 745 F.3d 877, 882
(8th Cir. 2014) (quoting 15 U.S.C. § 1127)
(first alteration in original). "The term 'service
mark' means any word, name, symbol, or device or any
combination thereof . . . [used] to identify and distinguish
the services of one person, including a unique service, from
the services of others and to indicate the source of the
services ..." 15 U.S.C. § 1127. The same criteria
govern whether a registered mark for goods or services is
infringed. See 15 U.S.C. § 1114(1).
argues the infringement claims against him should be
dismissed because Phoenix is presenting a copyright claim in
trademark infringement clothing and such a tactic is
foreclosed by the Supreme Court's holding in Dastar
Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23
(2003). Phoenix counters that Dastar is inapposite
because it is claiming infringement of its service
marks, not its trademarks in goods.
Dastar argument is not unfamiliar to courts
resolving Phoenix's claims of infringement of its
registered SOUND CHOICE marks. See e.g. Wired for
Sound, 845 F.3d at 1249-50; Phoenix Entm't
Partners, LLC v. Rumsey, 829 F.3d 817, 822, 828
(7th Cir. 2016); Phoenix Entm't Partners,
LLC v. Star Music, Inc., 2017 WL 3498645, *2 (D. Minn.
Aug. 15, 2017); Phoenix Entm 't Partners, LLC v.
Burke, 2017 WL 2634953, *2 (M.D. Fla. Junel9, 2017);
Boyte, 247 F.Supp.3d at 797-99. At issue in
Dastar was the claim of Fox Film Corporation that
Dastar Corporation was liable for trademark infringement
under 15 U.S.C. § 1125(a) when releasing a videotape set
about World War II that included portions of a television
series produced by Fox on the same subject, but did not
include any credit to Fox. 539 U.S. at 27. At the relevant
time, Fox had allowed its copyright in its series to expire.
Id. The Court concluded that the phrase "origin
of goods" in § 1125 "refers to the producer of
the tangible goods that are offered for sale, and not to the
author of any idea, concept, or communication embodied in
those goods." Id. at 37. "To hold
otherwise would be akin to finding that §
43(a) created a species of perpetual patent and
copyright, which Congress may not do." Id.
Dastar, courts have concluded that claims of an
unauthorized use of the content of Phoenix's karaoke
accompaniment tracks are essentially of unauthorized copying
and are not cognizable under the Lanham Act. See Wired
for Sound, 845 F.3d at 1250; Rumsey, 829 F.3d
at 831; Star Music, 2017 WL 3498645, *3;
Boyte, 247 F.Supp.3d at 799. But cf. Phoenix
Entm't Partners, LLC v. Aguayo, 2016 WL 952665, *3-4
(M.D. Fla. Oct. 24, 2016) (declining to apply Dastar
to Phoenix's claims of trademark
noting that the foregoing cases dealt only with infringement
of tangible goods, Phoenix argues that its infringement
claims are focused on the "unauthorized use of its SOUND
CHOICE marks and the quality of the services to which those
marks are attached, not to the creative content."
(PL's Resp. at 5, ECF No. 24.) Specifically, Utz's
failure to remove the SOUND CHOICE marks from his
unauthorized copies of the Sound Choice karaoke accompaniment
tracks - copies which lack the quality of the originals - was
done "so to appear as legitimate as [Phoenix's]
authorized licensees"; to falsely indicate the quality
of the karaoke services he provides; and to use the marks
"as a general advertisement for the services."
(Id. at 3.)
the word "services" and explicit reliance on its
two registered service marks, Phoenix has presented similar
allegations regarding unauthorized copying by karaoke jockeys
of its tracks, a resulting deterioration in quality, and the
use of the inferior copies in karaoke shows in the context of
claims of infringement of its registered marks for goods.
See e.g. Rumsey, 829 F.3d at 820-21 (describing
Slep-Tone's business model for selling its karaoke
accompaniment tracks and its Lanham Act claims of trademark
infringement and unfair competition for the unauthorized
copying of such, and then noting that "Slep-Tone
characterizes the unauthorized copy of its track as a
distinct good which the defendants are improperly
'passing off as a genuine Slep-Tone tracks")
(emphasis added); Phoenix Entm't Partners, LLC v.
George and Wendy's Tropical Grill, LLC, 2017 WL
881826, *l-2 (M.D. Fla. March 6, 2017) (discussing
Phoenix's similar background allegations in the context
of its claims of trade dress infringement);
Burke, 2017 WL ...