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Phoenix Entertainment Partners, LLC v. Happy Hours, LLC

United States District Court, E.D. Missouri, Eastern Division

February 2, 2018

HAPPY HOURS, LLC, d/b/a/ The Brew House, and MICHAEL SEAN WHITAKER, d/b/a Karaoke Mike Productions, Defendants.



         Phoenix Entertainment Partners, LLC ("Phoenix") brings this action against Happy Hours, LLC d/b/a The Brew House ("Happy Hours"), an eating and drinking establishment, and Michael Sean Whitaker d/b/a Karaoke Mike Productions ("Whitaker"), a mobile entertainment operator. Phoenix alleges the two 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 Defendants have violated Missouri's anti-dilution statute, Mo. Rev. Stat. § 417.061, and the common law prohibition against unfair competition.

         Happy Hours and Whitaker separately moved to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim. On February 1, 2018, Phoenix and Happy Hours filed a Stipulation of Dismissal with Prejudice. (ECF No. 25) Thus, the only motion pending before the Court is Whitaker's Motion to Dismiss. The motion is fully briefed and ready for disposition. Upon review of the motion to dismiss and related memoranda, the Court will grant Defendant Whitaker's motion.


         SOUND CHOICE is "a leading brand of karaoke accompaniment tracks . . . particularly well known to commercial karaoke operations." (First Am. Compl. [FAC] at ¶17, ECF No. 11) These tracks are re-recorded and released on CD ("compact discs plus graphics") or MP3 ("MPS3 plus graphics") formats. (Id. at ¶19) "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. at ¶20) The "tracks are wildly popular among karaoke entertainment providers, patrons, and home consumers." (Id. at ¶22) "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.) 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. at ¶23) 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. at ¶24)

         Happy Hours contracts with Whitaker to present karaoke shows at its establishment. (Id. at ¶30-31) These shows are advertised as being, and are held, at specific times. (Id. at ¶32) Whitaker provides the sound equipment over which the tracks are played, "control[s] the organization and flow of the performances, " and encourages the establishments' "patrons to purchase food and/or beverages and tip their servers." (Id. at ¶33)

         Happy Hours and Whitaker cause or permit the SOUND CHOICE marks to be displayed "repeatedly and frequently" during the karaoke shows. (Id. at ¶34) 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. at ¶38) Neither, however, has a "license, permission, or acquiescence from Phoenix" for playing the SOUND CHOICE tracks. (Id. at ¶41) Moreover, Whitaker copied the tracks "from an illicit source." (Id. at ¶35)

         Phoenix 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. at¶39) 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. at ¶42) Defendants profit from the display of the SOUND CHOICE marks during karaoke show; however Phoenix contends it has been damaged through loss of revenues and loss of the ability to control the quality of services provided. (Id. at ¶43-46) Defendants also profit from infringing "numerous other producers' intellectual property rights." (Id. at ¶68)

         For its damages, Phoenix seeks Whitaker's profits obtained through the infringing conduct and unfair competition, as well as equitable and injunctive relief. Defendant Whitaker has moved to dismiss this action for failure to state a claim.


         Rule 12(b)(6) Standard.

         "To 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).

         Count I: Trademark Infringement.

         "Karaoke 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) (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).

         At 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 Whitaker during karaoke shows at Happy Hours' venue 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, Whitaker and Phoenix.

         "A '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).[2]

         Whitaker argues the infringement claims 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 Das tar Corp. v. Twentieth Century Fox Film Corp.,539 U.S. 23 (2003). Phoenix counters that Whitaker's Dastar reliance is misplaced because Phoenix's marks are separate from the communicative or creative content of the karaoke accompaniment tracks and because ...

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