Crystal Entertainment & Filmworks, Inc. v. Jurado
643 F.3d 1313
| 11th Cir. | 2011Background
- Crystal alleges ownership rights in the Exposé mark based on Pantera Group Enterprises and Pantera Productions, Inc., which formed Exposé in 1984.
- Exposé was later fronted by Jurado, Curless, and Bruno from 1986, with Moneymaker joining later; they performed and sold records under the Exposé name.
- Crystal obtained licensing arrangements with the band in 2003 and 2006, asserting ownership and control over the Exposé mark.
- In 2007 the band sought to register Exposé as a service mark through Walking Distance Entertainment, LLC, while continuing to perform and collect royalties.
- The district court found Jurado, Curless, Bruno, and Walking Distance to be the common-law owners of the Exposé mark and granted Crystal’s claims in part while denying ownership by Crystal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Crystal has enforceable common-law rights in Exposé | Crystal owns the Exposé mark by priority and assignment. | Jurado, Curless, Bruno, and Walking Distance controlled the mark's quality and use; Crystal lacks enforceable rights. | Crystal has no enforceable common-law rights in Exposé |
| If Crystal lacks rights, whether likelihood of confusion analysis is proper | Holdover licensees create confusion under Lanham Act. | Without ownership, no likelihood of confusion can be established. | Not reached; ownership prerequisite not met |
| Whether Florida Deceptive Practices Act, ACPA, or due process claims survive | All grounds support Crystal's relief. | Those claims fail for lack of ownership and other defects. | Without enforceable rights, relief under these claims fails |
Key Cases Cited
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) (priority requires actual prior use and public identification)
- In re Polar Music Int'l AB, 714 F.2d 1567 (Fed. Cir. 1983) (source affiliation and public-facing identity depend on control of quality)
- Bell v. Streetwise Records, Ltd., 640 F. Supp. 575 (D. Mass. 1986) (joint endeavors framework for determining ownership of a performing group name)
- Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) (Lanham Act reach requires enforceable rights and likelihood of confusion)