Kingdomworks Studios, LLC v. Kingdom Story Company, LLC
2:19-cv-14238
S.D. Fla.
Nov 19, 2021

Background

  • Three faith-based companies used marks containing "KINGDOM": Kingdom, Inc. (longtime seller of church goods and media; registered KINGDOM in 2005, incontestable), KingdomWorks Studios (Plaintiff; registered KINGDOMWORKS STUDIOS in 2018; used mark in commerce since ~2012), and Kingdom Studios / Kingdom Story Company (KS; Erwin Brothers, film company).
  • Kingdom, Inc. operates a production department since 1985 and produced video/DVD content and at least two theatrical documentaries; its federal registration (No. 3,034,139) covers video/audio production and related goods/services.
  • KingdomWorks produced films/series (notably Genesis Paradise Lost and the Conquer/related series) and holds federal registration No. 5,512,487 for KINGDOMWORKS STUDIOS covering film/video production services.
  • KS sought to register KINGDOM STUDIOS but received USPTO refusals citing potential confusion; KS entered a License Agreement with Kingdom, Inc. (Feb 2019) granting KS rights to use KINGDOM on films, video production, distribution, and related services.
  • Plaintiff sued KS for trademark infringement and related claims; KS and Kingdom, Inc. asserted counterclaims. Magistrate Judge Maynard recommended: grant KS's summary-judgment motion (dismissing Plaintiff's claims vs. KS), grant Plaintiff's summary judgment on Kingdom, Inc.'s counterclaims, and deny Kingdom, Inc.'s motion.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Priority / senior-user of "KINGDOM" KingdomWorks: it has priority in film industry; Kingdom, Inc.'s mark doesn't extend to movies because it primarily sold church supplies and had only sporadic media use. Kingdom, Inc.: its 2003 application/2005 registration and continuous use since 1982 (production dept. since 1985) make it senior user across media services. Held: Kingdom, Inc. is senior user; its registration is prima facie (and incontestable) evidence of priority and it actually used the mark in film/video production.
Effect of License Agreement on KS liability KingdomWorks: the License is a sham as Kingdom, Inc. lacked prior movie-industry rights; KS should still be liable for infringement. KS: as licensee in privity with Kingdom, Inc., KS inherits Kingdom, Inc.'s priority and is protected from Plaintiff's infringement claims. Held: KS is a valid licensee under the Agreement; privity means KS benefits from Kingdom, Inc.'s prior rights; KS entitled to summary judgment on Plaintiff's claims.
Likelihood of confusion between Kingdom, Inc. and KingdomWorks Kingdom, Inc.: its incontestable KINGDOM mark and overlap in goods/services mean KingdomWorks infringes and causes confusion. KingdomWorks: marks differ in commercial impression (KINGDOM vs KINGDOMWORKS STUDIOS); extensive third-party use of "KINGDOM" and no evidence of actual confusion weigh against liability. Held: No likelihood of confusion as to Kingdom, Inc. vs. KingdomWorks — crowded-field/weakening of mark and absence of actual confusion dispositive; Plaintiff entitled to summary judgment on Kingdom, Inc.'s counterclaims.
Final relief (summary judgment posture) N/A (movant positions vary) N/A Held: Recommend entry of final judgment in favor of KS (dismissing Plaintiff's claims vs. KS) and in favor of KingdomWorks as to Kingdom, Inc.'s counterclaims; deny Kingdom, Inc.'s summary-judgment motion.

Key Cases Cited

  • Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379 (11th Cir. 1997) (elements for trademark infringement: priority, use, likelihood of confusion)
  • Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) (natural-expansion doctrine / source-or-sponsorship test)
  • Frehling Enterprises, Inc. v. Int'l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (Lanham Act unfair competition standard parallels infringement analysis)
  • Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297 (11th Cir. 2001) (likelihood-of-confusion framework)
  • Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (inherent distinctiveness of fanciful/arbitrary marks)
  • Fla. Int'l Univ. v. Fla. Nat'l Univ., 830 F.3d 1242 (11th Cir. 2016) (incontestable mark and effect of crowded field on mark strength)
  • J-B Weld Co., LLC v. Gorilla Glue Co., 978 F.3d 778 (11th Cir. 2020) (weighing and evaluating the multi-factor likelihood-of-confusion test)
  • Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019) (weight given to absence of actual consumer confusion)
  • Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (summary-judgment standard)
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