Phoenix Entertainment Partners v. Dannette Rumsey
829 F.3d 817
| 7th Cir. | 2016Background
- Slep-Tone (and successor Phoenix) owns the registered "Sound Choice" trademark and claims distinctive trade dress in the graphical/lyric display and entry cues of its karaoke accompaniment tracks.
- Slep-Tone sells tracks on CD+G and MP3+G; customers frequently copy ("media-shift"/"format-shift") purchased tracks onto karaoke-system hard drives for play.
- Slep-Tone adopted a 1:1 media-shifting policy (keep original media, notify Slep-Tone, submit to audit) but alleges many operators make unauthorized copies and use bootleg files.
- Defendants (a bar and its owner) allegedly possessed/played unauthorized Slep-Tone copies for patrons, who saw the Sound Choice mark and trade dress while the pub did not sell the files themselves.
- Slep-Tone sued under §32 and §43(a) of the Lanham Act for trademark infringement/reverse passing off and unfair competition, alleging consumer confusion about the source and injury to sales and reputation; district court dismissed those federal claims for failure to plausibly allege confusion about the source of a tangible good.
- The Seventh Circuit affirmed, holding the alleged confusion related to the creative content (performance/display) not the producer of a tangible good sold in the marketplace, and thus was not cognizable under the Lanham Act (Dastar principle).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether playing unauthorized copies that display Slep‑Tone marks constitutes trademark infringement/reverse passing off | Unauthorized copy is a distinct tangible good being passed off as Slep‑Tone; patrons see Sound Choice mark and think the pub uses genuine Slep‑Tone products | Patrons only see/hear the creative content; defendants do not sell the tangible files and do not misrepresent the producer of a tangible good | Held for defendants: Lanham Act protects confusion about the source of a tangible good sold in the marketplace; here confusion is only about content origin, not the producer of a sold tangible good (affirmed dismissal) |
| Whether Slep‑Tone’s mark/trade dress are protectable and likely to cause consumer confusion when displayed during performance | Mark and trade dress are registered and distinctive; display during performance leads patrons to believe track is authorized | Even if marks are protectable, display during performance does not cause confusion about the source of any tangible product offered for sale | Held: protectability assumed for analysis, but no plausible allegation of confusion about the source of a tangible good; Lanham Act claim fails |
| Whether trademark law can be used to police unauthorized copying of expressive works (vs. copyright remedies) | Trademark remedy is appropriate because unauthorized copies are being passed off and harm Slep‑Tone’s goodwill and sales | Using trademark to police copying would improperly extend trademark into copyright’s domain; Dastar bars such substitution | Held: Dastar controls—trademark cannot be used to effectively create copyright‑like protection over expressive content; plaintiffs’ real grievance is copying/piracy, not actionable trademark confusion |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Sup. Ct. 2003) ("origin of goods" in Lanham Act refers to producer of tangible goods, not author of underlying content; trademark cannot be used to obtain de facto copyright)
- Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576 (7th Cir. 2005) (discussing passing‑off and reverse passing‑off principles)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir. 2001) (Lanham Act protects consumer confidence and goodwill; elements of trademark claim)
- Eastland Music Grp., LLC v. Lionsgate Entm’t, Inc., 707 F.3d 869 (7th Cir. 2013) (applying Dastar to limit trademark claims over expressive works)
- Palladium Music, Inc. v. EatSleepMusic, Inc., 398 F.3d 1193 (10th Cir. 2005) (derivative karaoke tracks can be protected as copyrighted works)
- Fortress Grand Corp. v. Warner Bros. Entm’t Inc., 763 F.3d 696 (7th Cir. 2014) (confusion must concern origin of tangible goods to support Lanham Act claim)