Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke & Dj Services, LLC
2017 U.S. App. LEXIS 857
| 9th Cir. | 2017Background
- Slep-Tone Entertainment ("Plaintiff") produces CD-G karaoke tracks under the mark Sound Choice and allows limited "media-shifting" (ripping to digital) under a policy.
- Wired for Sound Karaoke and Ernest McCullar ("Defendants") operate a Phoenix karaoke business and were alleged to use unauthorized media-shifted digital copies of Slep-Tone tracks.
- Slep-Tone previously sued Defendants and settled in 2010; this suit revisits alleged unauthorized use of media-shifted files.
- Plaintiff sued under the Lanham Act for trademark infringement and unfair competition, claiming consumer confusion from display of Slep-Tone marks during performances.
- The district court dismissed the Lanham Act claims as improperly repackaged copyright claims; the Ninth Circuit reviewed de novo.
- The Ninth Circuit affirmed dismissal of the trademark/unfair-competition claims but reversed a separate summary-judgment ruling on the settlement-breach claim (addressed in a memorandum disposition).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Can unauthorized "media-shifted" digital karaoke files give rise to Lanham Act claims for trademark infringement/unfair competition? | Media-shifted files are new tangible goods bearing Slep-Tone marks; consumers are likely to be confused about origin. | The alleged confusion concerns content/author of the tracks, not the origin of a tangible good sold in the marketplace. | No. Lanham Act protects origin of tangible goods; this claim attacks unauthorized copying of content and is not cognizable under the Lanham Act. |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) ("origin of goods" means producer of tangible goods, not author of the ideas or communications embodied in them).
- New W. Corp. v. NYM Co. of Cal., 595 F.2d 1194 (9th Cir. 1979) (likelihood-of-confusion test governs Lanham Act claims).
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (same standard applies to registered and unregistered marks under sections 32 and 43).
- Phx. Entm’t Partners v. Rumsey, 829 F.3d 817 (7th Cir. 2016) (consumer confusion must concern the tangible product sold, not unseen digital copies).
- Schueneman v. Arena Pharm., Inc., 840 F.3d 698 (9th Cir. 2016) (standard of de novo review for motion to dismiss).