41 F. Supp. 3d 707
N.D. Ill.2014Background
- Slep-Tone alleges Defendants displayed and used unauthorized Sound Choice marks on karaoke services and promotions.
- Defendants are karaoke jockeys affiliated with Extreme Karaoke and Absolute Disc Jockeys owned by Coyne.
- Slep-Tone owns Sound Choice trademarks and copyrights in its accompaniment tracks, which are created by re-recording songs with cues.
- Media-shifting/format-shifting of Slep-Tone tracks is alleged to have occurred without authorization and under improper conditions.
- Defendants allegedly advertise and provide karaoke services using Sound Choice marks, implying affiliation with Slep-Tone.
- The court denies Defendants' Rule 12(b)(6) dismissal, allowing claims under the Lanham Act and IDTPA to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Use in commerce and likelihood of confusion | Slep-Tone pleads display of marks in commerce during services. | Defendants did not use marks in commerce as to plaintiff’s goods. | Use in commerce pleaded; likelihood of confusion plausibly alleged. |
| Probable likelihood of confusion factors | Marks are similar and products closely related; strong mark context. | Different channels and consumers negate confusion. | Pleading supports several factors; overall confusion plausible at this stage. |
| Nominative fair use defense | Not raised against plaintiff’s own trademark; no defense viability asserted. | Nominative fair use should bar claim. | Defense not favored at Rule 12(b)(6); not necessary to plead it. |
| Dastar defense | Trademark claim targets mislabeling, not uncopyrighted copying. | Dastar negates trademark claim for origin of goods. | Dastar not controlling; claim survives as to mislabeling and origin. |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (use in commerce can be pleaded by display in advertising services)
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir.2001) (likelihood of confusion factors; strong mark; related products)
- Steele v. Bulova Watch Co., 344 U.S. 281 (Supreme Court, 1952) (broad concept of commerce under Lanham Act)
- Scotch Whisky Ass’n v. Barton Distilling Co., 489 F.2d 809 (7th Cir.1973) (commerce breadth and scope in Lanham Act context)
- Ty, Inc. v. Jones Group, Inc., 237 F.3d 891 (7th Cir.2001) (importance of likelihood of confusion factors)
- Eastland Music Grp., LLC v. Lionsgate Entm’t, Inc., 707 F.3d 869 (7th Cir.2013) (Dastar-related origin concept applied in trademark context)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (S. Ct. 2003) (origin of goods in Lanham Act; uncopyrighted work not protected)