SLEP-TONE ENTERTAINMENT CORPORATION; Phoenix Entertainment Partners, LLC, Plaintiffs-Appellants, v. WIRED FOR SOUND KARAOKE AND DJ SERVICES, LLC; Ernest Z. McCullar, Defendants-Appellees.
No. 14-17229
United States Court of Appeals, Ninth Circuit.
Filed January 18, 2017
845 F.3d 1246
Argued and Submitted December 12, 2016, San Francisco, California
The only evidence that Plunkett spoke to anyone about the incident is a statement from Casey West that Plunkett told him about the alleged rape. The statement offers no details or elaboration. Setting aside Plunkett‘s objection to the admission of this testimony, West‘s statement tells us nothing about whether Plunkett was the source of the online commentary. Whether she made a statement to West and whether she made statements to the individuals and organizations that commented online “are two separate issues.” See id. Schwern offered no evidence that West ever repeated Plunkett‘s alleged statement to anyone. Indeed, the conversation with West ostensibly took place after Plunkett moved to Boston. So not only is there no link to the online postings, but the temporal link is speculative at best.
Absent any evidence that Plunkett was the source of the online commentary, a “reasonable trier of fact” could not find that Schwern met his burden of production to support a prima facie case with substantial evidence. See id. at 623, 385 P.3d 1016. Schwern‘s theory offers “nothing other than speculation to fill in the gaps in his evidence.” Id. at 626, 385 P.3d 1016. His allegation that he “believe[s]” Plunkett made the statements is insufficient. In sum, because Schwern failed to establish a prima facie case through substantial evidence, Plunkett was entitled to relief under Oregon‘s anti-SLAPP law. We reverse and instruct the district court to grant Plunkett‘s motion to strike.
REVERSED.
Lorraine Morey (argued), Morey Law PLLC, Phoenix, Arizona, for Defendants-Appellees.
Before: SUSAN P. GRABER and ANDREW D. HURWITZ, Circuit Judges, and RICHARD F. BOULWARE,* District Judge.
OPINION
PER CURIAM:
Karaoke is a “form of entertainment, originating in Japan, in which a person sings the vocal line of a popular song to the accompaniment of a pre-recorded backing tape, and the voice is electronically amplified through the loudspeaker system for the audience.” OED Online (Dec. 2016), http://www.oed.com/view/Entry/243613. Plaintiff Slep-Tone Entertainment Corporation1 produces karaoke music
Computer users are capable of copying the content of these CD-Gs onto computer hard drives as digital files; Plaintiff refers to this process as “media-shifting,” but it is also popularly known as “ripping.” Plaintiff acknowledges the convenience of digital files for karaoke operators (who need not use numerous CD-Gs during a performance), but also reports that this widespread practice, when combined with unauthorized file-sharing, “nearly drove [the company] out of business.” In the past, Plaintiff “opposed all commercial media-shifting.” Today, it allows the practice within the confines of a four-point “media-shifting policy” requiring that users make only one digital copy per source CD-G; that the physical media used to create the digital files are kept “on the shelf” unused; that users notify Plaintiff if they intend to create media-shifted copies; and that users submit to auditing for compliance with these conditions.
Defendants Ernest Z. McCullar and his business, Wired for Sound Karaoke and DJ Services, LLC, operate a karaoke business in the Phoenix area. As alleged in the complaint, Defendants use Plaintiff‘s Sound Choice tracks. In 2009, Plaintiff learned that Defendants were using unauthorized media-shifted files instead of Plaintiff‘s original CD-Gs. Plaintiff filed a federal action against Defendants, alleging trademark infringement. See Slep-Tone Entm‘t Corp. v. Gorrel, No. 2:09-cv-01462-HRH (D. Ariz. July 14, 2009). The parties entered a settlement agreement in 2010.
In the present action, Plaintiff once again claims that Defendants are performing karaoke shows using unauthorized media-shifted files. Plaintiff alleges, among other things, trademark infringement under the Lanham Act. The district court granted Defendants’ motion to dismiss as to the claims for trademark infringement and unfair competition, holding that “[t]his attempt to stuff copyright claims into a trademark container fails.” Plaintiff timely appeals.2
We “review de novo the grant of a motion to dismiss.” Schueneman v. Arena Pharm., Inc., 840 F.3d 698, 704 n.5 (9th Cir. 2016). We agree with the district court that Plaintiff has not stated a claim under the Lanham Act, and we therefore affirm that holding.
Plaintiff argues that, by “media-shifting” Plaintiff‘s tracks from physical CD-Gs to digital files and performing them without authorization, Defendants have committed trademark infringement and unfair competition under the Lanham Act,
Any person who shall, without the consent of the registrant—
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation
of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided.
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person‘s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Plaintiff‘s theory is that, because the media-shifted files display Plaintiff‘s trademarks and trade dress when performed, consumers will be confused about their origin—believing that the tracks originated with Plaintiff, rather than with Defendants. But this theory does not involve consumer confusion about the source of an appropriate “good,” as that concept has been defined by the Supreme Court. Instead, it alleges possible confusion over the source of content. Analyzing the Lanham Act‘s unfair competition provision,
When the claim is more accurately conceived of as attacking unauthorized copying, Dastar requires us to avoid recognizing a “species of mutant copyright law” by making such claims cognizable under the Lanham Act. 539 U.S. at 34. Thus, the Seventh Circuit held that “the good that Slep-Tone alleges the defendants are improperly passing off as a Slep-Tone product is the unauthorized digital copy of the ... track.” Rumsey, 829 F.3d at 828. But “[i]t [was] not alleged, nor [did] the briefing suggest, that the patrons see the physical good in question—the digital file that presumably resides on the hard drive of the bar‘s karaoke system.” Id. If there is any confusion, it does not concern the source of the goods, as the Lanham Act requires. Consumers never see the digital files and Defendants neither sell them nor make representations about their source medium. Accordingly, Defendants do not use the Sound Choice marks “in connection with the sale, offering for sale, distribution, or advertising” of the files under
Plaintiff does not plausibly allege consumer confusion over the origin of a good properly cognizable in a claim of trademark infringement. We affirm the district court‘s dismissal of Plaintiff‘s trademark claims.
AFFIRMED in part; REVERSED in part and REMANDED. The parties shall bear their own costs on appeal.