The federal district court in Detroit properly determined that the phrase "Welcome to the D" on banners and signs hung in and around the city of Detroit in 2012 to promote the World Series and in 2015 to advertise the Volleyball Open National Championships did not infringe musician Mark Kassa’s registered "Welcome to the D" marks, the U.S. Court of Appeals in Cincinnati has ruled. Because "The D" is a common nickname for Detroit, the defendants’ banners and signs used the phrase "Welcome to the D" in a geographically descriptive, non-trademark sense. The district court’s dismissal of Kassa’s trademark infringement and related claims against the Detroit Metro Convention & Visitors Bureau and the Detroit Sports Commission for failure to state a claims was affirmed (Kassa v. Detroit Metro Convention & Visitors Bureau, January 12, 2017, Batchelder, A.).
Mark Kassa is a "musician and entrepreneur" who hosted an online talk show, the "Welcome to the D Show," and operated welcometothed.com, a website that promoted Kassa’s band, talk show, and offered apparel and products. Kassa owned federal registrations for the marks THE D (in standard characters) and WELCOME TO THE D (in standard characters) for shirts and hats and various entertainment services.
In 2015, Kassa sued the Detroit Sports Commission and the Detroit Metro Convention & Visitors Bureau for use of the phrase "Welcome to the D" on signs and banners placed throughout the City of Detroit in connection with two national sporting events hosted in the city: Major League Baseball’s 2012 World Series and the 2015 USA Volleyball Open National Championships. Kassa asserted claims for trademark infringement, trademark dilution, and false designation of origin under the Lanham Act, and claims for trademark infringement and unfair competition under Michigan common law.
On December 7, 2015, the district court granted the defendants’ motion to dismiss the complaint for failure to state a claim on the ground that that Kassa failed to plead any facts to plausibly establish the defendants’ commercial use of "Welcome to the D." The court found that the defendants "used ‘Welcome to the D’ as greeting to those arriving in the City of Detroit, not as a source identifier." As an alternative grounds for dismissal, the court determined that the defendants were entitled to the affirmative defense of fair use.
The Sixth Circuit agreed with the district court that, even taking Kassa’s pleaded facts as true, the allegations did not plausible support a finding that the defendants used "Welcome to the D" in a trademark sense. Because "The D" is a common nickname for Detroit, the words "Welcome to the D" at the top of banners advertising major sporting events in Detroit "are simply a greeting, welcoming visitors to the city using its common nickname," the appeals court said. In other words, the phrase was used as a geographic identifier, not an identifier of the source of goods or services.
Viewing the banners and signs in their entirety only strengthened this conclusion, the court added. First, the banners contained the logos of various other entities, including the Bureau and the Commission, the World Series, the Detroit Tigers, and USA Volleyball. Second, the phrase "Welcome to the D" had to be read in conjunction with the other portion of the phrase that appeared on the banner in the same font, "Where Champions are Made and Championships are Played." This portion was an adjectival clause modifying "the D," referring to Detroit. "Kassa’s YouTube show, music, and t-shirts simply are not a place ‘Where Champions are Made and Championships are Played,’" the court remarked.
In Hensley Mfg. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009), the Sixth Circuit dismissed a trademark infringement claim on the ground of "non-trademark use" on a motion to dismiss. Contrary to Kassa’s assertion, Hensley did not impose an improper pre-pleading requirement. Rather, it laid out the elements that a plaintiff must adequately plead in order to state a claim for trademark infringement and to raise a right to relief above the speculative level, the court said.
The district court’s judgment dismissing Kassa’s complaint accordingly was affirmed. Because Kassa failed to state a claim, the appeals court did need not reach the defendants’’ fair use defense.
The case is No. 16-1007.
Attorneys: Scott S. Yaldo (Yaldo Law, PLLC) for Mark Kassa. Todd Rhys Mendel (Barris, Sott, Denn & Driker, PLLC) for Detroit Metro Convention & Visitors Bureau and Detroit Sports Commission.
Companies: Detroit Metro Convention & Visitors Bureau; Detroit Sports Commission
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