By Cheryl Beise, J.D.
Live Nation’s First Amendment defense failed at the dismissal phase because the parties disputed the scope and nature of Live Nation’s use of the accused mark.
An individual who owned a federal registration for the mark MUSICHAPPENS can pursue federal trademark infringement and unfair competition claims against Live Nation for its use of the mark MUSIC HAPPENS HERE, the federal district court in Washington, D.C., has ruled. The court could not find from the face of the complaint that Live Nation’s use of the mark was protected by the First Amendment because a factual dispute remained as to whether Live Nation’s use of the mark was limited to the title of an audio visual work, as Live Nation contended. The court, however, dismissed the individual’s trademark dilution claim because he did not plausibly allege that his mark was sufficiently famous for federal dilution protection (Sapieyevski v. Live Nation Worldwide, Inc., March 20, 2019, Kelly, T.).
Jerzy Sapieyevski is a self-described musician, composer, producer, and music professor. He alleged that, as early as 1999, he began using the mark "MUSICHAPPENS" "for various music and music related services" that he provides, including "publications, online music[,] and music related resources and education materials." Sapieyevski obtained a federal registration for the mark "MUSICHAPPENS" in connection with "[m]usic composition for others; music composition and transcription for others; music production and publishing services; entertainment services, namely, music production; live music performance; [and] multimedia entertainment software production services."
Sapieyevski alleged that in 2017, Live Nation Worldwide, Inc., ("Live Nation") began using the mark "MUSIC HAPPENS HERE" to promote "an initiative in partnership with Spotify USA, Inc.[,] and Hilton Hotels." Live Nation applied to register its mark with the USPTO, but an examining attorney initially refused registration based on confusion with Sapieyevski’s mark. Live Nation has sought registration for services described as "Production of audiovisual recordings and multimedia entertainment content featuring music, popular culture, entertainment and social commentary; distribution of audiovisual recordings and multimedia entertainment content featuring music, popular culture, entertainment and social commentary via the internet and mobile applications; [and] [p]roviding non-downloadable pre-recorded audiovisual content featuring music, artistic performances, popular culture, live music entertainment, entertainment news and social commentary via the Internet."
Sapieyevski then sued Live Nation for its use of the mark "MUSIC HAPPENS HERE" and the domain name "musichappenshere.com." The complaint asserted claims for trademark infringement, trademark dilution, and unfair competition/false designation of origin under the Lanham Act. Before the court was Live Nation’s motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6).
First Amendment defense. Live Nation first argued that its use of "MUSIC HAPPENS HERE" was protected under the First Amendment because the mark was used as the title of an expressive work. According to Live Nation, "Music Happens Here" was the title of a "seven-episode original video series."
Live Nation urged the court to adopt the test set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989): i.e., that the defendant’s use of the asserted mark has some degree of artistic relevance and is not expressly misleading. The court, however, declined to apply the Rogers test, noting that unlike several other circuits, courts in the District of Columbia Circuit have not adopted it. Even if the court were to adopt the Rogers framework, the court could not determine from the face of the complaint that Live Nation’s use of the mark was limited to the title of an audio visual work, as Live Nation contended. To the contrary, Sapieyevski alleged that Live Nation’s use of the MUSIC HAPPENS HERE mark was for a broader scope of services, including "music services on-line, in-person, and as written materials about music." Indeed, Live Nation’s trademark application identified a wide range of content-production services.
Construing the allegations in Sapieyevski’s favor, the court denied Live Nation’s motion to dismiss the Lanham Act infringement and unfair competition claims based on the First Amendment defense.
Dilution fame. The court agreed with Live Nation that Sapieyevski’s MUSICHAPPENS mark was not sufficiently famous to qualify for federal dilution protection. Even holding Sapieyevski’s pro se pleadings to a less stringent standard, his allegations failed to satisfy the heavy burden to plead the element of fame. Sapieyevski made no showing that his mark had achieved "nation-wide recognition or that it has become a ‘household name,’" the court said.
The case is No.1:18-cv-00830-TJK.
Attorneys: Jerzy Sapieyevski, pro se. Terence Patrick Ross (Katten Muchin Rosenman LLP) for Live Nation Worldwide, Inc.
Companies: Live Nation Worldwide, Inc.
MainStory: TopStory Trademark DistrictofColumbiaNews
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