BIT PARTS

The U.S. District Court for the District of South Carolina dismissed trademark infringement and dilution claims brought by the Marshall Tucker Band over its former manager's application for a federal trademark of the band's name. Marshall Tucker Band Inc. v. M T Industries Inc. (MTI), 7:16-00420. MTI filed a trademark application for the band's name in digital media. The U.S. Patent and Trademark Office (USPTO) requires a trademark be used “in commerce.” MTI stated in its application that it was. But District Judge Mary Geiger Lewis concluded the Marshall Tucker Band “failed to state a claim for federal trademark infringement under [the Lanham Act, 15 U.S.C.] §1125(a). … [T]o establish Defendants' use of the Mark in commerce, Plaintiffs entirely rely on the statements made by Defendants in their applications to register the Mark with the USPTO. Completely absent from the [lawsuit] are any allegations of Defendants' actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs' federal trademark infringement claim fails as a matter of law.”

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus. He is author of the book Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England). For more, visit www.stansoocher.com.

New York Statute of Limitations Applies To Music Contract Dispute Over Property in Dominican Republic

The U.S. District Court for the Southern District of New York chose New York's statute of limitations for contract claims, in a dispute over property in the Dominican Republic, that arose from an artist/music company release agreement also involving a re-recording restriction. Distribuidora De Discos Karen (DDK) v. Universal Music Group Inc. (UMG), 13-CV-7706. Artist Juan Luis Guerra wrote and recorded songs for DDK. In 1992, he signed an agreement for Karen Publishing to administer his songs. In 2006, Guerra and DDK entered into a partial release agreement that ended his recording obligations and allowed DDK to continue to exploit the recordings of Guerra's songs. In addition, Guerra agreed to transfer to DDK a Guerra concert-recording master, office space, stocks and ownership of Dominican Republic real estate. He also agreed not to re-record the DDK songs for five years. In 2013, DDK sued Guerra and UMG for copyright infringement over release of a new album containing re-recordings of some of the songs. In 2014, Guerra signed an exclusive administration agreement with Universal Musica (UMU), which intervened in the ongoing litigation with a copyright claim against Karen. In the recent stage of the case, Karen moved to plead copyright infringement against UMU and a declaratory judgment that the agreement releasing Guerra had become unenforceable because he allegedly failed to turn over all the property promised under the contract. The Dominican Republic's statute of limitations for breach of contract claims is 20 years; New York's is six. Karen wanted federal choice of law rules to apply. But District Judge J. Paul Oetken noted: “Though the contract may also involve the transfer of rights sounding in copyright, the claim at issue is not one for copyright infringement but rather for breach of contract.” Applying New York choice of law, he found the contract claim was time-barred: “The breach of contract claim at issue here, alleging Guerra's failure to transfer property as required by the 2006 Release Agreement, accrued upon the signing of the agreement.” As to Karen's copyright infringement claim, District Judge Oetken granted Karen's motion to add it to the pleadings. The district judge concluded on this: “Guerra and UMU have not shown that the Release Agreement vested them with an exclusive license such that their use of the compositions could not amount to copyright infringement. Accordingly, Karen is permitted to supplement its pleading to include its claim of copyright infringement.”

Stating Use “In Commerce” in Trademark Application Isn't Trademark Infringement

The U.S. District Court for the District of South Carolina dismissed trademark infringement and dilution claims brought by the Marshall Tucker Band over its former manager's application for a federal trademark of the band's name. Marshall Tucker Band Inc. v. M T Industries Inc. (MTI), 7:16-00420. MTI filed a trademark application for the band's name in digital media. The U.S. Patent and Trademark Office (USPTO) requires a trademark be used “in commerce.” MTI stated in its application that it was. But District Judge Mary Geiger Lewis concluded the Marshall Tucker Band “failed to state a claim for federal trademark infringement under [the Lanham Act, 15 U.S.C.] §1125(a). … [T]o establish Defendants' use of the Mark in commerce, Plaintiffs entirely rely on the statements made by Defendants in their applications to register the Mark with the USPTO. Completely absent from the [lawsuit] are any allegations of Defendants' actual use of the Mark in commerce. Inasmuch as registration of the Mark, without more, is insufficient to constitute a use in commerce, Plaintiffs' federal trademark infringement claim fails as a matter of law.”

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus. He is author of the book Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England). For more, visit www.stansoocher.com.