Slep-Tone Ent. Corp. v. Elmwood Enterprises, Inc., No. 13 C 7346, Slip Op. (N.D. Ill. Apr. 21, 2014) (Lefkow, J.).
Judge Lefkow denied defendant Elmwood’s Fed. R. Civ. P. 12(b)(6) & (7) motion to dismiss plaintiff Slep-Tone’s Lanham Act claims related to its SOUND CHOICE marks used in connection with its karaoke accompaniment tracks. Of particular note, the Court held as follows:
- Slep-Tone sufficiently pled Elmwood’s alleged use in commerce by claiming that Elmwood used karaoke services as an inducement for its customers’ patronage and purchase of food and drink.
- Slep-Tone sufficiently pled likelihood of confusion. It was sufficient to plead likely confusion of karaoke patrons, even though Slep-Tone’s direct customers were the “KJs” that purchase the tracks and play them for the consumers who do the karaoke, not those consumers. The two markets were sufficiently related, and Slep-Tone’s sales to KJs ultimately met the needs of the consumers it alleged were likely to be confused.
- Pursuant to the Seventh Circuit’s Hard Rock test, a supplier of goods or services can be liable for contributory infringement even without an affirmative duty to prevent trademark violation. The supplier does have a duty “to understand what a reasonably prudent person would understand.” Based upon that standard, Slep-Tone sufficiently pled contributory infringement. Slept-Tone pled that Elmwood hires and may control its KJs and that Elmwood had actual knowledge of the infringing materials.
- Elmwood’s nominative fair use defense failed. First, Northern District judges have held that nominative fair use could not be decided on a Rule 12(b) motion. Second, the defense failed substantively based upon Slep-Tone’s allegations. Slep-Tone alleged that the KJs used the SOUND CHOICE mark on bootleg versions of Slep-Tone’s tracks. That would suggest affiliation, sponsorship or endorsement, which makes the nominative fair use doctrine inapplicable.
- Dastar was not applicable to this case. Slep-Tone was not using its SOUND CHOICE marks to control the content of the tracks. Slep-Tone’s claims were not focused upon the music. They were focused upon the use of Slep-Tone’s marks in connection with tracks allegedly from third parties.
- Slep-Tone’s state law unfair competition law claims survived the motion to dismiss for the same reasons as the Lanham Act claims did.
- The KJs were not necessary parties to the litigation. Slep-Tone’s claims could be addressed fully without the inclusion of the KJs.