Daddy's Junky Music Stores v. BIG DADDY'S FAM. MUS.

• Citation: 913 F. Supp. 1065
• Decision Date: 31 January 1996
• Docket Number: No. C-2-95-334.,C-2-95-334.
• Parties: DADDY'S JUNKY MUSIC STORES, Plaintiff, v. BIG DADDY'S FAMILY MUSIC CENTER, Defendant.
• Court: U.S. District Court — Southern District of Ohio

913 F. Supp. 1065

DADDY'S JUNKY MUSIC STORES, Plaintiff, v. BIG DADDY'S FAMILY MUSIC CENTER, Defendant.

No. C-2-95-334.

United States District Court, S.D. Ohio, Eastern Division.

January 31, 1996.

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Gail L. Morissey, Dublin, Ohio, for Plaintiff.

Jon M. Peterson, Delaware, Ohio, for Defendant.

OPINION AND ORDER

GEORGE C. SMITH, District Judge.

Plaintiff alleges trademark infringement in violation of 15 U.S.C. § 1114, false designation in violation of 15 U.S.C. § 1125(a), and unfair competition and deceptive trade practices under Ohio law. This matter is before the Court on the parties' cross-motions for summary judgment (Does. 10 & 12). For the reasons stated below, the Court Denies plaintiff's summary judgment motion and Grants defendant's summary judgment motion.

I.

A. Plaintiff Daddy's Junky Music Stores.

Plaintiff Daddy's Junky Music Stores operates a chain of thirteen retail stores in the Northeast doing business as "Daddy's" and "Daddy's Junky Music Stores." These stores sell new and used musical instruments. Plaintiff also operates a substantial mail order business under the same names with catalog sales of new and used musical instruments to customers in several states, including Ohio. Plaintiff has used these marks, "Daddy's" and "Daddy's Junky Music Stores," since 1975 and holds three related U.S. trademark/servicemark registrations: "Daddy's Junky Music Stores," incontestable federal Registration No. 1,359,864, issued September 10, 1985, for retail music store services; "Daddy's," Registration No. 1,594,679, issued May 1, 1990, for retail music store services; and "Daddy's," Registration No. 1,579,993, issued January 20, 1990, for musical instruments. Plaintiff has also been referred to as "Big Daddy" by the general public.

Focusing on its "Daddy's Junky Mail," and hailing as "World's Largest Dealer of Used Musical Equipment," plaintiff has built a substantial mail order business throughout the United States and advertises in most of the major music industry magazines. Plaintiff has over 1,490 Ohio residents on its mailing list with 381 Ohioans within a 30-mile radius of defendant Big Daddy's Family Music Center. Plaintiff has been very successful with its mail order business in Ohio, with sales of $92,551.00 during the period from February 1995 to July 31, 1995. This success has prompted plaintiff to pursue expansion within the state and plaintiff has entered into preliminary negotiations to purchase a Columbus, Ohio based company engaged in retail musical instrument sales.

B. Defendant Big Daddy's Family Music Center.

Defendant "Big Daddy's Family Music Center" is a sole proprietorship located in Delaware, Ohio, engaged in retail sales of new musical instruments since 1993. The name of the store can be traced to its owner Greg "Big Daddy" Houston. Mr. Houston acquired the nickname at the 1991 Chicago Blues Festival and is indeed "big," standing six feet one inch tall and massing approximately 235 pounds.

Defendant has no catalog or mail order business but does have a direct mailing list. Nearly all of the 2,212 individuals on defendant's list reside in Delaware or contiguous counties. Defendant spent $7,625.84 on advertising during the first six months of 1995. This sum went toward the expenses of direct mailings as well as local cable television and newspaper. Defendant gains further exposure through its support of various local philanthropic efforts.

II.

Plaintiff brought this action against defendant seeking damages and an injunction against further infringement of its registered trademarks. Plaintiff claims that defendant's use of the mark "Big Daddy's Family Music Center" for retail store sales and services for musical instruments constitutes trademark infringement in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114, false designation in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and unfair competition and deceptive trade practices under Ohio law. Both parties have cross filed for summary judgment; plaintiff on the trade infringement claim and defendant on all four claims. "Summary judgment is as appropriate in a trademark infringement case as in any other case and should be granted or denied on the same principles." WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983).

The procedure for granting summary judgment is found in Fed.R.Civ.P. 56(c), which provides:

The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.

The evidence must be viewed in the light most favorable to the nonmoving party. Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 1609, 26 L.Ed.2d 142 (1970). Summary judgment will not lie if the dispute about a material fact is genuine; "that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). Summary judgment is appropriate, however, if the opposing party fails to make a showing sufficient to establish the existence of an element essential to that party's case and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986); see also Matsushita Electric Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

The Sixth Circuit Court of Appeals has recognized that Liberty Lobby, Celotex and Matsushita have effected "a decided change in summary judgment practice," ushering in a "new era" in summary judgments. Street v. J.C. Bradford & Co., 886 F.2d 1472, 1476 (6th Cir.1989). The court in Street identified a number of important principles applicable in new era summary judgment practice. For example, complex cases and cases involving state of mind issues are not necessarily inappropriate for summary judgment. Id. at 1479.

In addition, in responding to a summary judgment motion, the nonmoving party "cannot rely on the hope that the trier of fact will disbelieve the movant's denial of a disputed fact, but must `present affirmative evidence in order to defeat a properly supported motion for summary judgment.'" Id. (quoting Liberty Lobby, 477 U.S. at 257, 106 S.Ct. at 2515). The nonmoving party must adduce more than a scintilla of evidence to overcome the summary judgment motion. Id. It is not sufficient for the nonmoving party to merely "`show that there is some metaphysical doubt as to the material facts.'" Id. (quoting Matsushita, 475 U.S. at 586, 106 S.Ct. at 1356). Moreover, "the trial court no longer has a duty to search the entire record to establish that it is bereft of a genuine issue of material fact." Id. That is, the nonmoving party has an affirmative duty to direct the court's attention to those specific portions of the record upon which it seeks to rely to create a genuine issue of material fact.

III.

Plaintiff alleges that the defendant's use of the name "Big Daddy's Family Music Center" constitutes trademark infringement and unfair competition under the sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). The test for trademark infringement pursuant to 15 U.S.C. § 1114 is "whether the alleged infringement of a trade or service mark causes a `likelihood of confusion' among consumers." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir.1988). "The general concept underlying likelihood of confusion is that the public believes that the mark's owner sponsored or otherwise approved of the use of the trademark." Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 834 (6th Cir.1983) (internal citations and quotations omitted).

Plaintiff also alleges that defendant's use of the name "Big Daddy's Family Music Center" constitutes "false designation," an unfair business practice prohibited by the Lanham Act. 15 U.S.C. § 1125(a). Unfair business practices under the Lanham Act include false designations of origin and false or misleading descriptions or representations of fact. Id. The test for unfair competition under § 1125(a) is identical to that for trademark infringement under 15 U.S.C. § 1114, to wit, whether there is a likelihood of confusion among consumers. See Chrysler Corp. v. Newfield Publications, Inc., 880 F.Supp. 504, 509 (E.D.Mich.1995).

Lastly, plaintiff alleges that defendant's actions also violate the Ohio Deceptive Trade Practices Act ("DTPA"), Ohio Rev. Code § 4165.02 and Ohio common law trade infringement. Pursuing an action under the DTPA does not preclude a plaintiff from also bringing an action under the common law. Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417, 1431 n. 69 (S.D.Ohio 1990). Both actions resemble a federal claim of trademark infringement in that they require the same analysis given to determination of liability under 15 U.S.C. § 1114(a), namely, whether there is a likelihood of confusion. See Mister Twister, Inc. v. JenEm Corp., 710 F.Supp. 202, 204 (S.D.Ohio 1989); see also Worthington Foods at 1431 (addressing comparison between common law trade infringement and the Lanham Act); Barrios v. Am. Thermal Instruments, Inc., 712 F.Supp. 611, 613 (S.D.Ohio 1988) (addressing comparison between DTPA and the Lanham Act).

"Likelihood of confusion" is the sole issue before the Court. A purely legal question, Esercizio v. Roberts, 944 F.2d 1235, 1242 (6th Cir.1991), cert. denied, 505 U.S. 1219, 112 S.Ct. 3028, 120 L.Ed.2d 899 (1992), its presence or absence will be dispositive as to all of plaintiff's various claims. "In assessing the likelihood of confusion, a court's concern is `the performance of the marks in the commercial context.'" Homeowners Group, Inc. v. Home Marketing...