Campbell v. Warner Bros. Records Inc.
| Decision Date | 10 July 2013 |
| Docket Number | No. 3:12-cv-0678,3:12-cv-0678 |
| Parties | NEWSBOYS and WESLEY CAMPBELL, Plaintiffs, v. WARNER BROS. RECORDS INC., WARNER MUSIC INTERNATIONAL, and NEW BOYZ, EARL "Ben J" BENJAMIN, and DOMINIC "Legacy" THOMAS, Defendants. |
| Court | U.S. District Court — Middle District of Tennessee |
MEMORANDUM
Plaintiffs, Newsboys, Inc.1 and Wesley Campbell, filed this action under the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), against Defendants: Warner Bros. Records Inc., Warner Music International, and New Boyz, Earl "Ben J" Benjamin and Dominic "Legacy" Thomas. Plaintiffs allege ownership of the trademark "Newsboys" and assert that Defendants' use of the "New Boyz" name infringes their rights under the Lanham Act, the Tennessee Trademark Act, §§ 47-25-513 and 47-25-515, and Tennessee common law.
In earlier proceedings, the Court granted the Defendants' motion to dismiss Plaintiffs' claims. (Docket Entry Nos. 27 and 28). In sum, the Court concluded that Plaintiff Newboys Inc. lacked standing to assert any claim for the alleged infringement and Plaintiff Campbell had not alleged sufficient facts to state a claim against Defendant Warner Music Inc., the corporate parentof its subsidiaries that are named in this action. (Docket Entry Nos. 28, Memorandum at 4-5). As to the remaining Defendants, the Court concluded that Plaintiff Campbell had not alleged plausible facts of the likelihood of confusion as to these trade names given their clearly different music. Id at 7-8. The Court, however, granted Plaintiff Wesley Campbell leave to provide " specific facts of plausible consumer confusion in the marketplace." Id. at 8. In response, Plaintiff Campbell filed a first amended complaint (Docket Entry No. 31) with Campbell and Newsboys, Inc. as Plaintiffs.
Before the Court is Defendants' motion to dismiss Plaintiffs' first amended complaint for failure to state a claim (Docket Entry No. 33), contending that the Court did not authorize Plaintiff Newsboys, Inc. to file an amended complaint, and that the Plaintiff Campbell again does not allege sufficient and plausible facts of any likelihood of consumer confusion given the limited protection of the Newboys's trade name to Christian music and the distinct difference from New Boyz's rap and hip-hop music.
In response, Plaintiffs insist that their amended complaint cures the deficiencies cited by the Court and includes exhibits from consumers showing confusion between the names of the two musical groups.
For the reasons set forth below, the Court concludes that Plaintiff Newsboys Inc. Hacks standing to pursue its claims because Plaintiff Campbell is the sole owner of the Newboys trade name. The Court again concludes that because Plaintiff Campbell's registered trademark is limited to "live musical performances of a religious nature rendered by a group", Plaintiff Campbell has failed to allege plausible facts of the likelihood of confusion of the two groups.
Plaintiff Campbell's exhibits do not reflect any consumer confusion about the distinctly different music of these two musical groups. Thus, the Court reaffirms its ruling that the Defendants' motion to dismiss should be granted.
Plaintiff Newsboys, Inc. is a Tennessee corporation (Docket Entry No. 31, First Amended Complaint, at ¶ 1). Plaintiff Wesley Campbell, a Tennessee citizen, is the sole owner of the Newsboys trade name that is registered with the federal trademark office. Id. at ¶¶ 3,11. Plaintiffs allege that the Newsboys is a Christian musical group and a successful cross over band. Id. at ¶¶ 11-12. The Newsboys registered trade name is limited to "live musical performances of a religious nature rendered by a group." (Docket Entry No. 18, Memorandum in Support of Defendants' Motion to Dismiss, attachment thereto, Exhibit A)2. Plaintiffs allege that Newboys is a "staple in the Christian music industry" and is known to the "secular music industry as a cross over band". (Docket Entry No. 31, First Amended Complaint, at ¶¶ 11, 12).
Warner Bros. Records Inc. is a music distributor for the United States domestic market, and has its principal place of business in California. Id. at ¶ 4. Warner Music International is an international music distributor. Id. at ¶ 5. New Boyz is a rap group managed by Warner Bros. Records Inc. and composed of Defendants Earl "Ben J" Benjamin and Dominic "Legacy" Thomas, who are founding members of that group. Id. at ¶¶ 6-8. Plaintiffs allege that NewBoyz's music is "sexually charged" and is "directed toward the same demographic audience as the Newsboys." Id. at ¶25.
Plaintiffs allege that "Defendants use of the name 'New Boyz' is virtually identical to Plaintiff's trade name and cite Newboys 1991 album, entitled "Boys Will Be Boyz", as reflecting the similarity of the band and album names causing customer confusion. Id. at ¶ ¶ 22, 27-28. As instances of customer confusion, Plaintiffs attach letters to their first amended complaint reflecting letters sent to Newboyz to the Newboys' address and postings on the internet message boards. (Docket Entry No. 31-1 at 9-22). These exhibits reflect that customers contacted Plaintiffs at the wrong mailing address with requests for Newboyz's autographs, dance moves and expressions referring about Newboyz as a rap group and its recording " Jerk", but do not evince any confusion about the nature of the two music groups' music or that the two bands are affiliated. Id. at 9-18. Plaintiffs also allege that Newsboys and New Boyz market their music through the same channels, causing customer confusion and dilution of the Newsboys trademark. Id. at ¶¶ 30, 33. Plaintiffs attach a copy of a page from an internet site with the names of both groups, but this website refers to Newboyz as a "hi hop" "rap" group and their songs "You're a Jerk" and "Dope Boys"and "Lol Gone and Rest Your Pretty head, Good Night Bby Sleep Tight". This website does not refer to Newboys as a rap group and lists their songs such as "He Reigns" and "Entertaining Angels". Id. at ¶ 22.
To survive a motion to dismiss, Plaintiffs' complaint must contain factual allegations sufficient "to raise a right to relief above the speculative level." Bell Atl. Corp. v. Twombly, 550U.S. 544, 555 (2007). In sum, Twobley "simply calls for enough fact to raise a reasonable expectation that discovery will reveal evidence" tending to prove the allegations. Id. at 556. The facts alleged must be "more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Id. at 555. Although the liberal pleading standard of Rule 8 requires the Court to accept all factual allegations as true at the pleading stage, "the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A two-pronged approach in assessing motions to dismiss is (l)t determining which allegations are merely conclusory and not entitled to the presumption of truth and (2) using only the qualifying factual allegations to determine whether the facts alleged are sufficiently plausible to state a claim for relief. Id. at 679.
Only the registrant of a trademark or that registrant's "legal representatives, predecessors, successors, and assigns" has standing to sue for trademark infringement. 15 U.S.C. §§1114(1), 1127. Plaintiff Campbell alleges that he is the sole owner of the Newsboys trademark and does not allege any facts that Newsboys, Inc. has standing to assert claims for its trademark infringement claims. (Docket Entry No. 31, at ¶ 3). To be sure, a false designation of origin claim under Section 1125(a), may be asserted by "any person who believes that he or she is likely to be damaged by" the false designation of origin. 15 U.S.C. § 1125(a). Assuming some potential interest in Campbell's registered mark, Plaintiff Newboys Inc.'s allegation of injury is that Plaintiffs "will continue to suffer great and irreparable injury to his/its intellectual property rights and the erosion of its longstanding goodwill in the trade name." (Docket Entry No. 31, FirstAmended Complaint, at ¶ 41) In any event, Plaintiff Newsboys Inc.s' allegations of injury are legal and conclusory and insufficient to confer standing. See Static Control Components Inc. V.Lexmark Int'l. Inc., 697 F.3d 387, 411 (6th Cir. 2012) cert. granted, 2013 WL 182751 (June 3, 2013). Again, the Court concludes that Plaintiff Newsboys Inc. lacks standing to assert any infringement claims.
To state a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1114, Plaintiff Campbell must allege plausible factual allegations that: (1) he owns the registered trademark; (2) the Defendants used the mark in commerce; and (3) the use Defendants' use of the trademark was likely to cause confusion about the source of the product. Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 609 (6th Cir. 2009). The registrant of a trademark is entitled to the "exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration." 15 U.S.C. § 1115(a).
To state a claim for false designation of origin under 15 U.S.C. § 1125(a), Plaintiff Campbell must allege facts tending to establish that: (1) the false designation has a substantial economic effect on interstate commerce; and (2) the false designation creates a likelihood of confusion. Johnson v. Jones, 149 F.3d 494, 502 (6th Cir. 1998). For each of these claims, the plaintiff must show that customers are likely to be confused about the source of the goods offered by each party. Interactive Products Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 694 (6th Cir. 2003); Daddy's Junky Music Stores. Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 288 (6th Cir. 1997). The trademark infringement and false designation of origin laws apply only if the defendant is "using...
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