Piccari v. GTLO Prods., LLC

• Decision Date: 24 June 2015
• Docket Number: Civil Action No. 14–06701.
• Citation: 115 F.Supp.3d 509
• Parties: Paul PICCARI; Frank Kielb and FKE, Inc., Plaintiffs, v. GTLO PRODUCTIONS, LLC; GTLO, LLC; Paul Hammond and Paul Fariello, Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

115 F.Supp.3d 509

Paul PICCARI; Frank Kielb and FKE, Inc., Plaintiffs,

v.GTLO PRODUCTIONS, LLC; GTLO, LLC; Paul Hammond and Paul Fariello, Defendants.

Civil Action No. 14–06701.

United States District Court, E.D. Pennsylvania.

Signed June 24, 2015.

Simon Rosen, Law Office of Simon Rosen, Philadelphia, PA, for Plaintiffs.

David J. Shannon, Marshall Dennehey Warner Coleman & Goggin, Philadelphia, PA, for Defendants.

MEMORANDUM

PAPPERT, District Judge.

This case stems from a break up between members of "one of the greatest tribute bands in the history of the modern rock era"—"Get The Led Out." (Compl. ¶ 20, ECF No. 1.) Plaintiffs seek to recover their share of the profits earned by the band since they were allegedly unilaterally ousted from the group. Defendants move to dismiss the complaint pursuant to Federal Rule of Civil Procedure 12(b)(6), contending that Plaintiffs have failed to state claims pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq. Defendants also ask the Court to decline to exercise jurisdiction over the remaining state law claims. For the reasons that follow, the motion is granted and the case dismissed.

I. Factual and Procedural Background

In 2002, Plaintiff Paul Piccari ("Piccari") conceived the idea to form a band dedicated to playing the music of Led Zepellin, one of the world's most famous rock and roll bands. (Id. ¶ 9A.) Piccari named the group "Get The Led Out," and the band was comprised of Piccari and Defendants Paul Hammond ("Hammond") and Paul Fariello ("Fariello"). (Id. ) Since the band's inception in 2002, Picarri has played an "indelible role in the continued success of the musical group" as a "musician, arranger, performer, and valuable provider of creative and business advice." (Id. ¶¶ 10, 11.) Plaintiff FKE, Inc. ("FKE"), through Plaintiff Frank Kielb¹ ("Kielb"), likewise played an indelible role as the band's "personal manager, business manager, business advisor, and consultant." (Id. ¶ 22.) By 2003, "Get The Led Out" was performing live at venues in Philadelphia and West Chester, Pennsylvania. (Id. ¶ 9B.)

Prior to commencing live performances in 2003, the parties orally agreed that Piccari would receive a 22.5 percent proprietary interest and FKE a 10 percent proprietary interest in "Get The Led Out" as well as the gross revenue related to those interests. (Id. ¶ 9C.) The parties also agreed that Piccari would receive his fair share of 22.5 percent of the gross profits earned by "Get The Led Out" and FKE would receive 10 percent of gross profits² earned by "Get The Led Out." (Id. ¶¶ 12, 19.) Both Piccari and Kielb are co-owners³ of the trade name, trade dress, and trademark "Get The Led Out." (Id. ¶¶ 10, 21.)

The Defendants forced Piccari out of the band⁴ and, on October 24, 2011, they unilaterally terminated FKE and Kielb. (Id. ¶¶ 13, 24.) "Since their ouster, Plaintiffs have not received, and defendants refuse to make, any payments based on their interests in the band." (Id. ¶¶ 15, 26.)

Plaintiffs allege breach of oral contract, promissory estoppel, unjust enrichment, breach of fiduciary duty, breach of implied-in-fact agreement, accounting, constructive trust, and violations of the Lanham Act. Defendants contend that Plaintiffs have failed to state a claim under the Lanham Act and ask the Court to decline to exercise supplemental jurisdiction over the Plaintiffs' state law claims. The Court now considers Defendants' motion, Plaintiffs' response, (ECF No. 16), and Defendants' reply.⁵ (ECF No. 17.)

II. Legal Standard

"A Rule 12(b)(6) motion tests the sufficiency of the complaint against the pleading requirements of Rule 8(a)." Siwulec v. J.M. Adjustment Servs., LLC, 465 Fed.Appx. 200, 202 (3d Cir.2012). Rule 8(a)(2) requires that a complaint contain a short and plain statement of the claim showing the pleader is entitled to relief, "in order to give the defendant fair notice of what the ... claim is and the grounds upon which it rests." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (citation omitted). The court must "accept all factual allegations as true" and "construe the complaint in the light most favorable to the plaintiff." Warren Gen. Hosp. v. Amgen Inc., 643 F.3d 77, 84 (3d Cir.2011) (citing Pinker v. Roche Holdings Ltd., 292 F.3d 361, 374 n. 7 (3d Cir.2002) ). However, " ‘[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.’ To prevent dismissal, all civil complaints must now set out ‘sufficient factual matter’ to show that the claim is facially plausible." Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir.2009) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) ). A claim is facially plausible if it states "enough factual matter (taken as true) to suggest the required element." Phillips v. Cnty. of Allegheny, 515 F.3d 224, 234 (3d Cir.2008) (quoting Twombly, 550 U.S. at 556, 127 S.Ct. 1955 ). A motion to dismiss will be granted when the factual allegations in the complaint are insufficient "to raise a right to relief above the speculative level." Twombly, 550 U.S. at 555–56, 127 S.Ct. 1955.

III. Discussion

Defendants move to dismiss Plaintiffs' Lanham Act claims on three grounds: (1) the public record on file with the United States Patent & Trademark Office (USPTO) demonstrates that Plaintiffs are no longer owners of the "Get The Led Out" trademark⁶ , and thus lack standing to assert trademark infringement claims pursuant to the Lanham Act; (2) assuming Plaintiffs are still owners of the trademark, they cannot allege a trademark infringement claim against the Defendants, who are co-owners of the trademark; and (3) Plaintiffs fail to allege the requisite elements of a trademark infringement action.

Defendants contend that when Piccari was ousted from the band, they paid him $3,016.94 in exchange for leaving the band-joint venture and releasing all interest in the band-joint venture and its assets. Defendants further contend that Piccari's assignment to Kielb of a portion of his interest in the mark after his ouster was null and void. (Defs.' Mot. Dismiss 6–7.)⁷ Plaintiffs argue that the USPTO's records reflect both Piccari's ownership interest and his assignment to Kielb. (Pls.' Opp'n Mot. Dismiss 6.) At this stage in the litigation, the Court must take the Plaintiffs' factual allegations as true, and the documents Defendants have provided in support of their position are ambiguous at best. The Court accordingly assumes that Plaintiffs have an ownership interest in the "Get The Led Out," mark number 4065612, dated October 10, 2006.⁸

Second, Defendants' ownership of the "Get The Led Out" trademark is uncontested. Plaintiffs describe themselves as "co-owners of the trademark ‘Get The Led Out.’ " (See Compl. ¶¶ 10, 21, 72, 76.) The current USPTO records reflecting "Get The Led Out" trademark provided by Plaintiffs lists the owners as "(REGISTRANT) Paul Hammond[,] Paul Fariello, USA, Paul Piccari, USA, Paul Hammond, USA, and Adam Ferraioli⁹ , USA JOINT VENTURE PENNSYLVANIA 112 e. Ninth st Bridgeport PENNSYLVANIA 19405." (Pls.' Opp'n Mot. Dismiss, Ex. B.). Defendants contend that their joint ownership prohibits Plaintiffs from stating a trademark infringement claim under the Lanham Act. (Defs.' Mot. Dismiss 7–8.)

The parties have not identified and the Court is unaware of any cases within the Third Circuit that have considered whether an owner may state a trademark infringement claim against a co-owner. Accordingly, the Court turns to the language of the Lanham Act to discern whether such a claim is permitted. The pertinent section provides:

Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertising intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertisement of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1114(1). Though the language of this section, with its reference only to the registrant¹⁰ , provides little guidance as to whether an owner may bring a cause of action against a co-owner for trademark infringement, the Supreme Court has observed that "[r]egistration of a mark under § 2 of the Lanham Act, 15 U.S.C. § 1052, enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114." Wal–Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (emphasis added). This distinction between an "owner" and an "infringer" is consistent with the statute's expressly stated purpose:

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by

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