Trademark Infringement

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7^th Circuit Court of Appeals

Case Name: Phoenix Entertainment Partners, LLC et al v. Dannette Rumsey et al

Case No.: 15-2844

Officials: WOOD, Chief Judge, ROVNER, Circuit Judge, and BLAKEY, District Judge

Focus: Trademark Infringement

Appellant fails to allege that the conduct of the respondent resulted in consumer confusion, case is properly dismissed as a result.

“We have considered Slep-Tone’s concern that if the data contained on one of its products is compressed excessively during the duplication process, the quality of an unauthorized copy may be poor and, when played, may lead viewers to think Slep-Tone products are of inferior quality. (Although the same danger may be present when a Slep-Tone customer makes an authorized copy, we shall assume that the auditing process referred to in the complaint takes care of this.) Quality is always a concern in passing-off cases: Not only is the trademark holder deprived of sales, but the counterfeit goods sold under its trademark place the holder’s goodwill at risk to the extent the goods are of inferior quality. See, e.g., Coca-Cola Co. v. Stewart, 621 F.2d 287, 291 (8th Cir. 1980). But the problem for Slep-Tone, apart from the fact that it does not affirmatively allege that the defendants’ copies are noticeably inferior to their patrons, see n.3, supra, is that the defendants are not passing off a tangible good sold in the marketplace as a SlepTone good. As we have discussed, the defendants are not selling compact discs with karaoke tracks and billing them as genuine Slep-Tone tracks, in the way that a street vendor might hawk knock-off Yves Saint Laurent bags or Rolex watches to passers-by. Whatever wrong the defendants may have committed by making (or causing to be made) unauthorized copies of Slep-Tone’s tracks, they are not alleged to have held out a tangible good sold in the marketplace as a Slep-Tone product. Consequently, the defendants’ alleged conduct is not actionable as trademark infringement”

Affirmed

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Attorney Derek A. Hawkins is the managing partner at Hawkins Law Offices LLC, where he heads up the firm’s startup law practice. He specializes in business formation, corporate governance, intellectual property protection, private equity and venture capital funding and mergers & acquisitions. Check out the website at www.hawkins-lawoffices.com or contact them at 262-737-8825.