Bon Jovi’s motion to dismiss defendant’s Lanham Act and misappropriation of name counterclaims denied

Filed under Lanham Act, Misappropriation

AFL Philadelphia LLC v. Krause, 2009 WL 1562992 (E.D. Pa. 2009)

The last time we checked in on this case the Court issued a rather elegant complete preemption and Merell Dow analysis.  On Thursday, the Court addressed Bon Jovi’s motion to dismiss the defendant’s Lanham Act and misappropriation of name counterclaims. I’ll let Judge Baylson reintroduce the facts of this case (apparently with help from his clerk):

In sports, as in legal battles, there are winners and there are losers, and the case before this Court tells the tale of both. In the instant matter, the local arena football team the Philadelphia Soul-partially owned by rock icon Jon Bongiovi (also known as Bon Jovi)-rose in a “Blaze of Glory”

to win the 2008 national championship Arena Bowl and then was “Shot Through the Heart”

when its 2009 season was cancelled by the League due to financial problems. The team and League remain “Living on a Prayer”

that they will return in the 2010 season and beyond. In the meantime, the Philadelphia Soul and a former employee are trading accusations concerning the fall-out of the season’s cancellation, in which they each experienced a taste of “Bad Medicine.”

To “kick off” this legal battle, Plaintiffs AFL Philadelphia LLC and Bongiovi brought copyright infringement, trademark infringement, and other assorted actions against [the Defendant]. Responding with a “turnover,” Defendant brought Counterclaims under the Lanham Act and for misappropriation of name. In the “first quarter” of what will undoubtedly be a hard fought battle, this Court will declare Defendant the winner and DENY Plaintiffs’ Motion to Dismiss Defendant’s Counterclaims.


The defendant was the former director of ticket sales for the Philadelphia Soul, an Arena Football League franchise.  The AFL canceled its 2009 season, a move that the defendant claimed was “hugely unpopular” with the Soul’s fans.  The AFL’s season ticket holders were apparently irate about a team decision not to immediately issue refunds, and there were press reports of complaints to the AG.

Defendant further alleges the following: after his termination, the Philadelphia Soul sent an email to its fans about the season’s cancellation that falsely designated the origin of the email as having been sent from Defendant’s Philadelphia Soul email address; Defendant did not send the email, had no role in notifying fans of the season’s cancellation, and never authorized the Philadelphia Soul to use his name or email address for such a notification; by this false designation, the Philadelphia Soul sought to cause confusion amongst fans as to Defendant’s association with the unpopular decision to cancel the 2009 season and the resulting controversy over season ticket refunds; and the Soul traded on his good name and reputation amongst the fan base.

Secondary Meaning

The Court cited Lewis v. Marriott Int’l., Inc., 527 F.Supp.2d 422, 426 (E.D.Pa.2007) as analogous precedent, finding that the defendant’s counterclaim sufficiently pled factors that would establish secondary meaning, and that it wasn’t necessary for the defendant to establish secondary meaning between his name and the Philadelphia Soul:

In the instant case, Defendant has pled the following allegations related to secondary meaning: his well known and very favorable reputation in the sports and entertainment business as a media personality and public relations specialist for which Defendant was hired, utilization of Defendant’s reputation and relationships to promote the team and sell tickets, record breaking ticket sales due directly to his efforts, the distribution of an email falsely designated as having been sent from Defendant’s Philadelphia Soul email address, Plaintiffs’ intent to cause confusion amongst fans as to Defendant’s connection with the unpopular email by their false designation, and actual deceit or at least a tendency to deceive the public who received the falsely-designated email. Based on these allegations, the Court finds the following factors tend to show secondary meaning: length of use of Defendant’s favorable reputation in the industry during his tenure as Director of Sales, the extent of sales leading to buyer association based on Defendant’s reputation and relationships, large numbers of sales based on record breaking ticket sales, the fact of copying Defendant’s name by sending the falsely designated email, and actual confusion by the recipients of the email. Although this list represents only five of the eleven factors, Judge Robreno in Lewis denied defendant’s motion to dismiss based on the same factors present here.

Likelihood of Confusion

Bon Jovi argued that the defendant didn’t plead likelihood of confusion because the email did in fact originate from the Philadelphia Soul. The Court found that because the email contained the defendant’s name in the “From” line, it indicated that it “originated from the Defendant, albeit in his role as a Philadelphia Soul employee.”

Misappropriation of Name Claim

The Court found that the defendant adequately pled that Bon Jovi sought to appropriate the value of his name by benefiting from his reputation and prestige.

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2 Trackbacks

  1. By 3 Count: No Bias Here | PlagiarismToday on 9 June 2009 at 12:14 pm

    [...] 3: Bon Jovi’s motion to dismiss defendant’s Lanham Act and misappropriation of name counterclaims d… [...]

  2. [...] Ex©lusive Rights and Shannon Duffy provide summaries of the case, paying particular attention to Judge Baylson’s inclusion of Bon Jovi song references in the opinion. An earlier post by Ex©lusive Rights summarizes the ongoing Pennsylvania State Court litigation between the same parties.  [...]

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