Category Archives: Lanham Act

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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Judge Batts dismisses copyright and trademark infringement claims for lack of SMJ

Filed under Contract Rescission, Lanham Act, Subject Matter

Pot Luck, LLC v. Freeman, 06 cv10195 DAB, 2009 WL 693611  (S.D.N.Y. 2009)

Judge Batts issued a second copyright decision last week.  Pot Luck created a film High Times’ Potluck, for which it entered into two distribution agreements with Ardustry.   Pot Luck alleged that, subsequent to the release, Ardustry failed to distribute and promote the film as agreed under the licenses, and that it had yet to receive proper compensation.  Ardustry, at the time of the motion, continued to distribute the Film under the licenses.

Pot Luck brought an action for, among others things,  copyright infringement, and false designation & unfair competition under the Lanham Act.  Ardustry moved to dismiss the copyright and trademark claims for lack of subject matter jurisdiction.

Copyright Claim

Judge Batts dismissed the copyright action finding that Pot Luck must rescind the licenses before it could recover for infringement.   The Court found that the licenses “unambiguously” denied Pot Luck the right to rescind its agreement, and that similar limitations have been upheld under New York law (Cafferty v. Scotti Bros. Records, Inc., 969 F.Supp. 193, 198 (S.D.N.Y.1997)):

Both the License Agreement and the World Rights Agreement . . . explicitly limit Plaintiff’s right to rescind the licenses, stating under “Grant of Rights” that “[l]icensor hereby grants, sells, transfers, and assigns to Licensee the exclusive and irrevocable right[s]. . .

Because any claim for rescission is barred by the unambigious language of the licenses, and because Plaintiff must show a plausible claim that the licenses were rescinded in order to bring a cause of action arising under the Copyright Act, Defendants’ motion to dismiss Plaintiff’s copyright claim for lack of subject matter jurisdiction is GRANTED.

Lanham Act (trademark)

Pot Luck brought its trademark claim under Section 43(a), alleging that by distributing its film, Ardustry was likely to confuse as to the true origin of the film.  Judge Batts dismissed the claim, finding that consumers weren’t confused as to “the origin” of the film, because Ardustry was indeed “the origin” of the film, as the term is used in Section 43 of the Lanham Act:

[T]he Supreme Court has read the phrase “origin of goods” as it is used in § 43 to refer only “to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003). The Court found that to “hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do.” Id.

Therefore, under Dastar, “[t]he right to copy creative works, with or without attribution, is the domain of copyright not of trademark or unfair competition. The failure to credit the true author of a copyrighted work is not a false designation of origin, but a violation of copyright.”

Lanham Act (unfair competition)

Judge Batts dismissed the Lanham Act unfair competition claim finding that Section 43 does not provide a general action for unfair competition, but is instead a “category of claims consisting primarily of causes of action for false designation of origin and false advertising.”

Rebecca Tushnet provides more commentary on the trademark implications here.

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