September 2006 Archives

A quick follow-up to last week's post about the Supernova injunction. The junior user-- the band made up of Tommy Lee, Jason Newsted, Gilby Clarke and winning Rock Star: Supernova contestant Lukas Rossi-- will record and tour under the name "Rock Star Supernova."

(Trademark litigation, reality TV and rock music together in a single story. How can I not blog this to the full extent possible?)

Like two stars colliding… in a courtroom

US District Judge John A. Houston ruled yesterday in favor of Supernova from CyNot3 and granted a preliminary injunction against Mark Burnett and Rockstar Entertainment from "using the mark SUPERNOVA in conjunction with performing rock and roll music, or recording or selling rock and roll music recordings." Supernova from CyNot3 LLC v. Mark Burnett Productions, Inc., 06-CV-1334, (S.D.Cal., Sep. 12, 2006) (Order Granting Plaintiff's Preliminary Injunction Motion).

Plaintiff has a valid trademark in SUPERNOVA.
The mark SUPERNOVA is arbitrary with regards to rock music. It requires imagination by the consumer in order to associate with a rock and roll group. The plaintiff does not need to establish secondary meaning in an arbitrary mark to show the validity of the mark.

However, the senior mark user can only assert trademark use in which it has legally sufficient market penetration and a zone of natural expansion. The court found that the plaintiff established substantial evidence of nationwide use of their mark in commerce- nationwide and Canadiian tours in 94, 95, 96, 99 and availability of records on the internet.

The defendants argued that the plaintiffs abandoned the mark by failing to perform live or record new music between 1999 and 2006. The court found that argument unpersuasive, noting that the plaintiffs earned royalties as songwriters, made their records available for sale online and in retail outlets, and took a break to start families, finish educations and catch up on life.

The defendant licensed a Supernova mark from Nasar Abadey, owner of Trademark Reg No. 1,699,491 (the "491 Mark"). The 491 Mark is a work for the phrase "Supernova Multi-Directional Music Ensemble Nasar Abadey." The court agrees with the Plaintiff's argument that Defendants have not established any rights outside of the “multi-directional musical ensemble” field (generally known as avant-garde jazz.) The court cites a number of Ninth Circuit cases that found no likelihood of confusion where the music genres differ between the mark holders, including M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073 (9th Cir. 2005) (no likelihood of confusion between sports music and interactive music distributors); M2 Software, Inc. v. M2 Communications, L.L.C., 149 Fed.Appx. 612 (9th Cir. 2005) (no likelihood of confusion between interactive music and Christian music distributors) and Echo Drain v. Newsted, 307 F.Supp.2d 1116 (C.D. Cal.2003) (no likelihood of confusion, in part, because of
difference between “funk and groove” and pop music genres. And yes, Jason Newsted was a defendant in that case, too.)

Because the 491 Mark only covers the rights to the Supernova name for the performance of avant-garde music, Abadey could license rights to the mark for the performance of rock and roll music, since those are outside the scope of the rights he holds in the 491 Mark.

Likelihood of Confusion
In order to establish the likelihood of success on the merits for a preliminary injunction, the plaintiffs must establish a likelihood of confusion using the 9th Circuit's Sleekcraft multi-factor test.

Defendants assert that the marks are "distinctly different" because the band “Supernova from Cynot 3 uses the 'Supernova' name exclusively in connection with a band that is from outer space that performs dressed in silver space suits." Doc. No. 37 at 19 (emphasis in original). In contrast, Defendants' SUPERNOVA mark is used "exclusively in connection with the Rock Star: Supernova TV series and famous rock musicians Tommy Lee, Jason Newsted, and Gilby Clarke."

Gilby Clarke is famous?

The court finds that the marks are identical in sight and sound. SUPERNOVA = SUPERNOVA.

The parties' goods and services are identical or closely related. The defendants assert that space punk music is distinct from "old school rock and roll" and that performing in large arenas and stadiums is distinctly different from playing in small pubs and bars. The court does not buy the argument, finding that a reasonable music consumer treats "space punk" and "old school rock and roll" to be fungible and that both bands draw their customer base from the same pool of consumers. The court finds it reasonable that the defendants will market their SUPERNOVA band through "the internet, commercial venues, such as music stores, as well as through performances at live venues that will advertise its concerts."

Because Supernova is an arbitrary mark when applied to rock music, the court finds that this factor weighs in favor of the plaintiffs, but it is not a particular significant factor in the Ninth's Circuit's likelihood of confusion analysis.

The plaintiff introduced evidence of nine instances of actual reverse confusion among consumers. Venues that booked the plaintiff's band Supernova received calls and emails inquiring if the Supernova performing at those venues would include Tommy Lee, Jason Newsted and Gilby Clarke. The defendants argue that this indicates that consumers are aware that there are multiple Supernova rock bands and are exercising due care to make sure that they do in fact see (or avoid) the Supernova from TV. The court finds that this evidence of actual confusion weighs heavily in favor of the plaintiffs.

When evaluating the level of consumer care, the court attempts to balance the fact that compact discs are relatively inexpensive (which typically establishes low level of consumer care) against the fact that music consumers are "nonetheless highly knowledgeable about different bands." This factor weighs slightly in favor of the plaintiffs.

The court finds a likelihood of confusion, and therefore a likelihood of the plaintiff's success on the merits at trial. Once a senior user has demonstrated a likelihood of success on the merits on a trademark infringement claim, irreparable injury is presumed. A likelihood of success on the merits and irreparable injury? Sounds like the recipe for a preliminary injunction.

Plaintiff’s motion for preliminary injunction is GRANTED. Defendants are enjoined from using the mark SUPERNOVA in conjunction with performing rock and roll music, or recording or selling rock and roll music recordings under the same pending a trial of this action on its merits, or until otherwise ordered by the Court.

The finale of Rock Star: Supernova airs tonight. (The plaintiff and CBS stipulated that the preliminary injunction is not targeted against the production, broadcast or promotion of the Rock Star: Supernova TV series.) Not good timing for Mark Burnett and the members of the band fronted by the winner of the Rock Star: Supernova series.

Previously: Reality TV and the Law.
Elsewehere: Are we there yet?, Penultimate Performances.