The Ninth Circuit, in an issue of first impression, last month dismissed a trademark infringement claim on the grounds that “media-shifting,” or ripping, in the karaoke industry does not concern a “relevant” material good protected by the Lanham Act.
The plaintiff, Slep-Tone Entertainment Corp., is a karaoke music publisher that produces a brand of karaoke tracks and visual aids called “Sound Choice.” Slep-Tone claimed that the Defendant, Wired for Sound Karaoke, copied their tracks onto their own hard drives and used them without paying, a process Slep-Tone refers to as “media-shifting.” Slep-tone argued that the ripped tracks bore the “Sound Choice” name and therefore infringed the company’s trademark rights to the brand. This infringement in turn causes consumer confusion, as people would mistakenly believe that they were singing to a Slep-Tone CD as opposed to Wired’s hard drive.
Slep-Tone alleged that, by copying the tracks onto their hard drives, the Defendant created a new “good” that is protected by the Lanham Act, which provides a federal civil cause of action for unauthorized use of a registered mark. Defendants countered, and the Ninth Circuit agreed, that although a new good was created, it was not a “relevant good” under the Lanham Act. Relevance in the Court’s analysis hinged on the materiality and tangibility of the good’s “origin”, rather than the creative content of the product. The Court found that karaoke patrons who see the Defendant’s performances of the Plaintiff’s karaoke tracks will not be confused about “the source of the tangible good sold in the marketplace.” Slep-Tone’s claims were merely a failed effort to “stuff copyright claims into a trademark container.”
Although the lawsuit presented an issue of first impression in the Ninth Circuit, the Court’s analysis in this case is consistent with existing decisions. In July of 2016, the Seventh Circuit shot down similar Lanham suits in which the karaoke music publisher claimed trademark infringement. Phoenix Entm’t Partners v. Rumsey, 829 F.3d 817, 827 (7th Cir. 2016). The present ruling also cited heavily to the U.S. Supreme Court’s 2003 decision in Dastar Corp. v. Twentieth Century Fox Film Corp., which established limits between the source-designating scope of trademark law and the expression-protecting scope of copyright law. 539 U.S. 23 (2003). In echoing both the Seventh Circuit and Supreme Court’s prior decisions, the Ninth Circuit reinforced the intangible v. tangible dichotomy between copyright and trademark protections.
Barbara Grzincic, “9th Circuit rejects trademark claims over karaoke copies,” (January 20, 2017), Reuters Legal, http://www.reuters.com/article/idUSL1N1FA0HK
Bill Donahue, “9th Circ. Says Trademark Claims Don’t Fit Karaoke Suit,” (January 19, 2017), Law360, https://www.law360.com/ip/articles/882665/9th-circ-says-trademark-claims-don-t-fit-karaoke-suit
Slep-Tone Entm’t Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, No. 14-17229, 2017 WL 192712 (9th Cir. Jan. 18, 2017).
William Vogeler, “Court Says No Trademark Infringement for Coping Karaoke Files,” (January 23, 2017), FindLaw, http://blogs.findlaw.com/ninth_circuit/2017/01/court-says-no-trademark-infringement-for-copying-karaoke-files.html