United States District Court, M.D. Florida, Tampa Division
S. MOODY. JR. UNITED STATES DISTRICT JUDGE
CAUSE comes before the Court upon Defendant Kevin Burke's
Motion to Dismiss for Failure to State a Claim (Doc. 19) and
Plaintiff Phoenix Entertainment Partners, LLC's Response
in Opposition (Doc. 20). Upon review, the Court concludes
that Defendant's motion should be granted.
years, Phoenix Entertainment Partners, LLC
(“PEP”) and its predecessor in interest,
Slep-Tone Entertainment Corporation, have produced and sold
karaoke accompaniment tracks under the trademark “Sound
Choice.” The Sound Choice-branded tracks are
“wildly popular” because they provide highly
accurate singing cues and are faithful to the sound of the
original recording artist.
sells its karaoke tracks exclusively in compact disc format.
However, it is technologically possible to convert the tracks
from the compact discs into digital files. Easy electronic
duplication of these files has resulted in widespread copying
and distribution of Sound Choice-branded tracks without
corresponding purchases of the compact discs. As a result,
PEP has lost revenue from the sale and licensing of its
filed a number of lawsuits around the country against karaoke
bars and karaoke disc jockeys (“DJs”) that it
believes are playing pirated Sound Choice-branded tracks at
karaoke shows. Of note, PEP alleges that these entities are
infringing its trademarks and not any copyrights it might have.
In this action specifically, PEP sued Kevin Burke
(“Burke”), a karaoke DJ, for trademark
infringement and unfair competition in violation of the
Lanham Act, as well as for related state law violations.
theory of Lanham Act liability goes as follows. When Burke
plays pirated Sound Choice-branded karaoke tracks during his
karaoke sessions at bars, the bar patrons see the tracks'
graphic component, which displays not only the tracks'
song lyrics but also PEP's “Sound Choice”
trademark and trade dress. Displaying PEP's trademark
causes confusion regarding both the source of Burke's
goods (i.e., the karaoke tracks) and services (i.e., his
karaoke entertainment services). Bar patrons will think that
the karaoke tracks Burke plays originated with PEP and not
the person who copied the tracks into digital files. In
addition, the bar patrons will mistakenly think that PEP has
sponsored or approved of Burke's karaoke services.
responded to PEP's Complaint (Doc. 1) by filing the
instant motion, arguing that PEP's federal claims should
be dismissed in light of recent appellate decisions from the
Seventh and Ninth Circuits. The courts in both cases held
that, as a matter of law, conduct identical to Burke's
did not constitute a violation of the Lanham Act.
Rule of Civil Procedure 12(b)(6) allows a court to dismiss a
complaint when it fails to state a claim upon which relief
can be granted. When reviewing a motion to dismiss, a court
must accept all factual allegations contained in the
complaint as true. Erickson v. Pardus, 551 U.S. 89,
94 (2007) (internal citation omitted). It must also construe
those factual allegations in the light most favorable to the
plaintiff. Hunt v. Aimco Properties, L.P., 814 F.3d
1213, 1221 (11th Cir. 2016) (internal citation omitted).
withstand a motion to dismiss, the complaint must include
“enough facts to state a claim to relief that is
plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). A claim has facial
plausibility “when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Pleadings that offer only “labels and conclusions,
” or a “formulaic recitation of the elements of a
cause of action, ” will not do. Twombly, 550
U.S. at 555.
Lanham Act Claims
Lanham Act makes actionable “the deceptive and
misleading use of [trade]marks” (i.e., the names or
symbols used to identify a person's goods or services and
to distinguish them from those sold by others). 15 U.S.C.
§ 1127; Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23, 28 (2003). PEP asserts claims under
sections 32 and 43 of the Act. Section 32 creates liability
for trademark infringement when a person “use[s] in
commerce any reproduction . . . of a registered mark in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with
which such use is likely to cause confusion . . . .” 15
U.S.C. § 114(a). Section 43 imposes liability for unfair
competition on a “person who, on or in connection with
any goods or services . . . uses in commerce any word, term,