Reed v. Marshall
civil action by one member of a vocal group against her two fellow co-owners of the group's registered service mark and their licensee, for infringement (§ 1114), dilution (§ 1125(c)) and § 1125(a) false designation of origin and false advertising; summary judgment for defendants affirmed. The § 1114 and § 1125(c) rulings (no claim between co-owners) are outside this law and are not recorded as blocks (result: claimant-lost)
Facts
- 6 Entitlement to sue and protected commercial interest not law
The mark’s registrants were listed as Reed, Marshall, and Harris, all in their individual capacities, and its first use in commerce was identified as July 1, 1992.
- 6 Entitlement to sue and protected commercial interest not law
Discussions of the reunion tour were aborted, and in June 2021, Marshall and Harris entered into a six-month work-for-hire contract with a different singer, Myracle Holloway.
- 6 Entitlement to sue and protected commercial interest not law
Despite cease-and-desist letters issued by Reed’s attorney, Marshall, Harris, and Holloway performed as Jade at multiple “90’s Kickback Concert[s]” held in Milwaukee, Miami, and Houston, in November and December 2021.
- 6 Entitlement to sue and protected commercial interest not law
Here, the parties failed to enter into a contractual agreement that defined their respective obligations; and some of the mark’s co-owners have had a falling out with another set of co-owners.
- 6 Entitlement to sue and protected commercial interest not law
Marshall and Harris, as persons with complete ownership interests in the mark, have an unencumbered right to use the mark as they please.
- 6 Entitlement to sue and protected commercial interest not law
Harris and Marshall have not engaged in “unlawful conduct”: their ownership rights afford the authority to (1) perform under the mark and (2) license Holloway as a guest to perform with them.
- 6 Entitlement to sue and protected commercial interest not law
Those facts doom Reed’s theory of liability as to her false designation of origin claim.
- 11 Judicial zone-of-interests limit to commercial injury not no-evidence
Said otherwise, while allegations of injury are sufficient to withstand a motion to dismiss, evidence of injury is required to survive a motion for summary judgment.
- 11 Judicial zone-of-interests limit to commercial injury not no-evidence
And evidence of any “injury to a commercial interest in reputation or sales” is lacking from the record.
- 11 Judicial zone-of-interests limit to commercial injury not no-evidence
Reed’s best allegation is that in marketing materials for the 2024 “R&B Block Party” concert, the event’s promoters created social media posts that included a Jade song that featured Reed’s voice.
- 11 Judicial zone-of-interests limit to commercial injury not no-evidence
Notwithstanding the lack of evidence to support these theories, the defendants’ co-ownership of the JADE mark does not exclude Reed from using the mark as she pleases.
- 11 Judicial zone-of-interests limit to commercial injury not no-evidence
Reed has accordingly not evidenced the injury necessary to sustain her false advertising claim.