New Blog Tracks the Las Vegas Sound Choice Lawsuit

For regular readers who have noticed a lack of activity on this blog, it’s the classic conundrum of client demands getting in the way of blogging.  I hope to be back to normal posting in mid-May (of course, I said that back in January and look what happened).

One story that I would have like to have covered is the “trademark infringement” lawsuit filed by Slep-Tone Entertainment Corporation against karaoke DJs (“KJs”) and venues in Las Vegas for alleged infringement of the SOUND CHOICE trademark.  (Las Vegas Sun articles here and here). 

I’ve been watching Slep-Tone pursue its “litigation business model” going all the way back to 2009 (back before Steve Gibson’s Righthaven brought a new name to the business model of filing lawsuits to get quick settlements).   All one has to do is type “sound choice lawsuit” into a search engine and you’ll find numerous sources (e.g., SoundChoiceSucks) commenting on Slep-Tone’s lawsuit campaign  (including Sound Choice’s own web page about why it is pursuing this “piracy campaign” and Sound Choice’s uber-aggressive investigation firm APS and Associates).

Well, it was only a matter of time before Slep-Tone made its way to “sin city” to troll for some quickie settlements here by filing a single, boilerplate lawsuit naming approx. 200 KJs and venues.  See Slep-Tone Entertainment Corporation v. Ellis Island Casino & Brewery et al, Case No. 12-cv-00239 (D. Nev.) (lawsuit here).   This lawsuit was actually a long-time coming.  Slep-Tone’s investigation firm, APS, was trolling (pun intended) around Las Vegas last May and June 2011 doing its “investigations” into potential KJs and venues it could sue.  Letters were sent out at that time citing the KJs as potential trademark violators – and demanding that they submit themselves to an audit to determine that their Sound Choice tracks were legitimate.  Those who did not respond or otherwise settle are now the defendants in this mass-trademark infringement lawsuit. 

I am a big believer that knowledge is power and using the internet to inform the public (particularly, in this case, small-time KJs who cannot afford to hire a lawyer to defend against Slep-Tone’s specious lawsuit).  I was originally planning to start up a separate website that would monitor and track the Las Vegas Sound Choice lawsuit (posting the major court filings so that others could benefit from law firm work product as well as articles and other information already out there).  A single resource that had good, usable information to assist those caught up in Slep-Tone’s questionable lawsuit.   

Well, the lack of blogging here should be an indication of the time (or lack thereof) that I had to pursue such a project.  And now someone else has beaten me to it.

Local attorney Robert J. Kossack, Esq. started up soundchoicelasvegaslawsuit.com.  As he describes on his “About the Host” page, he started out writing an article for a magazine about the lawsuit and it took on a life of its own.  His detailed post “Massive lawsuit threatens to change karaoke in Las Vegas” details the legal issues pretty well.  (I don’t have the time to get into the merits of the lawsuit, but needless to say, I have always been bothered by the counterfeiting claims because it seemed like a reach on the part of Slep-Tone just so that it could threaten small-time defendants with statutory damages for infringement). 

In addition, Mr. Kossack has not only made available all of the major court filings in the lawsuit (link here), but he even provides “template” joinders (one for motions to dismiss and one for motions to sever) that pro-se KJs who can’t afford an attorney can copy and paste (hey, what do you think lawyers do?) and file with the court so in order to “join” the motion to dismiss and motion to sever filed by the larger casino venues (PTs, Caesars, Treasure Island, Station Casinos) to ensure that Slep-Tone cannot get a default judgment against you (at least not at this early stage). 

Mr. Kossack has done exactly what I wanted to do in order to inform the public (especially KJs) about the Las Vegas Sound Choice lawsuit.  And that is why soundchoicelasvegaslawsuit.com is my new favorite blog.  I think it has the potential to become another website along the lines of those which popped up during the Righthaven debacle (Righthaven Lawsuits, Righthaven Victims).

I just hope he doesn’t get too busy dealing with client demands  -- after all, nothing worse than a blog where months go by without any new postings. 

Vienna Beef Sues Chicago Restaurant for Counterfeiting and False Advertising

As much as I enjoy reading trademark infringement lawsuit complaints, even I will concede that they all pretty much read the same after a while – multiple paragraphs of factual allegations about trademark rights and infringing activities followed by paragraphs of causes of action (leave it to lawyers to take 20 pages to state what could probably be set forth in 5 pages and still be considered a sufficient “short and plain statement of a claim” for purposes of satisfying Rule 8). The lawsuit filed by Vienna Beef, Ltd. (“Vienna Beef”) against a Chicago restaurant, and its owner, Ferzi Emini, is no different. See Vienna Beef, Ltd. v. Freddy's Fast Food, Inc. et al, Case. No. 10-cv-04313 (N.D. Ill. July 12, 2010). (Complaint here).

Vienna Beef is the owner of the registered trademark for VIENNA BEEF for various items including frankfurters, wieners, and polish sausage. According to the complaint, the Defendants’ restaurant, Freddy's Fast Food (located at 5364 W. Gale Street, Chicago, Illinois 60630) serves hot dogs and polish sausages. A purported picture of the exterior of the Defendants’ Restaurant showing a large sign displaying the mark VIENNA BEEF was included as an exhibit to the complaint.

A Vienna Beef representative supposedly went to Defendants’ restaurant and observed that the restaurant was selling hot dogs and polish made by some other company (an unnamed Vienna Beef competitor).

Which leads to the one factual allegation in this complaint that stands out among the other routine allegations (and makes this complaint a little unusual). According to the complaint, when the Vienna Beef representative notified Mr. Emini that his use of the VIENNA BEEF mark was not proper because he was not selling Vienna Beef products and that he must either begin selling genuine Vienna Beef products or else take down the sign, Mr. Emni “wielded a weapon, chased Vienna Beef’s representative from Defendants’ Restaurant, and threatened Vienna Beef’s representative with death or bodily harm.” [ed.—hmm, I wonder what kind of weapon? A deadly Kielbasa perhaps?] Naturally preferring to avoid any further confrontation, Vienna Beef followed-up with a formal cease and desist letter the next day [ed.—no police report?]. Defendants apparently refused to comply, promptly Vienna Beef to file the instant action.

Vienna Beef maintains that Defendants, by promoting VIENNA BEEF and then selling hot dogs and polish sausages that are not genuine Vienna Beef products, are deceiving customers into believing that they are purchasing genuine VIENNA BEEF branded hot dogs and polish sausages, when, in fact, such customers are purchasing some other company’s brand of hot dogs and polish sausages.

Utah Company Goes After Counterfeit “Male Chastity” Belts

This summary is not available. Please click here to view the post.

Exclusive Licensee of “Rush” Merchandise Rushes to Court to Stop Counterfeiters

On May 1, 2008, a company named Showtech Merchandising, Inc. filed a trademark infringement lawsuit in Nevada District Court against various John Does, Jane Does, and ABC Company. See Merchandising, Inc v. Various John Does, et al, Case. No. 08-cv-00232 (D. Nev. May 1, 2008).

Showtech sells rock band merchandise for various bands, most notably the band Rush, for which Showtech has been the official merchandiser for over 30 years. Showtech’s Rush goods can be found at its Rush Back Stage website -- http://www.rushbackstage.com/.

And it just so happen that the band Rush is playing at the Mandalay Bay Events Center on May 10th as part of Rush’s Snakes and Arrows Tour.

Without reviewing the complaint, it looks like Showtech, as the exclusive licensee of authorized Rush merchandise, is going after some unknown purveyors of counterfeit Rush merchandise being sold in advance of Saturday’s concert.

Cover of Rush's Snakes & Arrows Album

Chicago Cubs go after clubs watching Wrigley Field home games from nearby rooftops

On February 15, 2008, Chicago National League Ball Club, L.L.C., the owner of the Chicago Cubs Major League Baseball team (the “Cubs”), filed a trademark infringement lawsuit in the U.S. District Court for the Northern District of Illinois against Thomas Gramatis as well as two companies owned and controlled by Gramatis -- Wrigley Rooftops III, L.L.C., d/b/a the Wrigley Field Rooftop Club (“Wrigley Field Rooftop Club”) and Rooftops IV, L.L.C., d/b/a the Sheffield Baseball Club (“Sheffield Baseball Club”). See Chicago National League Ball Club, L.L.C. v. Wrigley Rooftops III, L.L.C. et al, Case No. 08-cv-00968 (N.D. Ill.). A copy of the complaint can be downloaded here (HT to Marty Schwimmer’s Trademark Blog).

The Cubs also own and operate Wrigley Field, the second oldest Major League Baseball ballpark in the United States (Boston’s Fenway Park is the oldest), where the Chicago Cubs baseball team play all of its home games.

The Wrigley Field Marquee

The complaint notes that the Cubs, through years of investing substantial sums of money both in advertising and promotion as well as the baseball team itself, have built up substantial consumer recognition and goodwill with respect to its numerous trademarks relating to the “Cubs” and “Wrigley Field” including:

• CHICAGO CUBS
• the circle CUBS logo
• Stylized C logo
• The name WRIGLEY FIELD (Note: this particular application for federal registration was abandoned -- apparently facing a likelihood of confusion rejection over the many WRIGLEY related trademarks held by the William Wrigley Jr. Company)
• Wrigley Field Home of Chicago Cubs and
• the Wrigley Field marquee logo.

Both clubs are in the business of selling to the public rooftop seats which allow patrons to watch Cubs games played at Wrigley Field because of the close proximity of Wrigley Field to the building rooftops where the clubs operate (the Wrigley Field Rooftop Club operates at 3617 N. Sheffield Avenue and the Sheffield Baseball Club operates at 3619 N. Sheffield Avenue). Gramtis supposedly charges as much as $150 or more per person for admission to his rooftops.

Aerial Photo of Wrigley Field showing building rooftops in the distance.

(Photo Credit: Aerial Views)

Gramtis, through another company Annex Club, L.L.C. (“Annex”), also operates another rooftop club named the Ivy League Baseball Club from a facility that is adjacent to Wrigley Field. In 2004, the Cubs and Annex entered into a license agreement allowing Annex to operate the Ivy League Baseball Club and use the Cubs’ trademarks in exchange for an annual royalty payment. The Cubs have entered into similar licensing arrangements with 12 other rooftop operators.

According to the complaint, when Gramatis began operating the Sheffield Baseball Club in 2007, the Cubs attempted to enter into a similar agreement with Gramatis, but such agreement was never finalized. In late 2007, Gramatis apparently announced plans to operate the Wrigley Field Rooftop Club during the 2008 season. This month, the Cubs reiterated its offer to Gramatis regarding the Sheffield Baseball Club and also attempted to enter into the aforementioned license agreement with the Wrigley Field Rooftop Club, but Gramatis allegedly refused both.

The Cubs maintain that Gramatis is marketing his clubs using the Cubs trademarks, including the Chicago Cubs name, the Wrigley Field name, and other marks associated with the Cubs, on each clubs’ respective website (http://wrigleyfieldrooftops.com/ and http://sheffieldbaseballclub.com/). The Cubs also assert that Gramatis has advertised his clubs as being “Officially Endorsed by the Chicago Cubs.”

The Cubs’ single count (citing 15 U.S.C. §§ 1114, 1116(d) and 1125) argues that Gramatis’ marketing efforts are willful and wanton actions designed to trade off of the Cubs trademarks and goodwill and which are likely to cause confusion as to the affiliation, association or connection between Gramatis’ clubs and the Cubs and as to the sponsorship or approval of Gramatis’ business activities by the Cubs and adversely affect Cubs’ ticket sales as well as the ticket sales of the Cubs’ rooftop licensees.

The Cubs are asking for injunctive relief to stop Gramatis from using the Cubs’ trademarks and engaging in any marketing which is likely to cause consumer confusion regarding affiliation with or sponsorship or approval by the Cubs of Gramatis’ business. The Cubs also seek compensatory damages, Gramatis’ profits, treble damages, statutory damages under 15 U.S.C. § 1117(c) (for alleged counterfeiting), interest, costs and attorneys’ fees.

The Cubs have also apparently informed Gramatis that it intends on taking action to prevent him from providing his club members “with any guarantee that they will have an unobstructed view of home plate and other parts of Wrigley Field in 2008.”