United States District Court, District of Columbia
MEMORANDUM OPINION & ORDER
TIMOTHY J. KELLY UNITED STATES DISTRICT JUDGE.
Jerzy Sapieyevski brings this action against Defendant Live
Nation for alleged violations of the Lanham Act. He brings
claims of trademark infringement, unfair competition, and
trademark dilution. Live Nation has moved to dismiss the
complaint for failure to state a claim, arguing that its
conduct at issue is protected under the First Amendment and
therefore not subject to liability under the Lanham Act. It
also argues in the alternative that Sapieyevski has failed to
adequately plead a claim for trademark dilution. For the
reasons explained below, Live Nation's motion is granted
in part and denied in part.
Sapieyevski is a self-described musician, composer, producer,
and professor of music. ECF No. 1 ("Compl.") ¶
1. He alleges that, as early as 1999, he began using the mark
"MUSICHAPPENS" "for various music and music
related services" that he provides, including
"publications, online music[, ] and music related
resources and education materials." Id.
¶¶ 8, 10. And in 2002, Sapieyevski federally
registered his mark with the United States Patent and
Trademark Office (USPTO). Id. ¶¶ 8, 12.
The registration describes "MUSICHAPPENS" to
signify "[m]usic composition for others; music
composition and transcription for others; music production
and publishing services; entertainment services, namely,
music production; live music performance; [and] multimedia
entertainment software production services."
Id. ¶ 12.
alleges that in 2017, Live Nation Worldwide, Inc.,
("Live Nation") began using the mark "MUSIC
HAPPENS HERE" to promote "an initiative in
partnership with Spotify USA, Inc.[, ] and Hilton
Hotels." Id. ¶ 16 (edits to
capitalization). In April 2017, Live Nation applied to
register its mark with the USPTO. Id. ¶ 17. The
application stated that "MUSIC HAPPENS HERE" would
be used to identify the following services:
Production of audiovisual recordings and multimedia
entertainment content featuring music, popular culture,
entertainment and social commentary; distribution of
audiovisual recordings and multimedia entertainment content
featuring music, popular culture, entertainment and social
commentary via the internet and mobile applications; [and]
[p]roviding non-downloadable pre-recorded audiovisual content
featuring music, artistic performances, popular culture, live
music entertainment, entertainment news and social commentary
via the Internet.
ECF No. 1-1 at 4. After receiving a letter of protest from
Sapieyevski, however, the application was referred to a USPTO
examining attorney, who made an initial determination to
refuse Live Nation's application due to a likelihood of
confusion with Sapieyevski's mark. See id.
alleges that Live Nation has continued to use the mark
"MUSIC HAPPENS HERE," thereby "knowingly and
willfully infring[ing]" his own registered mark. Compl.
¶¶ 18-21. He claims that "[b]oth parties offer
substantially similar services under [their] mark[s] in the
same field of endeavor"-such as "music services
on-line, in-person, and as written materials about
music." Id. ¶ 20. He further alleges that
they both "target music listeners, students, and
April 11, 2018, Sapieyevski commenced this action, filing his
complaint bringing three claims under the Lanham Act, 15
U.S.C. § 1051 et seq. Count I alleges
"infringement of a federally registered
[trade]mark," including by use of "the domain name
musichappenshere.com." Compl. at 6 & ¶¶
29-33 (edits to capitalization). Count II alleges
"unfair competition and false designation of
origin," asserting that Sapieyevski's use of his
mark in connection with his music services "acquired
secondary meaning indicating that the source of origin of
[those] music services is [Sapieyevski]." Id.
at 7 & ¶¶ 34-41 (edits to capitalization). And
Count III alleges "trademark dilution," claiming
that Live Nation has used a "confusingly similar
variation" of Sapieyevski's mark "to advertise
and market music events [and] cause dilution ... by blurring
and obscuring" Sapieyevski's mark. Id. at 8
& ¶¶ 41-45 (edits to capitalization).
months later, Live Nation moved to dismiss the complaint
pursuant to Federal Rule of Civil Procedure 12(b)(6).
See ECF No. 8 ("MTD"). In its motion, Live
Nation explains that "Music Happens Here"
is the title of a "seven-episode original video
series." Id. at 1-2. According to Live Nation,
the series "showcases some of the most iconic places
where music has been created and performed," with
"[e]ach 25-40 minute video episode featuring] a
different city and highlight[ing] artists and
performances." Id. at 2. Live Nation argues
that because "Music Happens Here" is the
title of an audiovisual work, Live Nation's use of the
mark is protected under the First Amendment and therefore
immune from liability under the Lanham Act. See Id.
at 4. In the alternative, Live Nation argues that Sapieyevski
has failed to adequately allege the requisite elements of a
trademark-dilution claim. Id. at 11. Sapieyevski
opposed the motion, see ECF No. 9
("Opp'n"), and Live Nation filed a reply,
see ECF No. 10 ("Reply").
motion to dismiss under Rule 12(b)(6) for failure to state a
claim "tests the legal sufficiency of a complaint:
dismissal is inappropriate unless the 'plaintiff can
prove no set of facts in support of his claim which would
entitle him to relief" Browning v. Clinton, 292
F.3d 235, 242 (D.C. Cir. 2002) (quoting Conley v.
Gibson, 355 U.S. 41, 45-46 (1957)). "To survive a
[Rule 12(b)(6)] motion . . ., a complaint must contain
sufficient factual matter, accepted as true, to 'state a
claim to relief that is plausible on its face.'"
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)). In reviewing such a motion, the Court is limited to
"the facts alleged in the complaint, any documents
either attached to or incorporated in the complaint[, ] and
matters of which [the Court] may take judicial notice."
EEOC v. St. Francis Xavier Parochial Sch, 117 F.3d
621, 624 (D.C. Cir. 1997). "[T]he complaint [must be]
construed liberally in the plaintiff['s] favor," and
the Court must grant the plaintiff "the benefit of all
inferences that can be derived from the facts alleged."
Kowal v. MCI Comm 'ns Corp., 16 F.3d 1271, 1276
(D.C. Cir. 1994). "Threadbare recitals of the elements
of a cause of action, supported by mere conclusory
statements," however, "do not suffice."
Iqbal, 556 U.S. at 678. The Court also notes that
when, as here, a plaintiff is proceeding pro se, the
complaint is "held to less stringent standards than
formal pleadings drafted by lawyers." Erickson v.
Pardus, 551 U.S. 89, 94 (2007) (quoting Estelle v.
Gamble, 429 U.S. 97, 106 (1976)).
Nation makes two arguments in favor of dismissal. First, Live
Nation contends that its use of "MUSIC HAPPENS
HERE" is protected under the First Amendment from
liability under the Lanham Act, and thus that all three of
Sapieyevski's claims must be dismissed. MTD at 5-11.
Second, and in the alternative, Live Nation asserts that
Sapieyevski's third claim, for "trademark
dilution," must be dismissed because he has failed to