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Sapieyevski v. Live Nation Worldwide, Inc.

United States District Court, District of Columbia

March 20, 2019

JERZY SAPIEYEVSKI, Plaintiff,
v.
LIVE NATION WORLDWIDE, INC., Defendant.

          MEMORANDUM OPINION & ORDER

          TIMOTHY J. KELLY UNITED STATES DISTRICT JUDGE.

         Plaintiff 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.

         I. Background

         Jerzy 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.

         Sapieyevski 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.

         Sapieyevski 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 concertgoers." Id.

         On 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).

         A few 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").[1]

         II. Legal Standard

         A 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)).

         III. Analysis

         Live 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 ...


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