Steven Jackson v. Lorenzo Samuels, et al.

Summary

The court denied cross-motions for summary judgment in a dispute over ownership of the Softones trademark. The opinion addresses common-law trademark ownership by members of musical groups, including whether Plaintiff Steven Jackson left the group and whether Defendant Lorenzo Samuels acquired superior rights through continued performances and federal registrations. The court held that genuine factual disputes concerning the group’s membership, control, and continuity require a trial.

Holdings

1. In the absence of an agreement providing otherwise, a musical ensemble's trademark rights remain with the ensemble and are enforceable by the individuals currently affiliated with it who control the quality and reputation of the group and participate in performance and business decisions. A member who leaves the group leaves behind the member's common-law rights to the group name.
2. Federal registration alone does not establish ownership or defeat a claim based on a senior, pre-registration common-law trademark right.
3. Neither Jackson nor Samuels was entitled to summary judgment because genuine disputes of material fact existed regarding whether Jackson left the Softones and whether Summerville was still a member authorized to perform as a Softone when Samuels joined.
4. A defendant's publication of advertisements using a trademark can constitute use in commerce sufficient to support a direct Lanham Act trademark-infringement claim.
5. Blue Dolphin was not entitled to summary judgment based on the asserted absence of secondary vendor, contributory, or vicarious liability because Jackson pursued a direct-infringement theory based on Blue Dolphin's own advertisements.

Questions Presented

1. Whether either Jackson or Samuels was entitled to summary judgment on ownership and priority in the Softones common-law trademark.
2. Whether disputed evidence concerning Jackson's alleged departure from the group and Summerville's status in 2009 precluded summary judgment.
3. Whether Blue Dolphin's advertisements using The Softones mark constituted use in commerce sufficient to support a direct trademark-infringement claim.
4. Whether Blue Dolphin was entitled to summary judgment based on the absence of secondary vendor, contributory, or vicarious liability.

Disposition

other