United States District Court, D. Minnesota
R. Fairbairn, Jessica M.A. Thomas, and Andrew R. Swanson,
KINNEY & LANGE, P.A., for plaintiff.
Jonathan L.A. Phillips, SHAY PHILLIPS, LTD., for defendants
Star Music, Inc. and Tracy Brock.
Michael S. Sherrill, SHERRILL LAW OFFICES, PLLC, for
defendants Rich Management, Inc. and Fong's, Inc.
Patrick J. Schiltz United States District Judge
Tracy Brock and Star Music, Inc. (“Star”) stage
karaoke events at bars and other venues, including venues
operated by defendants Rich Management, Inc.
(“Rich”) and Fong's, Inc.
(“Fong”). Plaintiff Phoenix Entertainment
Partners, LLC (“Phoenix”) produces and
distributes karaoke accompaniment tracks under the
“Sound Choice” brand. Phoenix brings claims of
trademark infringement, unfair competition, and deceptive
trade practices under federal and state law arising from
Star's and Brock's alleged use of Sound
Choice-branded karaoke tracks at venues operated by Rich and
matter is before the Court on defendants' motions to
dismiss. For the reasons that follow, the motions are granted
with respect to Phoenix's federal claims, and those
claims are dismissed with prejudice. The Court declines to
exercise supplemental jurisdiction over Phoenix's
state-law claims, and those claims are dismissed without
produces and distributes karaoke tracks under the
“Sound Choice” brand. Compl. ¶ 15. Each track
is a short video that plays background music and that
displays lyrics and cues to the singer. See Compl.
¶¶ 15, 19, 27, 40. Phoenix alleges that Sound
Choice-branded karaoke tracks are “wildly
popular” because they are particularly faithful to the
sound of the original recordings and because they provide
highly accurate singing cues. Compl. ¶¶ 17-19.
owns two registered trademarks-one for SOUND CHOICE and the
other for a graphic displaying a musical staff with the words
“Sound Choice” superimposed in a stylized font.
Compl. ¶¶ 32, 34. Phoenix also owns two registered
service marks-again, one for SOUND CHOICE and the other for
the Sound Choice graphic. Compl. ¶¶ 33, 35. Phoenix
alleges that it is also the owner of distinct and protectable
trade dress, including the use of a particular typeface,
style, and visual arrangement in displaying lyrics, and the
use of a series of vanishing rectangles to indicate entry
cues for singers. Compl. ¶ 40.
has released Sound Choice-branded karaoke tracks only on
physical media-initially cassette tapes, and later compact
discs. Compl. ¶ 20. Nonetheless, digital Sound
Choice-branded karaoke tracks can be downloaded over the
Internet or purchased on hard drives. Compl. ¶ 22.
Phoenix alleges that the process required to enable the
downloading of its tracks or their transfer onto hard drives
involves certain format changes, and that these format
changes degrade the quality of the tracks. Compl.
¶¶ 26-27. When these digital files are played,
Phoenix contends, the Sound Choice marks and trade dress are
displayed in connection with inferior sound and graphics,
thus harming the brand. Compl. ¶ 54.
alleges that Star and Brock use digital copies of
Phoenix's Sound Choice- branded karaoke tracks in their
karaoke shows. Although much of Phoenix's complaint reads
as though the mere existence of these digital copies is
unlawful, Phoenix does not claim that it owns the copyright
to the karaoke tracks. Instead, Phoenix claims that the
display of its marks and trade dress during karaoke
performances violates its trademark rights and constitutes
deceptive trade practices and unfair competition.
Standard of Review .
reviewing a motion to dismiss for failure to state a claim
under Fed.R.Civ.P. 12(b)(6), a court must accept as true all
of the factual allegations in the complaint and draw all
reasonable inferences in the plaintiff's favor. Aten
v. Scottsdale Ins. Co., 511 F.3d 818, 820 (8th Cir.
2008). Although the factual allegations need not be detailed,
they must be sufficient to “raise a right to relief
above the speculative level . . . .” Bell Atl.
Corp. v. ...