IP Law Daily, TRADEMARK—D. Ariz.: Ongoing dispute over use of ‘Sister Sledge’ musical group trademark continues, (Mar 29, 2023)

By Thomas K. Lauletta, J.D.

The plaintiffs’ federal and state claims for trademark infringement and unfair competition were dismissed; the defendants’ counterclaims were granted or held over for trial.

The U.S. District Court in Phoenix, Arizona denied a request for summary judgment by one member of the signing group Sister Sledge against another group member for violation of federal and state trademark infringement and for injunctive relief. The court granted the defendants’ counterclaim to declare plaintiff Lightfoot’s 2017 trademark registration invalid and held over for trial the defendants’ counterclaims for breach of fiduciary duty, unjust enrichment, and fraudulent trademark registration (Lightfoot v. DeBruine, March 28, 2023, Humetewa, D.).

The founding members of the popular music group “Sister Sledge,” who are all family, disagree on the ownership and use of the “Sister Sledge” trademark. Plaintiff Lightfoot, Defendant DeBruine, Defendant Kim Allen Sledge (“Ms. Sledge”), and nonparty Joan Sledge are all sisters. In 1971, the four sisters formed the music group known as Sister Sledge (the “Group”). The Group is known for their iconic hits such as “We Are Family,” which was released in 1979. In 1989, Lightfoot pursued a solo career while continuing to perform with the Group.

In 2006, the Group and the sisters’ mother formed Sister Sledge LLC (the Company). Each sister held a quarter interest in the Company as a member and manager. The Company was formed to manage the interests in the Trademark as well as the Group’s affairs. In 2009, the Company obtained a federal registration for the Sister Sledge Trademark, Registration No. 37,77,936 (the “2009 Trademark Registration”).

In 2013, the Company sued Lightfoot for infringing on the Trademark because she used it to advertise her solo performances and her music group “Sister Sledge Sledgendary.” The Company and Lightfoot thereafter reached a “Settlement Agreement” where Lightfoot agreed not to use the Trademark except as a “factually descriptive term.” Thereafter, Lightfoot continued with her solo performances in compliance with the Settlement Agreement while also performing with the Group under the Trademark. Following an inadvertent lapse of the trademark following the death of nonparty Joan Sledge, Lightfoot obtained the federal registration for “Sister Sledge,” registration No 5,373,639 (the 2017 Trademark Registration).

In 2018, plaintiff Lightfoot performed shows in the United States under the Trademark, which Defendant DeBruine argued violated the prior Settlement Agreement. Thereafter, the plaintiffs claim that DeBruine has continuously used the Trademark to promote her performing group Sister Sledge Sledgendary on the Company’s social media “without the approval of the Company.” The plaintiffs argued that Sister Sledge Slegendary falsely advertises itself as Sister Sledge because its members included DeBruine, her children, and a male performer. Thereafter, the court earlier rejected cross motions for summary judgment brought by the present plaintiffs and defendants.

The present lawsuit. The Company and Lightfoot filed suit against DeBruine for the following claims: (1) federal trademark infringement under 15 U.S.C. § 1114; (2) federal unfair competition under 15 U.S.C. § 1125(a); (3) Arizona state unfair competition; and (4) Arizona state unjust enrichment. The plaintiffs also seek (5) a judgment declaring that the Company is the rightful owner of Sister Sledge website and social media accounts under 28 U.S.C. § 2201 and (6) injunctive relief against DeBruine under 15 U.S.C. § 1116. In response, DeBruine brought counterclaims against Lightfoot: (1) breach of fiduciary duty to the Company; (2) unjust enrichment; and (3) fraudulent trademark registration. DeBruine brought the first two counterclaims as derivative claims on the Company’s behalf. DeBruine also seeks (4) a judgment invalidating Lightfoot’s 2017 Trademark Registration under 15 U.S.C § 1119.

Federal and state infringement and unfair competition. The plaintiffs alleged that the defendants violated both the Lanham Act, and federal and state prohibitions against federal and state unfair competition. Because of the similarity of the federal and state trademark and unfair competition statues, the court analyzed these federal and state provisions together.

Ownership of trademark. The court noted that the first element of a trademark infringement claim requires the plaintiff to show ownership of the Sister Sledge trademark. Defendant DeBruine argued that Lightfoot is not the exclusive owner of the Trademark because it collectively belongs to the Group and the Company. The defendant further stated that even if Lightfoot’s Registration is valid, it cannot “wipe out” each of the sisters’ rights, including her right, to the Trademark as prior users. (Docs. 93 at 11; 99 at 9). As discussed below, the Court agrees that the Group and Company hold joint ownership rights to the Trademark at common law notwithstanding Lightfoot’s 2017 Registration.

Ownership by registration—The court concluded that Lightfoot’s 2017 registration constituted prima facie evidence that she is the owner of the Trademark. The court also held that the 2020 Trademark License Agreement also gave the Company the right to use the Trademark.

Ownership by prior use—Although Lightfoot has a presumption of ownership by her 2017 registration, this registration would not keep prior users from using the trademark. Here, the court held that both the Company and the Group were prior users of the Trademark. Evidence presented led the court to hold that the Group and the Company, including the defendant as a surviving member of the group, were prior users of the trademark. Therefore, Lightfoot was not the sole owner of the Trademark and her 2017 Registration was invalid.

Ownership by joint users—Citing cases involving disputes among music group members, the court concluded that both the plaintiff and the defendant hold joint ownership rights to the Trademark because they are both members of the Group. Accordingly, both Lightfoot and the Company have proven they had ownership rights in the Trademark despite the fact that Lightfoot’s 2017 registration was invalid.

Unauthorized use. The second element of proving trademark infringement required the plaintiff to show that the defendant engaged in unauthorized use of the Trademark that is likely to cause confusion. The court noted that as a current member of the Group, defendant DeBruine retained the right to use the Trademark.

Infringement claims among co-owners—Citing decisions from district courts in several states, the court held that the plaintiffs could not sustain trademark infringement or unfair competition claims against DeBruine because as a Group member she had the right use the Trademark. The only other question to decide was the scope of DeBruine’s use of the Trademark.

Scope of authorized use—Considering whether DeBruine’s use of the Trademark exceeded her rights as a member of the Company, the court noted that the May 2019 Resolution authorized each Company member, including the plaintiff and the defendant, to use the Trademark free from restriction. This resolution dissolved “any purported restrictions” on DeBruine’s use of the Sister Sledge brand or Trademark “in any promotion or advertisement in connection with live performances.” Accordingly, the court granted the defendant summary judgment against the plaintiff’s claims for trademark infringement and unfair competition.

Injunctive relief—The court denied the plaintiffs’ request for an injunction as moot, to the extent that this request was based on their meritless trademark and unfair competition claims.

Cancelation of Lightfoot’s trademark registration. Based on its conclusions that Lightfoot was not the sole owner of the Trademark when she registered it, the court granted DeBruine’s motion for summary judgment to cancel Lightfoot’s 2017 trademark registration.

DeBruine’s substantive counterclaims. The plaintiffs sought summary judgment against DeBruine’s remaining counterclaims for breach of fiduciary duty to the Company, unjust enrichment, and fraudulent trademark registration. In denying the plaintiffs’ request for summary judgment the court stated that the plaintiffs did not cite to anything in the record to show that there was a dispute of material fact regarding any of DeBruine’s counterclaims, or cite any legal support why they were entitled to the judgment requested.

In light of the court’s holdings on the plaintiff’s and the defendant’s claims and counterclaims, the following claims are to be resolved at trial: (1) the plaintiffs’ claims for unjust enrichment and declaratory judgment; and (2) defendant Debruine’s counterclaims for breach of fiduciary duty, unjust enrichment, and fraudulent trademark registration.

The Case is No. 2:20-cv-00666-DJH.

Attorneys: Gerard F. Dunne (Law Office of Gerard F. Dunne, P.C.) for Kathy Sledge Lightfoot and Sister Sledge LLC. Alexander James Egbert (Steptoe & Johnson, LLP) for Debra Debruine.

Companies: Sister Sledge LLC

Cases: Trademark ArizonaNews