IP Law Daily, TRADEMARK—M.D. Tenn.: Owner of NEWSBOYS mark failed to allege source confusion in claims against Warner Bros. and “New Boyz”, (Jul 12, 2013)

By Mark Engstrom, J.D.

Wesley Campbell, sole owner of the trade name for the contemporary Christian music group Newsboys, could not pursue trademark infringement claims against Warner Bros. Records, Warner Music International, and the hip-hop group New Boyz and its members because Campbell’s allegations of consumer confusion between “Newsboys” and “New Boyz” did not contain any assertions of confusion about the source of each band’s music, the federal district court in Nashville has ruled (Newsboys, Inc. v. Warner Bros. Records Inc., July 10, 2013, Haynes, W.). Campbell’s trademark infringement claims were dismissed, as were his claims of trademark dilution. In addition, Newsboys Inc. lacked standing to pursue any trademark claims against the defendants because Campbell was the sole owner of the Newsboys trade name.

Although Campbell alleged that Newsboys was known as a “cross-over” band to the secular music industry, the NEWSBOYS mark was limited to use with “live musical performances of a religious nature rendered by a group.” Campbell alleged that consumers were likely to believe that the hip-hop group New Boyz was “in some way connected with, sponsored or licensed by or otherwise related to Plaintiff,” but that allegation was conclusory and was not entitled to a presumption of truth.

The exhibits attached to Campbell’s amended complaint showed that three consumers had sent letters about New Boyz to the mailing address of Newsboys, but those consumers “did not express any confusion about the music of the two bands as affiliated.” The court noted that the type of confusion alleged by Campbell did not relate to the source of the goods and thus was insufficient to state a claim under the Lanham Act. Because (1) the source of each group’s music “seem[ed] to be clearly identifiable” and (2) Campbell failed to allege any facts regarding source confusion, the court concluded that Campbell failed to state a plausible claim of federal trademark infringement. Further, the court’s rationale applied with equal force to Campbell’s state trademark claims. Accordingly, Campbell’s state and federal infringement claims were dismissed.

As to trademark dilution, the court cited the U.S. Supreme Court, which found that “where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution … [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner,” which was a statutory requirement for dilution.

In Campbell’s case, Campbell failed to allege facts that tended to show “a reduced capacity of consumers to identify music marketed by the Newsboys or any likelihood of confusion in the market for the association of the Newsboys and New Boyz marks by its customers.” Campbell’s trademark dilution claim was therefore dismissed.

The case is No. 3:12-cv-0678.

Attorneys: Shawn P. Sirgo (Sirgo & Associates, PC) for Wesley Campbell. Chris L. Vlahos (Riley, Warnock & Jacobson) for Warner Bros. Records Inc.

Companies: Newsboys, Inc.; Warner Bros. Records Inc.; Warner Music International; New Boyz

Cases: Trademark TennesseeNews