Trademark Co-owners Cannot Sue Each Other under the Lanham Act: E.D. Pa. | Practical Law

Trademark Co-owners Cannot Sue Each Other under the Lanham Act: E.D. Pa. | Practical Law

In Piccari v. GTLO Productions, LLC, the US District Court for the Eastern District of Pennsylvania, in a matter of first impression in the Third Circuit, found that co-members of a band who jointly owned a trademark for the band's name could not sue other co-owners for trademark infringement.

Trademark Co-owners Cannot Sue Each Other under the Lanham Act: E.D. Pa.

Practical Law Legal Update 2-616-7894 (Approx. 3 pages)

Trademark Co-owners Cannot Sue Each Other under the Lanham Act: E.D. Pa.

by Practical Law Intellectual Property & Technology
Published on 29 Jun 2015 • USA (National/Federal)
In Piccari v. GTLO Productions, LLC, the US District Court for the Eastern District of Pennsylvania, in a matter of first impression in the Third Circuit, found that co-members of a band who jointly owned a trademark for the band's name could not sue other co-owners for trademark infringement.
On June 24, 2015, the US District Court for the Eastern District of Pennsylvania in Piccari v. GTLO Productions, LLC granted the defendant band members' motion to dismiss the allegedly ousted band members' Lanham Act trademark infringement claim and related state contract claims (No. 14-06701, (E.D. Pa. June 24, 2015)). Notably, the court dealt with an issue of first impression in the Third Circuit and interpreted the Lanham Act to not allow joint owners of a mark to sue each other for trademark infringement.
The parties were members of a band named, "Get the Led Out," a tribute band that played Led Zeppelin music. The plaintiffs, Paul Piccari and Frank Kielb (through FKE, Inc.) (collectively Plaintiffs), co-owned the trade name, trade dress and trademark GET THE LED OUT. The defendants, Paul Hammond and Paul Fariello (collectively Defendants), were also band members. In 2003, the parties orally agreed to the amount of proprietary interest, gross revenue, and gross profit that Piccari and FKE, Inc. would receive. In 2011, the Defendants forced Piccari out of the band and unilaterally terminated FKE and Kielb. Since they were ousted, the Plaintiffs did not receive, and the Defendants refused to make, any payments based on Plaintiffs' interests in the band.
The Plaintiffs alleged various contract claims and Lanham Act violations against the Defendants in the Eastern District of Pennsylvania. The Defendants moved to dismiss the complaint on multiple grounds, including that Plaintiffs could not allege trademark infringement against co-owners of the mark under the Lanham Act.
Noting that it was unaware of any cases in the Third Circuit that have considered the issue of whether an owner may state a trademark infringement claim against a co-owner, the district court found that:
  • The Lanham Act distinguishes between a trademark "owner" and an "infringer."
  • The purpose of the Lanham Act is to protect trademark owners and the public from the likelihood of confusion that would arise if an infringer used the same or similar mark. Because co-owners would naturally be associated with the same source of the goods or services in question:
    • use of the mark by a co-owner cannot result in customer confusion; and
    • a co-owner with an equal right to use the trademark cannot be an infringer under the Lanham Act.
  • Following the logic of the US District Court for the Eastern District of Michigan, an action for trademark infringement by a co-owner is in fact an action for accounting under state contract law (Derminer v. Kramer, 406 F. Supp. 2d 756, 758 (E.D. Mich. 2005)).
Accordingly, the court granted Defendants' motion to dismiss.