Klarquist Wins First Time Dismissal of Trademark Action in Pro Bono Case

Published August 3, 2014

Slep-Tone Entertainment sued Canton Phoenix (a Chinese restaurant and bar in Tigard, Oregon) for trademark infringement. Slep-Tone alleged that Canton Phoenix possessed unauthorized copies of karaoke tracks that were originally engineered and produced by Slep-Tone. Slep-Tone alleged that the public performance of these karaoke tracks in karaoke shows (in which Slep-Tone’s trademark was briefly displayed in the video before and after the lyric cues) created confusion in the viewing public as to whether the karaoke tracks were authorized copies. This case is one of more than 150 such cases filed nationwide by Slep-Tone since 2010.

Canton Phoenix moved to dismiss for failure to state a claim on the grounds that Slep-Tone’s only articulated injury sounded in copyright law and that trademark law could not be extended to cover copyright injuries under the Supreme Court’s decision Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). The Court granted the motion and dismissed Slep-Tone’s federal trademark claims with prejudice. This case is first to find that the legal theory underlying Slep-Tone’s ongoing nationwide litigation campaign was without merit. Canton Phoenix was represented by Stephen J. Joncus of Klarquist on a pro bono basis.