9th Circuit rejects Slep-Tone's anti-copying claim couched as TM claim

Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, No. 14-17229 (9th Cir. Jan. 18, 2017) (per curiam)

Slep-Tone makes karaoke music tracks under the trademark “Sound Choice.” They’re released on CDs in a format known as “CD-G,” which accompanies karaoke music with graphics, lyrics, and singing cues when played on compatible equipment.  Karaoke operators may prefer ripped files for convenience; Slep-Tone now allows one digital copy per source CD-G subject to various conditions.  It alleged that defendants performed shows using unauthorized media-shifted files, and that this infringed its trademark rights.  The district court concluded that “[t]his attempt to stuff copyright claims into a trademark container fails.” 

The court of appeals affirmed: “[w]hether we call the violation infringement, unfair competition or false designation of origin, the test is identical—is there a ‘likelihood of confusion?’” And there was not.

Slep-Tone argued that, because the ripped files showed its marks and trade dress when performed, consumers would be confused into thinking that the tracks originated with Slep-Tone, rather than with defendants.  But that theory didn’t identify “consumer confusion about the source of an appropriate ‘good,’” only possible confusion over the source of content. Dastar says “origin” has to mean tangible goods offered for sale.  And, though Dastar was about §43(a), the same standard applies to §32.  Slep-Tone identified the new digital files created by ripping as the relevant tangible goods.  But those “new goods” weren’t relevant goods.  The “good” at issue must be the “ ‘tangible product sold in the marketplace’ rather than the creative content of that product.” Phx. Entm’t Partners v. Rumsey, 829 F.3d 817, 828 (7th Cir. 2016) (quoting Dastar, 539 U.S. at 31).

There wouldn’t be confusion about the source of the tangible good sold in the marketplace, because “[c]onsumers are not aware of the new, media-shifted digital files about which Plaintiff asserts confusion.”  Any confusion isn’t about the source of the goods.  There’s no use of the Sound Choice marks “in connection with the sale, offering for sale, distribution, or advertising” of the files under 15 U.S.C. § 1114(1)(a) or “in connection with” the files under § 1125(a)(1).

[Query whether this result is consistent with the Second Circuit’s recent pronouncement that confusion over sponsorship or affiliation must also be considered before rejecting a confusion theory.]

This is really a case about unauthorized copying, and Dastar cautions against creating a “species of mutant copyright law” under the Lanham Act.  Slep-Tone was really complaining about allegedly unauthorized use of the content of the karaoke tracks, and Dastar bars such claims.  “The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers.” Hey, it’s materiality!  Hi, materiality!