Volume MMVI • Number 2 • April-June 2006 - Nashville Musicians ...

April-June 2006 The Nashville Musician 7
TRADEMARK INJUNCTION FAILS
Plaintiff Unuson Corp. filed a lawsuit in
California federal court seeking to prevent defendant
Built Entertainment Group, Inc. from
using the phrase "The US Festival" (the
"mark") in connection with concert events that
defendant allegedly planned to organize.
Plaintiff was formed in the early 1980s to
organize and promote two large-scale concerts
and technology expositions, both of which
were titled "The US Festival." The events took
place in 1982 and 1983; both featured performances
by a number of famous bands over a
multi-day period. The concerts were broadcast
nationally on MTV. In addition to the concerts,
both events included expositions at which various
high technology companies displayed their
products.
According to plaintiff, the two events
played a significant role in the development
of modern electronic music.
Subsequent to the 1982 and 1983 concerts,
plaintiff continued to make at least sporadic
use of the mark, as follows:
1) At the 1982 and 1983 festivals, plaintiff
sold memorabilia bearing the "The US Festival"
mark, such as T-shirts and spritzer
bottles, to concertgoers. Since 1983, plaintiff
had provided leftover memorabilia from the
concerts to replace original items that had worn
out, but had not manufactured any new memorabilia.
2) Plaintiff produced a series of movies
On the Jazz &
Blues Beat . . .
By ROBERT
AUSTIN
BEALMEAR
Before we get started, I have to acknowledge
a mistake in last quarter's column. I broke
the number one rule of journalism by not fully
researching a situation before I editorialized
about it. My intentions were good: to see if
the jazz audience cared about schedule conflicts
that limit the potential audience when
major artists come to town. I ended up implying
that the directors of jazz school programs
were irresponsible, when in fact two had made
an effort this year to avoid the conflict in question.
The directors themselves got caught in a
bureaucratic situation and had to make the best
of it, an example of how difficult it is for these
dedicated people to support students, artists,
audience, and the institutions for which they
work, all at the same time. My apologies to
Don Aliquo at MTSU and Lori Mechem at
Nashville Jazz Workshop, and I hope all of
the April 8 events were successful.
April was Jazz Appreciation Month, as
designated by the Smithsonian Institution to
celebrate America’s premier original art form.
I hope you all attend the many jazz events that
occur here in April.
Summer festival season is upon us, so let's
dig in. First up is the Main Street Festival in
Franklin, April 29-30. The popular music,
crafts, and food fair has good jazz and blues,
thanks to Music Director Scott Ducaj. Featured
acts are announced via their website
www.historicfranklin.com
This year, the Main Street JAZZFEST in
Murfreesboro is May 5-6. Top high school and
college bands will appear on the main stage
Friday night, and on the new Civic Plaza stage
during the day, Saturday: Main stage jazz starts
at 11a.m. and includes Annie Sellick, Rahsaan
Barber & Trio Soul, Roger Humphries &
MTSU All-Stars (Don Aliquo, etc.), and U.S.
Army Ground Forces Jazz Band; headlining
at 7:30 p.m. (and hosting a 3:30 p.m. clinic at
the Center for the Arts) will be a legend of
jazz saxophone, Phil Woods & His Quintet.
For details, go to
www.downtownmurfreesboro.com
"Jazz on the Lawn" at Beachaven Winery,
south of Clarksville, begins May 14 with Cajun
style blues. The outdoor concerts are about
LEGAL TIPS
By
Marshall M. Snyder
Attorney - at - Law
about the festival, which it licensed to domestic
and foreign television stations during the
mid-1980s.
3) Plaintiff licensed the mark in 1991 and
1992 for use with audio and video recordings
of two of the bands that performed at the festivals.
4) Plaintiff had included information about
the festivals on the website www.woz.com since
1996. Specifically, the website had included
images of the concerts, a collection of links to
other websites about The US Festival, and an
interactive section containing a section for
posting messages relating to the concerts.
5) Plaintiff also claimed to have engaged
in planning for anniversary concerts. As part
of this planning, plaintiff had entered into license
agreements with two event planning organizations.
6) Plaintiff had successfully registered the
every other Saturday evening, May 27, June
17, July 1, etc. For information on the series,
go to www.beachavenwinery.com The DUSK
series at Monthaven in Hendersonville begins
June 18 and continues the third Sunday of every
month. For details, go to
www.hendersonvillearts.org
"Art & Soul" April 22 is a combination of
live jazz and fine art at the Madison Art Center,
403 Gallatin Road at 7 p.m. Details at
www.madison-art-center.com The Holy Trinity
Episcopal Church (Sixth Avenue South)
offers jazz concerts on April 23 (Abbie Burke),
May 28 (Diane Marino), and June 25 (Jim
Ferguson). "Jazz in Cookeville" is a day-long
festival in Dogwood Park Amphitheatre. This
year's June 17 event will feature a wide variety,
with Jerry Tachoir and more. Go to
www.jazzincookeville.com
Due to budget cuts and other restraints,
summer concerts in Metro parks will have less
jazz and blues, although still sponsored by the
Music Performance Fund. Big Band Dances
in Centennial Park, beginning June 3, with different
bands each Saturday night, 7-11p.m. The
Friday evening series at Red Caboose Park in
Bellevue begins July 7, 7-9 p.m. For a schedule
of all park concerts, go to
www.nashville.gov/parks
Now sponsored by Cumberland University,
the Watertown Jazz Festival will be July 8.
Artists line-up can be found at
www.watertownjazz.com The Nashville Jazz
Workshop continues its "Snap on 2 & 4," "Master
Series" and student concerts in their Jazz
Cave at 1312 Adams St. Details on events and
evening classes at www.nashvillejazz.org
Veteran pianist Pat Coil hosts a Sunday
night series of free jazz at the Blue Bar in midtown
Nashville. Every week a different combination
of Music City's finest jazz musicians
join Pat to play his wonderful arrangements.
A new Sunday jazz brunch, featuring "Count
Pacie" led by Ralph Pace, Jr., began in March
at Fulin, a cool Asian restaurant in the new
Target center at Old Hickory and Franklin Park.
Every Sunday 4:30-7:30, Café Coco in Elliston
Square hosts a jazz jam; everyone’s welcome,
drum kit and piano provided.
On the blues scene, Music City Blues Society
will hold its annual "Legends of Blues"
one-day festival in Centennial Park on Memorial
Day, May 29, 2 p.m. – 7:30 p.m. Details at
www.musiccityblues.org This year's Jefferson
Street Jazz & Blues Festival will be June 17,
with artists TBA. For details, go to
www.jumptojefferson.com
For blues jams, check out The Five Spot
in East Nashville every Sunday 4-8 p.m.,
Sputnik's Grill in Hendersonville, Thursdays,
9 p.m. - 1a.m., The Lady Godiva Pub in Lebanon,
Thursdays, 8 p.m.-midnight, and
mark "The US Festival" on the principal register
in 1984. In 1990, the mark was canceled
as a result of failure to file the periodic declarations
which are required to maintain a federally
registered trademark.
Defendant's Use of the Mark
Defendant was formed in 2003 as an "artist
management and event production company."
In 2004, defendant desired to create a
musical event with a core name of "US" because
it would be a celebration of life through
music. Defendant came up with the name
"US" because it was strong and significant and
had patriotic overtones.
Defendant filed an application to register
the trademark "The US Festival" with the
Patent and Trademark Office on May 21, 2004.
This application was a so-called "intent-touse"
application, based on an alleged bona fide
plan to use the mark in commerce.
Prior to filing the application, defendant
became aware of plaintiff's use of "The US
Festival" and prior registration, but concluded
that the prior mark was no longer in use based
on the 1990 cancellation and minimal subsequent
use.
Plaintiff learned about defendant's plan to
use the mark in the spring of 2004 and demanded
that defendant abandon its attempt to
register and use the mark. Defendant refused,
and plaintiff filed the instant lawsuit claiming
that defendant was infringing and diluting its
trademark. Plaintiff sought an injunction de-
Brewster's Eastgate Grille on I-40, exit 232-
B, Thursdays, 7 p.m. The Tuesday Gibson
Showcase jam resumes May 9 at Opry Mills.
And Bourbon Street in Printer's Alley hosts a
Sunday Swamp Stomp with special guest artists
each Sunday at 9 p.m.
Radio-wise, WMOT-FM Jazz89 contiues
its spring fund-raiser and membership drive
in April. I hope you all made a pledge, and
told them how you appreciate their new stronger
signal. A new show, "Jazz at the Workshop,"
Sundays at 4 p.m., features great performances
from the concert series at the Nashville
Jazz Workshop, produced by the NJW.
Artists can promote their gigs by listing them
at www.wmot.org At smooth jazz WFSK-FM
88.1, Sipho Dumasane conducts Latin Jazz on
Wednesdays 7-9 p.m., and music critic Ron
Wynn hosts "Freestyle," an interesting panel
show discussing a wide range of current issues,
Mondays at 6 p.m. Other smooth jazz
happenings can be found at www.jazzville.com
Locally produced "JAZZ On The Side" is
now nationally syndicated, broadcast in Minneapolis,
Memphis, Las Vegas, Rochester
(N.Y.), San Francisco and Carmel (Calif., remember
“Play Misty for Me”?). It airs here
Sundays at noon. Watch for a special two-part
holiday series featuring rare V-Discs, recorded
exclusively for the Armed Forces in World
War II by swing greats like Benny Goodman,
Nat (King) Cole, Tommy Dorsey, etc. Part One
(for Memorial Day) airs on May 28. Part Two
(for Independence Day) airs July 2. Details
and links where you can also listen on-line
are at www.jazzontheside.com
The number of new local jazz CDs coming
across our desk has slowed considerably.
Check out “Journey Home” on Summit
Records by pianist and former MTSU Jazz
Director Dana Landry, recorded at MTSU with
Don Aliquo on sax, and vibraphone legend
Gary Burton. Great modern jazz originals, plus
Cole Porter's "All of You." Vocalist Karen
Johns offers eight of her own songs and two
standards, including the rarely heard "All
About Ronnie" on Lucky Day (Ptarmigan
Music), with horn work by Jim Hoke and Neil
Rosengarden.
Sadly, a few more jazz and blues legends
have passed on. In late 2005: Vocalist Shirley
Horn, whose soulful meditative style was
unique among jazz singers, at age 71; guitarist
Al Casey, many years with Fats Waller, and
other swing and bop greats, at 89; bassist Jack
Lesberg, longtime sideman with Willie "The
Lion" Smith, Billie Holiday, Louie Armstrong,
and the Tonight Show band, at 85; and Derek
Bailey, early avant-garde and free jazz guitarist,
at 75.
So far this year, we've lost Bob Weinstock,
nying defendant’s use of the mark.
Plaintiff claims that it had maintained its
rights in the mark through the distribution of
memorabilia and the licensing of audio and
video content from festivals during the past.
Defendant pointed to plaintiff's very sparse
commercial activity during the 21-year period
between the second US Festival in 1983 and
defendant's application to use the mark in
2004, in support of its argument that plaintiff
had abandoned the mark.
As noted by the Court, Plaintiff's use of
the mark had indeed been very limited during
the late 1980s and early 1990s. Between the
mid-1980s and 1991, plaintiff's only use of the
mark was the distribution of leftover concert
memorabilia to fans. More recently, plaintiff
had maintained a website offering pictures for
download and a forum for attendees of the concerts
to share their memories, and had licensed
use of the mark for at least one set of commercial
products — the Triumph audio and
video recordings.
As noted by the Court, none of the alleged
activities demonstrated a use of the mark in
"the ordinary course of trade." The distribution
of memorabilia associated with the concerts,
the exchange of "memories" by
concertgoers, and the labeling of audio and
video recordings with the name of the concert
at which they originated all fell into the category
of nostalgia and retrospection, rather
than present active use of the mark in commerce.
Nor had plaintiff created a new festival
program, bumper sticker, or poster during the
same period, as there had been no festivals
during that period.
As noted by the Court, Plaintiff’s evidence
to resume use of the mark appeared to lie only
in concert-related memorabilia rather than in
the market for concerts themselves. Far from
being famous, plaintiff's mark survived only
in the murky backwaters of the internet and
the dark corridors of Amazon.com's warehouses.
For these reasons, the Court denied
plaintiff’s motion seeking to enjoin
defendant’s use of the mark, while reserving
for a later date in the court proceedings the
question as to whether trademark infringement
or dilution had actually occurred.
(Marshall M. Snyder is a Music Row attorney
who can be contacted at 615-742-0833 or by e-mail
at marshall.snyder@earthtlink.net)
. . . Jazz & Blues column
producer and founder of one of the great classic
modern jazz labels, Prestige, at 77; Lou
Rawls, distinctive pop singer who combined
jazz, R&B and soul for a unique sound, at 72;
Louanne Hogan, big band singer who doubled
vocals for many film stars in the 1940s and
’50s, at 86; Latin jazz legend Ray Barretto,
who pioneered the use of Afro-Cuban percussion
in modern jazz, at 76; Sherman Ferguson,
drummer with Kenny Burrell and many others,
at 61.
Support your artists while they're here . . .
See you out there!
Anita Kerr’s among honorees
(Continued from page 6)
of the Grammy-winning Anita Kerr Singers);
Peggy Motley (WSM Radio-TV/Opryland
Productions/Nashville Network Radio/CDX);
Nancy Riley (Acuff Rose/Opryland Music
Group); Carolyn Sells (Marty Robbins Enterprises/Combine
Music/Beckham Enterprises/
Excelsior Music/Warner-Chappell Music);
and Cora Lee “Corky” Wilson (Sure-Fire
Music/Wil-Helm Agency/Glaser Brothers/
Decca-MCA Records).
“We are thrilled at the growth of the
SOURCE Foundation Awards over the past
four years,” said Kay Smith, vice president of
A&R Administration at Sony BMG Records,
and chairman of the Foundation Awards Committee.
Reservations for seats for the event will
be taken beginning in July. For details regarding
the event, contact Judi Turner at
turnerco@bellsouth.net or telephone: (615)
356-9115.
For information on sponsorship opportunities,
contact Karen Conrad at BMG Publishing,
telephone: (615) 687-5800.