United States District Court, D. South Carolina, Charleston Division
C. NORTON UNITED STATES DISTRICT JUDGE
matter is before the court on plaintiff Phoenix Entertainment
Partners, LLC's (“Phoenix”) motion to compel,
ECF No. 24, and on defendant Elliot Ashley Kohn's
(“Kohn”) motions to exclude, ECF No. 25, and for
summary judgment, ECF No. 26. For the reasons set forth
below, the court denies the motion for summary judgment,
denies the motion to compel, and grants the motion to
matter arises from Kohn's allegedly infringing use of
Phoenix's federally registered trademark, “Sound
Choice.” Phoenix is a North Carolina limited liability
company. ECF No. 1 ¶ 7. Planet Follywood is a South
Carolina limited liability company in Folly Beach, South
Carolina. Id. ¶ 8. Kohn is a DJ and entertainer
who provides karaoke-related services at Planet Follywood.
Id. ¶¶ 8-9. Phoenix owns Sound Choice, a
leading brand of karaoke accompaniment tracks. Id.
¶ 18. Over the last thirty years, Phoenix's
predecessor-in-interest, Slep-Tone Entertainment Corporation
(“Slep-Tone”), re-recorded almost 17, 000 Sound
Choice-brand songs to be used for karaoke. Id.
¶ 19. Phoenix also licenses the use of its Sound Choice
brand to commercial karaoke venues. Id. ¶ 20.
According to Phoenix, the popularity of the Sound Choice
karaoke tracks stems from their high quality and accuracy to
the original recording. Id. ¶ 21. Phoenix also
contends that the association of the Sound Choice brand with
an entertainer's karaoke business confers on the
entertainer and venue a perception in the marketplace-and
among karaoke patrons-of legitimacy and professionalism.
Id. ¶ 22.
alleges that Kohn infringed upon Phoenix's rights in the
Sound Choice marks by displaying the identical marks while
hosting his karaoke shows at Planet Follywood-the exact type
of services for which Phoenix's trademark registrations
were issued. Id. ¶¶ 33-35. Phoenix argues
that Kohn could have copied only the communicative content of
the tracks he pirated, but that instead he chose to copy the
Sound Choice marks separately, which demonstrates that he
intentionally added the marks to his pirated tracks in order
to confer additional legitimacy upon his services.
Id. ¶ 34. These karaoke shows are generally the
“principal entertainment focus” of Planet
Follywood, and the misuse of Phoenix's mark financially
benefits the venue and Kohn. Id. ¶¶ 42-44.
Furthermore, Kohn allegedly advertised the availability of
karaoke entertainment services at Planet Follywood. ¶
filed the instant suit on March 17, 2017, bringing the
following causes of action: (1) trademark infringement under
15 U.S.C § 1114(1); (2) unfair competition under 15
U.S.C. § 1125(a); (3) violation of the South Carolina
Unfair Trade Practices Act (“SCUTPA”), SC Code
§§ 39-5-20, et. seq. Id. ¶¶
69-99. Phoenix alleges Kohn used a counterfeit copy of the
Sound Choice marks, without any license or permission from
Phoenix, in connection with the provision of karaoke
entertainment services by repeatedly displaying the mark
during the provision and advertisement of those services.
Id. ¶¶ 70, 80. Phoenix claims that
Kohn's use of the marks is likely to confuse Planet
Follywood's customers into believing that the karaoke
services are provided with Phoenix's authorization.
Id. ¶¶ 7, 73, 81. Phoenix also alleges
that Kohn's activities caused a competitive injury to
Phoenix by denying it revenue from the sale or licensing of
authorized services and depriving it of control over the use
of the Sound Choice marks. Id. ¶¶ 82, 86.
filed a motion to compel on January 11, 2018, ECF No. 24, and
Kohn filed his response on January 25, 2018, ECF No. 29. Kohn
filed a motion to exclude witnesses on January 11, 2018, ECF
No. 25, and Phoenix filed its response on January 25, 2018,
ECF No. 30. Kohn filed a motion for summary judgment on
January 11, 2018, ECF No. 26, and Phoenix filed his response
on January 25, 2018, ECF No. 28. The motions are ripe for the
Motion for Summary Judgment
judgment shall be granted “if the pleadings, the
discovery and disclosure materials on file, and any
affidavits show that there is no genuine dispute as to any
material fact and that the movant is entitled to judgment as
a matter of law.” Fed.R.Civ.P. 56(c). Rule 56(c) of the
Federal Rules of Civil Procedure requires that the district
court enter judgment against a party who, ‘after
adequate time for discovery . . . fails to make a showing
sufficient to establish the existence of an element essential
to that party's case, and on which that party will bear
the burden of proof at trial.'” Stone v.
Liberty Mut. Ins. Co., 105 F.3d 188, 190 (4th Cir. 1997)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986)). “By its very terms, this standard provides
that the mere existence of some alleged factual dispute
between the parties will not defeat an otherwise properly
supported motion for summary judgment; the requirement is
that there be no genuine issue of material fact.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247-48 (1986). “Only disputes over facts that might
affect the outcome of the suit under the governing law will
properly preclude the entry of summary judgment.”
Id. at 248. “[S]ummary judgment will not lie
if the dispute about a material fact is ‘genuine, '
that is, if the evidence is such that a reasonable jury could
return a verdict for the nonmoving party.” Id.
the summary judgment stage the judge's function is not
himself to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for
trial.” Id. at 249. When the party moving for
summary judgment does not bear the ultimate burden of
persuasion at trial, it may discharge its burden by
demonstrating to the court that there is an absence of
evidence to support the non-moving party's case.
Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986).
The non-movant must then “make a showing sufficient to
establish the existence of an element essential to that
party's case, and on which that party will bear the
burden of proof at trial.” Id. at 322.
reasonable inferences are to be drawn in favor of the
nonmoving party. Anderson, 477 U.S. at 255,
Webster v. U.S. Dep't of Agric., 685 F.3d 411,
421 (4th Cir. 2012). However, to defeat summary judgment, the
nonmoving party must rely on more than conclusory
allegations, mere speculation, the building of one inference
upon another, or the mere existence of a scintilla of
evidence. See Anderson, 477 U.S. at 252;
Stone, 105 F.3d at 191. Rather, “a party
opposing a properly supported motion for summary judgment . .
. must ‘set forth specific facts showing that there is
a genuine issue for trial.'” Bouchat, 346
F.3d at 522 (quoting Fed.R.Civ.P. 56(e) (2002) (amended
2010)). If the adverse party fails to provide evidence
establishing that the fact-finder could reasonably decide in
his favor, then summary judgment shall be entered
“regardless of ‘[a]ny proof or evidentiary
requirements imposed by the substantive law.'”
Id. (quoting Anderson, 477 U.S. at 248).
Motions to Compel and to Exclude
Rule of Civil Procedure 26 provides that, unless otherwise
limited by court order, “[p]arties may obtain discovery
regarding any non-privileged matter that is relevant to any
party's claim or defense and proportional to the needs of
the case, considering the importance of the issues at stake
in the action, the amount in controversy, the parties'
relative access to relevant information, the parties'
resources, the importance of the discovery in resolving the
issues, and whether the burden of expense of the proposed
discovery outweighs its likely benefit.” Fed.R.Civ.P.
26(b)(1) (note that the 2015 Amendments omit the phrase
“reasonably calculated to lead to the discovery of
admissible evidence”). Notably, “[i]nformation
within this scope of discovery need not be admissible in
evidence to be discoverable.” Id. If a party
declines to answer an interrogatory or request for
production, the serving party “may move for an order
compelling an answer, designation, production, or
inspection.” Fed.R.Civ.P. 37(a)(3)(B). An evasive or
incomplete disclosure, answer, or response, “must be
treated as a failure to disclose, answer or respond.”
court may, for good cause, issue an order to protect a party
or person from annoyance, embarrassment, oppression, or undue
burden or expense.” Fed.R.Civ.P. 26(c)(1). “The
scope and conduct of discovery are within the sound
discretion of the district court.” Columbus-Am.
Discovery Grp. v. Atl. Mut. Ins. Co., 56 F.3d 556, 568
n.16 (4th Cir. 1995) (citing Erdmann v. Preferred
Research, Inc. of Georgia, 852 F.2d 788, 792 (4th Cir.
Motion for Summary Judgment
moves for court to grant summary judgment on Phoenix's
federal trademark infringement and unfair competition claims.
ECF No. 26 at 1-7. Kohn then argues that, after granting
summary judgment on those claims, the court should dismiss or
decline to exercise supplemental jurisdiction over
Phoenix's SCUTPA claim. Id. at 8.
has brought claims for trademark infringement under 15 U.S.C.
§ 1114 and for unfair competition under 15 U.S.C. §
1125(a). To succeed on an action for trademark infringement
under §1114, a plaintiff must prove:
(1) that it owns a valid mark; (2) that the defendant used
the mark “in commerce” and without
plaintiff's authorization; (3) that the defendant used
the mark (or an imitation of it) “in connection with
the sale, offering for sale, distribution, or
advertising” of goods or services; and (4) ...