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Phoenix Entertainment Partners, LLC v. Dr. Fofo LLC

United States District Court, D. South Carolina, Charleston Division

February 16, 2018

DR. FOFO LLC d/b/a Planet Follywood, and ELLIOT ASHLEY KOHN d/b/a DJ E Defendants.



         This 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 exclude.

         I. BACKGROUND

         This 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[1] 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.

         Phoenix 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. ¶ 30.

         Phoenix 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.

         Phoenix 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 court's review.

         II. STANDARD

         A. Motion for Summary Judgment

         Summary 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.

         “[A]t 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.

         Any 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).

         B. Motions to Compel and to Exclude

         Federal 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.” Fed.R.Civ.P. 37(a)(4).

         “The 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. 1988)).


         A. Motion for Summary Judgment

         Kohn 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.

         Phoenix 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) ...

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