Trademark Infringement Case involving Elvis Presley's likeness and estate. Cases of Interest >  IP >  Trademark

Elvis Presley Enterprises, Inc v Barry Capese

Jordan Herrick

Elvis Presley Enterprises, Inc. v. Barry Capese, 131 F.3d 188 (5th Cir. 1998)

Facts: π is the assignee and registrant of all trademarks, copyrights, and publicity rights belonging to the Elvis Presley estate. In 1991, Δ opened a Houston, Texas, nightclub called “The Velvet Elvis.” Δ filed a federal service mark application with the PTO and in 1992 the service mark was published in the Official Gazette of the United States Patent and Trademark Office. Π was aware of the publication, but did not file an opposition. Thus, Δ was issued the mark for use of “The Velvet Elvis.” The nightclub closed in 1993, but Δ desired to open it at a new location. Π contacted Δ and threatened legal action if he opened a bar with “Elvis” in the title. In August 1994, the new Velvet Elvis opened at a different location. There are many different references to Elvis in the bar, ranging from photos, posters, paintings, menu items punning his songs, and many other likenesses.

Procedural History: In April 1995, π filed suit against Δ alleging federal and common-law unfair competition and trademark infringement, federal trademark dilution, and violation of state law rights of publicity in Elvis’s name and likeness. Π sought injunctive relief and attorney’s fees and costs. Π also sought an order for the Patent office to cancel Δ registration of “The Velvet Elvis.” The district court ruled for π on its claims of infringement and unfair competition related to Δ advertising, but not to the use of the service mark. Π appealed the portion of the district court’s judgment that denied relief on its trademark infringement claims (Note: the π appealed the dilution claim and the right to publicity claim as well, but the case book that I am reading this from only focuses on the trademark infringement claim).

Issue: Did Δ use of its mark “The Velvet Elvis” infringe on π trademark and previous rights and uses of anything associated with Elvis Presley?

Rule: The court needed to see if the use of Δ mark created a likelihood of confusion that it is related to π mark. If there is a likelihood of confusion, then there is trademark infringement under the Lanham Act. The court looked to see if there was a likelihood of confusion by using five digits of confusion: (1) the marks themselves are similar; (2) similarity of the products or services; (3) the intent of the Δ; (4) evidence of actual confusion; (5) whether it was being used as a parody. If these digits weigh against Δ, then there is infringement, if not, then π does not get relief.

Holding: Yes. After weighing the digits, the court concluded that they weighed in favor of likelihood of confusion and that Δ infringed on π mark.

Reasoning: The court first looked to see if the marks were themselves similar. The question the court had to ask was whether under the circumstances of the use, the marks are sufficiently similar that prospective purchasers are likely to believe that the two users are associated. The court found that the Δ used Elvis’s pictures, likeness, and other characteristics throughout the restaurant and their advertisement, so it shows that the connotation of the marks are similar, thus weighing in favor of likelihood of confusion. Next the court looked to see if there was a similarity in the products or services. The court needed to see whether the products of Δ and π were similar enough to cause confusion as to the source and whether Δ bar is in a market that π could expand to. The court found that given the strong presence of π mark in the entertainment business and there has been great success with music based restaurants (Planet Hollywood and Hard Rock Café), it is the natural next step to see an Elvis based restaurant. Thus, it shows that the public would probably think the two are associated. Thus, it weighs in favor of likelihood of confusion. Next, the court looked to see what the Δ intent was. The court found that Δ intent was not in good faith because the use of the mark in their advertising shows intent to market by relying on the power of Elvis. Thus, it weighs in favor of likelihood of confusion. Fourth, the court looked to see if there was actual confusion. Π presented one witness who testified that they thought the Δ bar was associated with Elvis Presley, but once they entered the bar, they realized Elvis was not associated with it. However, the court found that the initial-interest of the users was confused and maybe more significant because the bar had cover charges, so they had the customers in the door and paid already before they realized the bar had no affiliation with Elvis. Thus, this factor weighs for likelihood of confusion. Last, the court had to see if the Δ mark was used to parody π mark. The court found that the Δ was trying to parody things like Planet Hollywood and Hard Rock Café, not Elvis Presley. Thus, the Δ could accomplish these parodies without using the likeness of Elvis. Therefore, this weighs in favor of likelihood of confusion. Because all of the digits weigh in favor of likelihood of confusion, the court found that Δ infringed π mark.

Critical Analysis: I agree with the court’s analysis. Clearly, if they were to allow Δ to use the mark for the bar, it would inhibit π from being able to grow into that industry. Also, the bad taste in which the bar was operated and the way it used Elvis’s likeness would harm the π if individuals thought that they were associated with the Δ. Furthermore, it is clear that Δ was trying to use the immense popularity of Elvis to try to make his bar successful and to do that without having to pay a licensing fee to Elvis’s estate should not be allowed.

Future Impact: This has great future importance for celebrities who want to try to keep their likeness and marks to themselves and not have people benefit off of their name. Clearly, almost any celebrity could make an argument that the field that the potential Δ is using the mark is a field that they want to eventually get into, so this case is definitely a step forward for celebrities stopping individuals from benefiting off of their fame.

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