Holding: Plaintiff alleges that defendants not only pirated plaintiff’s karaoke recordings, but also copied plaintiff’s trademark and displayed it while playing the pirated songs. The display of plaintiff’s mark on the screen where the karaoke lyrics appear throughout an entire evening of karaoke performances could cause confusion among customers that the holder of the trademark approves of defendants’ use of its product in their services. This is exactly the type of situation that 15 U.S.C. § 1125(a) addresses: when someone uses a mark in connection with services that is likely to cause confusion about the affiliation or approval of those services.
The court denies defendant Kohn’s motion for summary judgment but grants his motion to exclude two witnesses. The court denies plaintiff’s motion to compel discovery.
Plaintiff’s request to search Kohn’s computer and hard drive for “any original discs” that Kohn may have in order to determine whether Kohn “is using a counterfeit mark” during his karaoke shows is not proportional to the needs of the case, considering the fact that Kohn has never argued that he was licensed by plaintiff to use the mark. Accordingly, the court denies plaintiff’s motion to compel.
Plaintiff sent its employee, Brian Plyler, to observe Kohn’s karaoke entertainment services. Brian was accompanied by his wife, Amy Plyler. Although plaintiff revealed that its “investigator” had attended a performance, plaintiff did not identify the Plylers by name until well after discovery deadlines.
The purpose of identification deadlines is to allow the opposing party sufficient time to depose the witnesses and strategize for their case; merely designating an unnamed investigator did not allow Kohn to achieve this. Adjusting the scheduling order so that Kohn could depose the Plylers and file any additional dispositive motions would delay the trial. The court grants Kohn’s motion to exclude the Plylers as witnesses.
Motions granted in part and denied in part.
Phoenix Entertainment Partners, LLC v. Dr. Fofo LLC (Lawyers Weekly No. 002-044-18, 20 pp.) (David Norton, J.) 2:17-cv-01270; Michael Cogen Cerrati for plaintiff; Robert Joseph Lowe Jr. for defendant; D.S.C.