Newsboys & Wesley Campbell v. Warner Bros. Records

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Standing
  • Date Filed: 07-11-2013
  • Case #: 3:12-cv-0678
  • Judge(s)/Court Below: U.S. District Court, Middle District of Tennessee, Nashville Division
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 97695
  • Westlaw Citation: 2013 WL 3524615
  • Full Text Opinion

Only the registrant of a trademark or that registrant’s legal representatives has legal standing to sue for trademark infringement.

Opinion (Haynes): Newsboys, Inc. and Wesley Campbell (collectively "Newsboys") filed for trademark infringement under the Lanham Act against Warner Bros. Records, Inc. ("Warner Bros.") regarding their registered trademark for the name “Newsboys.” The court, in earlier proceedings, granted Warner Bros.’ motion to dismiss for lack of standing and Campbell’s inability to provide evidence of a likelihood of confusion between his registered trademark and the Warner Bros. group New Boyz. The court did however grant Campbell the ability to present specific facts of reasonable consumer confusion in the marketplace. The court determined that the musical group the Newsboys lacked standing to sue for trademark infringement because Campbell was the sole owner of the registered trademark. Only the registrant of the trademark has standing to sue for trademark infringement. Therefore the court only considered Campbell’s amended suit for infringement. To prove infringement, it must be proven that (1) the plaintiff owns the trademark; (2) the defendants used the mark in commerce; and (3) their use of the mark was likely to cause confusion in consumers as to the source of the product. However, this test only applies when the defendant is using the challenged mark in a way that identifies the source of the product. The court found, that since Campbell’s trademark only covers live musical performances of a religious nature given by a group, Campbell could not state a trademark infringement claim against Warner Bros. Records. Therefore, the Court GRANTED Warner Bros.’ motion to dismiss.

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