Miller Barondess Prevails on Summary Judgment for Client Universal Music Group

Miller Barondess Prevails on Summary Judgment for Client Universal Music Group

Judge Tosses Suit Over Band Name Trademark Against UMG

By David McAfee

Law360, Los Angeles (April 25, 2014, 4:13 PM ET) — A California federal judge on Thursday threw out and infringement suit brought against UMG Recordings Inc. by a man who claims to own the trademark “Aliados De La Sierra,” which is the name of a Duranguenese band for which UMG manufactured and distributed eight recordings.

The suit accused UMG and affiliates of trademark infringement and unfair competition for the allegedly unauthorized use and misappropriation of the Aliados trademark, which was issued by the U.S. Patent and Trademark Office in 2010 for use on prerecorded CDs of musical compilations.

But UMG hit back with a counterclaim seeking cancellation of the mark, arguing that plaintiff Gilberto Diaz Moreno had not used the mark in commerce when he requested registration as required, according to court documents.

U.S. District Judge Stephen V. Wilson sided with UMG on Thursday, tossing the suit and holding that the Aliados trademark is subject to cancellation based on the fact that Diaz had never used it on CDs in commerce.

Diaz’s testimony does not support the conclusion that he used the Aliados mark on CDs in commerce,” Judge Wilson wrote in the seven-page order. “The cited portions of his testimony instead support Diaz’s allegations that he believed in good faith that he was the owner of the mark, that he did not intend to mislead the PTO in his application, and that he was mistaken in stating in his application that he was registering the CDs as a product rather than just registering the Aliados name.”

Thursday’s ruling comes exactly one year after the case was first filed in federal court. The judgement is in favor of UMG and against Diaz on all the plaintiffs’ claims and on UMG’s counterclaim for cancellation of the Aliados mark.

Aliados De La Sierra was formed in 2007 and enjoyed “considerable success for several years,” according to court filings.

On July 20, 2010, the PTO granted Diaz a registration for the Aliados trademark for use on CDs. On April 24, 2013, Diaz filed suit against UMG and Universal Music Group Distribution Corp. alleging trademark infringement, counterfeiting and dilution in violation of the Lanham Act.

UMG then moved for summary judgement on Diaz’s claims and on its counterclaim for trademark cancellation. The judge granted both motions on Thursday, holding that the plaintiff failed to produce evidence of a likelihood of confusion or dilution because the music marketed and distributed by UMG is genuine.

“It is music produced by the Aliados De La Sierra group,” the judge wrote in the Thursday order.

Representatives for the parties didn’t immediately return requests for comment on Friday.

The plaintiff is represented by Anthony R. Lopez of Law Offices of Lopez & Associates.

UMG is represented by A. Sasha Frid and Christopher D. Beatty of Miller Barondess LLP.

The case is Gilberto Diaz Moreno v. UMG Recordings Inc. et al., case number 2:13-cv-02879, in the U.S. District Court for the Central District of California.

–Editing by Christine Chun.