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Barrington Music Products, Inc. v. Music & Arts Centers

United States District Court, N.D. Indiana, South Bend Division

October 18, 2017

BARRINGTON MUSIC PRODUCTS, INC., Plaintiff,
v.
MUSIC & ARTS CENTERS et al., Defendants.

          OPINION AND ORDER

          Robert L. Miller, Jr. Judge.

         Plaintiff Barrington Music Products, Inc. (“Barrington”) sues defendants Eastman Music Company, Guitar Center Stores, Inc., Music & Arts Centers, and Woodwind and Brasswind Inc., for state and federal trademark infringement. The defendants moved for summary judgment asserting a laches defense. The court denies the defendants' motion.

         I. Background

         Guitar Center Stores, Inc. markets and sells musical instruments both at retail stores throughout the country and through a variety of online platforms. It owns and operates 150 Music & Arts brand retail stores throughout the country as well as more than 260 Guitar Center stores throughout the country. Barrington doesn't operate any retail locations and principally sells musical instruments through third-parties such as Amazon and Ebay.

         In 2010, Guitar Center was working on developing a new name for a brand of musical instruments to be produced by Eastman Music Company. Eastman is a well-known manufacturer of woodwind and brass musical instruments, including flutes that it sells under its Wm. S. Haynes brand name and saxophones sold under the Andreas Eastman brand name. Eastman instruments are played by many famous and well-known performers, such as Earth Wind & Fire and Bob Mintzer. After vetting several name possibilities with its trademark counsel, Guitar Center eventually settled on the name “Ventus” for its new line of musical instruments. Because Eastman, as the manufacturer, provided the necessary credibility for the new line of instruments, the instruments were marketed and sold as “Ventus by Eastman” and “Ventus by Wm. S. Haynes”. Prominent engraving on the instruments reinforced this co-branding, as did conspicuous branding on the carrying cases.

         Guitar Center filed for trademark protection for “Ventus” on May 20, 2010 under the goods and services designation of “Musical Instruments.” Its application was published for opposition on October 26, 2010. No opposition was filed and it was registered on the principal register on August 2, 2011. Barrington owns the trademark of “Vento, ” which is registered with the goods and services denomination of musical instruments. Barrington filed for registration of “Vento” on January 6, 2010. Barrington's application was published for opposition on May 25, 2010, five days after Guitar Center had filed the “Ventus” mark. Barrington's “Vento” was registered on the principal register on August 10, 2010. Barrington's mark has been used in commerce since May of 2009, achieving gross sales of a little less than $700, 000.

         In March 2011, Guitar Center began using “Ventus” (in conjunction with “by Eastman” and “by Wm. S. Haynes”) in commerce. It marketed and sold flutes, trumpets, alto saxophones, tenor saxophones, and clarinets under the “Ventus by Eastman” name. From 2011 until the end of 2015, Guitar Center built the “Ventus” by Eastman/Wm. S. Haynes brand and achieved gross sales totaling about $5 million.

         The parties dispute when Barrington was put on notice of the “Ventus” line. Between 2011 and 2014, Guitar Center sold its “Ventus” products exclusively in Music & Arts retail stores-stores that were not located in Indiana or Michigan. The combined sales for 2011-2013 totaled less than $800, 000. In 2014, Guitar Center dramatically expanded its “Ventus” sales, raising the annual sales to $1.4 million. In 2015, Guitar Center began selling “Ventus” instruments online through its websites. Barrington contends that, while web sales have remained a small part of Guitar Center's total sales, the sudden shift to the online marketplace in 2015 placed the “Ventus” mark squarely in competition with Barrington's mark for the first time. Guitar Center argues that, had Barrington notified it at or near the time it registered the “Ventus” mark, Guitar Center would have simply avoided a dispute and chosen another name.

         Barrington also says that it regularly reviewed internet and print catalogues and other music industry publications for the purposes of market research and policing its “Vento” marks from May 2009 until now. Barrington asserts that it first discovered that Guitar Center was advertising and selling musical instruments using the “Ventus” in November 2014. In February 2015, Barrington's counsel sent a letter to Guitar Music demanding that it cease and desist its use of the “Ventus” mark. Barrington engaged in negotiations with Guitar Music, attempting to settle its trademark infringement claims. When those negotiations broke down, Barrington filed this lawsuit.

         All arguments relate to all the defendants, so in the interest of simplification, the court refers to all defendants as “Guitar Center” in the rest of this opinion.

         II. Standard of Review

         Summary judgment is appropriate when “the pleadings, depositions, answers to the interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). A genuine issue of material fact exists whenever “there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). In deciding whether a genuine issue of material fact exists, “the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Weigle v. SPX Corp., 729 F.3d 724, 730 (7th Cir. 2013). The existence of an alleged factual dispute, by itself, won't defeat a summary judgment motion; “instead, the nonmovant must present definite, competent evidence in rebuttal, ” Parent v. Home Depot U.S.A., Inc., 694 F.3d 919, 922 (7th Cir. 2012), and “must affirmatively demonstrate, by specific factual allegations, that there is a genuine issue of material fact that requires trial.” Hemsworth v. Quotesmith.com, Inc., 476 F.3d 487, 490 (7th Cir. 2007); see also Fed. R. Civ. P. 56(e)(2). “[S]ummary judgment is ‘not a dress rehearsal or practice run; it is the put up or shut up moment in a lawsuit, when a party must show what evidence it has that would convince a trier of fact to accept its version of events.” Steen v. Myers, 486 F.3d 1017, 1022 (7th Cir. 2007) (quoting Hammel v. Eau Galle Cheese Factory, 407 F.3d 852, 859 (7th Cir. 2005)).

         III. Discussion

         Guitar Center contends that the doctrine of laches bars Barrington's claims, while Barrington contends that if the presumption of laches applies, the doctrine of progressive encroachment forgives the delay. Guitar Center also contends ...


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