Citation Edit

Echo Drain v. Newsted, 307 F.Supp.2d 1116 (C.D. Cal. 2003) (full-text).

Factual Background Edit

Plaintiff is a band named "Echo Drain" that was formed in Texas in February of 2000 and that played progressive funk music with elements of heavy metal. Plaintiff recorded its first CD in March 2000 but made only 100 copies. Between May 2000 and September 2002, plaintiff performed 19 shows at local clubs in the Dallas-Ft. Worth area. None of these shows was heavily advertised. Plaintiff recorded its second CD in 2001 and made 1,000 copies, but it sold only a few copies and gave away the rest to local clubs and music instrument stores. Plaintiff grossed only $200 from all of its live performances. Plaintiff operated a website at "" starting in June of 2000 that provided news and pictures, and allowed visitors to post messages.

Defendant, a former member of the well-known band Metallica, formed a band called ECHOBRAIN that played "melodious pop rock" or "Beatlesque" music. Defendant adopted the name ECHOBRAIN in October 1999 but did not start recording until April 2000. Defendant started to tour the country in August 2001 and released an album in May 2002 although defendant mailed promotional CDs to individuals and radio stations as early as June 2001. Defendant promoted its band at its "" website. Defendant registered the domain names "" and "" in April 2001 although there was no evidence of their use. The ECHOBRAIN band ceased to exist in June of 2002.

Trial Court Proceedings Edit

Plaintiff sued for infringement (reverse confusion), false designation of origin, cybersquatting, dilution, as well as various common-law claims. The court granted defendant's motion for summary judgment. Defendant conceded that plaintiff was the "prior user" for purposes of the motion. And plaintiff agreed that granting summary judgment on plaintiff's federal infringement claims would be dispositive of plaintiff's remaining claims except for cybersquatting.

The court first analyzed whether plaintiff had a valid and protectable trademark. Because plaintiff never registered its ECHO DRAIN mark, it attempted to prove its mark was inherently distinctive or that it had acquired secondary meaning. However, because plaintiff failed to timely respond to defendant's requests to admit regarding the descriptiveness of its name, the court deemed the ECHO DRAIN mark descriptive. Offering no expert reports or survey evidence that the ECHO DRAIN mark had secondary meaning or consumer testimony that a significant portion of the consuming public associated the mark with plaintiff's music, the court found that the ECHO DRAIN mark had not acquired secondary meaning and was thus unprotectable.

Although this finding was dispositive of plaintiff's case, the court nonetheless proceeded to analyze the likelihood of confusion, assuming the existence of a protectable mark. Using the Sleekcraft likelihood-of-confusion factors and focusing on the strength of the mark, relatedness of the goods or services, and similarity of the marks because this was a reverse confusion case, the court concluded that no reasonable jury could find a likelihood of confusion. Regarding the mark's strength, the court found the mark ECHO DRAIN to be at most suggestive yet presumptively weak because there were more than 500 other music groups that used "echo" in their band names or album or song titles. In fact, thirteen bands had "echo" in their name in Texas alone, one of which defendant played a concert with ("Echojar").

The similarity-of-the-marks factor also weighed in defendant's favor because the words "brain" and "drain" were phonetically different and had different meanings, and the parties displayed their marks in different formats or fonts. Nor did plaintiff provide sufficient evidence of actual confusion.

The court also commented that even if there was a likelihood of confusion, plaintiff's common-law rights would not extend beyond the Dallas-Fort Worth, Texas area.

Finally, the court granted summary judgment to defendant on plaintiff's cybersquatting claim because of plaintiff's inability to show a bad-faith intent to profit by defendant from the ECHO DRAIN mark through its registration of the domain names "" and "" Specifically, it was undisputed that defendant: (1) never intended to profit from the names, (2) never tried to sell the domain names, (3) never used the names to promote its band or attack plaintiff's band, and (4) abandoned ownership of the names approximately one month after plaintiff filed suit.

Source Edit

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).

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