MIAMI – The U.S. District Court for the Southern District of Florida recently denied requests for summary judgment requested by two entertainment companies concerning a dispute over the use of a trademark to promote music events.
In his Sept. 6 ruling, U.S. District Judge Federico A. Moreno denied the motions by Adria MM Productions, a Croatian company that produces music festivals in Croatia and Europe, and Worldwide Entertainment Group, which has produced music festivals in Miami since 1999 and has continued to expand globally.
On Nov. 2, 2012, Adria signed an agreement with Worldwide to authorize Adria’s use of Worldwide’s trademark “Ultra” in promoting concerts in Croatia and Europe, paying licensing and promotional fees for five years, court documents said.
Before the two companies could sign a new agreement on March 3, 2017, Worldwide began sending notices of default to Adria, listing what Worldwide claimed were breaches of contract. According to the contract, Adria had five days to cure the breach, but Adria did not respond, at which time Worldwide revoked all rights granted to Adria, court records said.
Shortly thereafter, Adria discovered that Worldwide had never registered the trademarks covered in the agreement in either Croatia or Europe and filed suit against Worldwide for breach of contract.
Five days after the filing the lawsuit, both companies filed to register the trademark “within 34 minutes of each other,” as quoted in the court ruling, with Adria filing in Croatia and Worldwide with the European Union. Both companies protested the filing of the other, and after filing legal actions in the state of Florida, both requested summary judgment in their favor.
In his ruling, Judge Moreno said, “Summary judgment is authorized where there is no general issue of material fact. The party seeking summary judgment bears the initial burden of demonstrating the absence of a genuine issue of material fact.”
In denying Worldwide’s request for summary judgment, Moreno said, “Worldwide failed to meet its burden regarding ‘use in commerce.’“ He also said, “The company failed to demonstrate how Adria’s use of the trademark will affect commerce in the United States such that a claim under the Lanham Act is appropriate.”
Adria, in requesting summary judgment, said that the agreement Adria signed with Worldwide was invalid because Worldwide had never registered the trademark in Croatia or Europe, therefore, the company had no right to license it to anyone.
Moreno said, “The court finds that it cannot make the findings requested at the summary judgment stage. The court finds that there are still significant issues of material fact as to the validity of the agreement. Therefore, Adria Production’s request for summary judgment is denied.”