Elvis Presley Enterprises, Inc. v. Capec

950 F. Supp. 783 (1996)

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Nature of the Case

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Facts

P is the assignee and registrant of all trademarks, copyrights, and publicity rights belonging to the Presley estate, including over a dozen United States federal trademark registrations and common law trademarks of Presley's name and likeness. None of these marks, however, are registered service marks for use in the restaurant and tavern business. D opened a nightclub named 'The Velvet Elvis.' The name, 'The Velvet Elvis,' referring to one of the more coveted velvet paintings, was selected for the powerful association it immediately invokes with a time when lava lamps, velvet paintings, and bell-bottoms were popular. The bar was a parody of an era remembered for its sensationalism and transient desire for flashiness. P ridiculed a culture's obsession with the fleeting and unimportant. D filed a federal service mark application with the United States Patent and Trademark Office (PTO) on August 28, 1991. The service mark was published in the Official Gazette of the Patent Office for the purpose of providing notice of the mark's pending registration and an opportunity for parties to object to the application's approval. P was aware of the mark but did not file an opposition to the mark within the proscribed thirty day period. The service mark, 'The Velvet Elvis,' was issued for use in the restaurant and tavern business. In July 1994 P sent a cease and desist letter to D, threatening legal action if a second version of the bar opened with P's trademark, 'Elvis,' in its name. D was 'All Shook Up.' In addition to the velvet Elvis painting in the back lounge, velvet portraits of Stevie Wonder, Chuck Berry, Bruce Lee, and a collection of velvet nudes are hung throughout the bar. Also, a part of the bar's decor is lava lamps, cheap ceramic sculptures, beaded curtains, and vinyl furniture. A painting of the Mona Lisa exposing her breasts hangs prominently in the front room. Centerfolds from Playboy magazines dating back to the sixties completely cover the walls of the men's room. Reminders of Elvis Presley, including numerous magazine photographs and a statute of Elvis playing the guitar, were at one time amongst the bar's decorations. Pictures and references to Elvis Presley were also used in advertisements promoting the establishment until 1995. P sued D for unfair competition, trademark infringement, and dilution, under both the common law and the Lanham Act. D contends that its valid, registered service mark presumptively entitles it to the exclusive right to use the mark in its business. The bar is meant and viewed as a parody, and the use of its service mark has not yet nor will in the future cause confusion as to the identity of the bar's owners, sponsors, or affiliates. D asserts that their parody is protectable expression under the First Amendment. Before the court is D’s motion for judgment as a matter of law.