SW Legal Educational Publishing

Stepping on Blue Suede Shoes Is Infringement
Description Nightclub called "The Velvet Elvis" that used Elvis Presley theme violated trademark and service mark rights of owner of Presley trademarks and publicity rights. Parody is not a defense against infringement.
Topic Intellectual Property
Key Words Trademark, Service Mark, Infringement
C A S E   S U M M A R Y
Facts Elvis Presley Enterprises (EPE) owns all trademarks, copyrights, and publicity rights belonging to the Elvis Presley estate. It has at least 17 federal trademark registrations, as well as common-law copyrights, for "Elvis Presley," "Elvis," and other registrations for his likeness. Capece opened a nightclub in Houston called "The Velvet Elvis" and filed an application for a service mark, which was issued. The club has a velvet painting of Elvis and other references to Elvis in its decor. EPE sued for federal and common-law unfair competition and trademark infringement, federal trademark dilution, and violation of its rights of publicity in Elvis Presley's name and likeness. Trial court essentially held for the defendant. EPE appealed.
Decision Reversed. "EPE's registration of the Elvis and Elvis Presley marks established that it is entitled to protection from infringement by junior users, thereby meeting the threshold requirement that the plaintiff must possess a protectible mark." The use of a mark in advertising is "highly probative of whether the mark creates a likelihood of confusion." "In the case of a service mark, advertising is of even greater relevance because the mark cannot be actually affixed to the service, as a trademark is to the goods." The defendant's claim that it has a defense of parody does not hold in case of trademark infringement. EPE's marks are very strong and weigh in favor of a likelihood of confusion.
Citation Elvis Presley Enterprises, Inc. v. Capece, 1998 WL 229797 (---F.3d---, 5th Cir.)
141 F.3d 188 (5th cir., 1998)

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