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United States Court of Appeals
for the Fifth Circuit United States Court of Appeals
Fifth Circuit
____________ FILED
July 2, 2025
No. 24-20198 Lyle W. Cayce
____________ Clerk
Di Reed,
Plaintiff—Appellant,
versus
Joi Marshall; Tonya Harris, also known as Tonya Kelly;
Myracle Holloway,
Defendants—Appellees.
______________________________
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 4:21-CV-3942
______________________________
Before Smith, Graves, and Duncan, Circuit Judges.
James E. Graves, Jr., Circuit Judge:
This appeal concerns an unharmonious split among three members of
Jade, a rhythm and blues (R&B), hip hop, and soul, vocal group that rose to
prominence in the 1990s. Appellant Di Reed contends that her fellow Jade
members, Joi Marshall and Tonya Harris, violated the Lanham Act by
performing under their co-owned JADE mark with another singer, Myracle
Holloway. Because we conclude that the Lanham Act does not authorize
claims between co-owners of a trademark, we AFFIRM the summary
judgment for the defendants.
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I.
In 1991, three female singers—Di Reed, Tonya Harris, 1 and Joi
Marshall—formed Jade. Jade enjoyed significant success, with several of its
songs—including Don’t Walk Away (#4) and I Wanna Love You (#16)—
charting on the Billboard Hot 100 between 1991 and 1995. The group
disbanded in 1995, when the members began pursuing their respective
individual careers.
During their period of success, Jade’s members entered into sinceexpired agreements to protect their brand. In May 1992, the three singers
signed a recording agreement with Giant Records, a now-defunct record
label. That agreement contained multiple exclusivity provisions, including
that (1) no additional members could be added to Jade without consent from
the three original singers and the record label, and (2) no more than one Jade
singer could participate in a non-Jade recording. Nearly a year later, in April
1993, the group filed applications with the United States Patent and
Trademark Office (“USPTO”). In September 1994, the USPTO
registered the “JADE” service mark for “entertainment services, namely
live performances by a musical group.” This service mark was canceled in
October 2001; at the time of cancellation, the mark was owned by “JADE,”
a “partnership” that included Marshall, Reed, and Harris.
In the two decades that followed their separation, Marshall, Reed, and
Harris corresponded about a potential reunion, but no agreements
materialized. 2 Finally, in 2018, the three agreed to a reunion tour, and
_____________________
1
“Tonya Harris” is professionally known as “Tonya Kelly.” This opinion will
refer to her as “Harris” to maintain consistency with the case caption.
2
In 2013, Marshall and Harris published a YouTube video, called “Jade —
Continuum” that included vintage footage of the group from the 1990s. Reed’s then-
2
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collectively applied for joint ownership of the “JADE” service mark. In June
2019, the USPTO approved their application and issued Service Mark
Registration No. 5,787,227 for “[e]ntertainment services in the nature of live
musical performances.” The mark’s registrants were listed as Reed,
Marshall, and Harris, all in their individual capacities, and its first use in
commerce was identified as July 1, 1992.
Discussions of the reunion tour were aborted, and in June 2021,
Marshall and Harris entered into a six-month work-for-hire contract with a
different singer, Myracle Holloway. Despite cease-and-desist letters issued
by Reed’s attorney, Marshall, Harris, and Holloway performed as Jade at
multiple “90’s Kickback Concert[s]” held in Milwaukee, Miami, and
Houston, in November and December 2021. Promoters for these
performances created social media advertisements that, Reed claims,
inappropriately used her name, image, and likeness, along with the JADE
mark.
On December 2, 2021, Reed sued Marshall, Harris, Holloway, and
two other defendants in the Southern District of Texas. 3 She alleged four
federal claims, all under the Lanham Act: infringement of the “JADE”
service mark, dilution of the “JADE” service mark, and unfair competition
through false designation of origin and false advertising; as well as violations
_____________________
counsel served a cease-and-desist letter on Marshall and Harris that demanded they stop
using the “JADE” name in conjunction with any ongoing music projects. Neither the
record nor the pleadings explain what resulted from this exchange.
3
The two other defendants, Olasheni Williams and Yung Fly Entertainment, Inc.,
were promoters of the “90’s Kickback Concert.” Those defendants reached a settlement
with Reed, and were dismissed from the suit on October 11, 2022.
3
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of Texas statutory and common law. 4 After responding to the complaint with
an answer and counterclaims, the defendants moved to dismiss Reed’s claims
for lack of subject-matter jurisdiction on April 29, 2022. Defendants
subsequently withdrew their motion to dismiss, reserved the right to file
other dispositive motions, and began settlement discussions with Reed in
June 2022.
Negotiations among Reed, Harris, Holloway, and Marshall were
unsuccessful, and on June 19, 2023, the three remaining defendants moved
for summary judgment (the “MSJ”). After motions practice concluded, the
district court granted the MSJ on October 20, 2023. Reed v. Marshall, 699 F.
Supp. 3d. 563 (S.D. Tex. 2023) (the “Summary Judgment Decision”). It
concluded that (1) Reed could not allege Lanham Act trademark
infringement and dilution claims against Harris and Marshall, who were co-owners of the mark, or Holloway, who performed as a licensee with Harris’
and Marshall’s permission; (2) the unfair competition claims could not
survive summary judgment; and (3) supplemental jurisdiction did not exist
as to the Texas law claims. Id.
After the district court granted summary judgment, the defendants
moved for attorney’s fees and costs. Reed, meanwhile, moved to supplement
the record, for a new trial (“MNT”), and for relief from judgment under
Rule 60 of the Federal Rules of Civil Procedure (“MRJ”). Reed’s motion to
supplement primarily focused on recently-discovered evidence showing that
Harris, Holloway, and Marshall had agreed to perform at a March 2024
“R&B Block Party Concert” in the United Kingdom. Promoters for this
_____________________
4
Reed’s state law claims included: (1) statutory dilution under Texas Business and
Commerce Code § 16.103; (2) unfair competition, (3) misappropriation of right of
publicity, (4) trademark infringement (against Holloway), and (5) for accounting (against
Marshall and Harris).
4
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concert—who are not parties to this suit or appeal—advertised the event
through social media posts that featured Jade’s songs and photos (and
accordingly included Reed’s voice and image).
On April 4, 2024, the district court granted Reed’s motion to
supplement the record but concluded that the additional evidence was
cumulative. Reed v. Marshall, No. CV H-21-3942, 2024 WL 1468702 (S.D.
Tex. Apr. 4, 2024) (the “Reconsideration Ruling”). It accordingly denied
her MNT and MRJ.
Id. Reed timely appealed.
II.
Summary judgment is proper when “the movant shows that there is
no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a). The summary
judgment is reviewed “de novo, construing all facts and inferences in the
light most favorable to the nonmoving party.” Naquin v. Elevating Boats,
L.L.C., 817 F.3d 235, 238 (5th Cir. 2016) (citing EEOC v. Chevron Phillips
Chem. Co.,
570 F.3d 606, 615 (5th Cir. 2009)).
III.
Reed first alleges, as a procedural matter, that the district court abused
its discretion by rendering summary judgment for any party. She claims that
the district court acted “in three progressively prejudicial ways”: (1)
converting defendants’ “substantive motion to dismiss for lack of subject
matter jurisdiction into a challenge on the merits without notice,” (2)
“reinterpreting [her arguments] from subject matter jurisdiction challenges
to statutory standing challenges,” and (3) concluding, “sua sponte, that [she]
did not have statutory standing under the Lexmark authority on its own.”
Reed’s charge is effectively that the defendants did not substantively move
for summary judgment—instead, they moved to dismiss on subject-matter
jurisdiction grounds. In Reed’s view, the district court went out of its way to
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render judgment; she claims that resolving subject-matter jurisdiction
“should have been the end of the [district court’s] inquiry.”
We begin by clarifying the jurisdictional concern that Reed invokes.
In their MSJ, the defendants argued that “trademark owners cannot bring
Lanham Act violation claims against co-owners of the mark.” That challenge
invokes statutory standing, and specifically, “whether or not a particular
cause of action authorizes an injured person to sue.” Blanchard 1986, Ltd. v.
Park Plantation, LLC, 553 F.3d 405, 409 (5th Cir. 2008). Importantly,
statutory standing “has nothing to do with whether there is a case or
controversy under Article III.” Steel Co. v. Citizens for a Better Env’t,
523
U.S. 83, 97 (1998). It instead concerns the “merits question” of whether the
asserted cause of action is a proper vehicle for the claimed injury. Blanchard
1986,
553 F.3d at 409.
Keeping that distinction in mind, Reed’s procedural arguments are
generally meritless. First, Reed had ample notice that a motion for summary
judgment was forthcoming. As noted above, defendants initially moved to
dismiss all claims “for lack of subject matter jurisdiction” in April 2022.
They withdrew that motion in June 2022, but expressly reserved the “right
to file a motion for summary judgment” if settlement negotiations were
unsuccessful. As deliberations continued into February 2023, the parties
filed a joint “motion for continuance” acknowledging that the requested
deadline extension would be used “to prepare dispositive motions to narrow
the remaining issues if a trial is required.” In short then, Reed should have
anticipated a summary judgment motion once settlement negotiations failed.
Second, and contrary to Reed’s claim that the district court
“manipulated” a summary judgment concern, Marshall and her fellow
defendants moved for summary judgment. Their motion was titled as a
motion for summary judgment. And while Reed argues that the MSJ was
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effectively identical in substance to the previously-withdrawn motion to
dismiss, that observation does not negate her obligation to respond to the
motion and its contents—including the requested relief.
Third, and as to substance, the defendants asserted, and then briefed,
that “[t]rademark owners cannot bring Lanham Act violation claims against
co-owners of the mark.” They also argued that “Plaintiff’s claims do not
properly arise from the Lanham Act.” Although the “standing” term is
absent from the motion, the asserted claim plainly sounds in statutory
standing, sufficient to place Reed on notice that this was a contested issue.
Finally, even if the substance of the MSJ was, in reality, a motion to
dismiss for lack of subject-matter jurisdiction, Reed responded to the MSJ
with an opposition containing 19 exhibits contemplating “matters outside of
the pleadings.” Reconsideration Ruling, 2024 WL 1468702 at *11. “If a
court considers materials outside of the pleadings, the motion to dismiss
must be treated as a motion for summary judgment under [Rule 56].” Causey
v. Sewell Cadillac-Chevrolet, Inc.,
394 F.3d 285, 288 (5th Cir. 2004).
Moreover, to the extent that Reed was blindsided by the summary judgment
ruling, she afforded herself an opportunity to weigh in by moving for
reconsideration (albeit in a misnamed MNT). Simply put, the record does
not reflect a rogue district court that “raise[d] and render[ed] judgment on
its own argument,” and Reed’s argument on this ground fails.
IV.
Turning to the merits of this dispute, Reed chiefly argues that the
district court erred in its resolution of her trademark infringement and unfair
competition claims. The district court based its summary judgment on a
conclusion that a co-owner of a trademark does not have a Lanham Act claim
against fellow co-owners for alleged infringement or dilution of that mark.
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While this finding is an issue of first impression before this court, we
conclude that the district court’s conclusion is substantively correct.
Critical to resolving this dispute is understanding that Reed, Marshall,
and Harris entered into joint ownership of the JADE mark—that is, each
individual owns a complete interest in the mark. Joint ownership of a mark
has two interconnected problems. First, a mark is fundamentally intended to
“identify and distinguish a single commercial source,” not three distinct
owners. 2 McCarthy on Trademarks and Unfair
Competition § 16:40 (5th ed. 2025). Second, any discord between co-owners could result in “multiple, fragmented use” that may result in
“consumer confusion and deception.” Id. It is for these reasons that “joint
ownership of a trademark is disfavored in the law,” and that in the instances
it does occur, parties often enter into “contractual agreements” to clarify
outcomes should owner interests become unaligned. Id.
Here, the parties failed to enter into a contractual agreement that
defined their respective obligations; and some of the mark’s co-owners have
had a falling out with another set of co-owners. But at bottom, the question
before us is simpler: whether the Lanham Act, which is aimed at protecting
consumers and mark owners from fraud and deceptive acts, provides an
appropriate cause of action to remedy disputes between the co-owners of a
trademark. The answer, for the reasons discussed below, is “no.”
A. Trademark Infringement
Reed first asserts a federal trademark infringement claim against
Holloway and contributory trademark infringement claims against Harris and
Marshall. The cause of action has two components: “ownership in a legally
protectible mark,” and “infringement [of that mark] by demonstrating a
likelihood of confusion.” Bd. of Supervisors for Louisiana State Univ. Agric. &
Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 474 (5th Cir. 2008). But “we
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begin with a threshold element: statutory standing.” Rex Real Est. I, L.P. v.
Rex Real Est. Exch., Inc., 80 F.4th 607, 616 (5th Cir. 2023).
Whether a plaintiff’s claim properly invokes a “legislatively conferred
cause of action,” and relatedly, whether the claim falls within the “zone of
interests” of a statute, are resolved using “traditional tools of statutory
interpretation.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572
U.S. 118, 127 (2014). The trademark infringement cause prohibits
individuals who, “without the consent of the registrant[,] use in commerce
any reproduction, counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale, distribution, or advertising
of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1114(1)(a).
The statutory text makes this cause exclusive to the registrant of the
trademark. And the Lanham Act designates “the owner [as] the only proper
party to apply for registration of a mark.” Rex Real Est. I,
80 F.4th at 616
(citing
15 U.S.C. § 1051(a)(1)).
The Supreme Court has accordingly recognized that “[r]egistration
of a mark . . . under the Lanham Act enables the owner to sue an infringer
under” the trademark infringement statute. Wal–Mart Stores, Inc. v. Samara
Bros., Inc., 529 U.S. 205, 209 (2000) (emphases added, internal citation
omitted). Our caselaw identifies a similar dichotomy between owners and
infringers for trademark infringement purposes: “the precise wrong [that]
trademark legislation seeks to prevent” occurs when a “deceived customer
buys the infringer’s product in the belief that it originates with the trademark
owner or that it in some way is affiliated with the owner.” World Carpets, Inc.
v. Dick Littrell’s New World Carpets,
438 F.2d 482, 488 (5th Cir. 1971).
This division between owners and infringers is also consistent with
Congress’ intent in creating the Lanham Act. As the Supreme Court has
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observed, the statute “requires no guesswork to ascertain Congress’ intent”
in crafting the law because the body “included a detailed statement of the
statute’s purposes.” POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102,
106 (2014) (cleaned up, citations omitted). In particular, the Lanham Act
was intended to “to prevent fraud and deception in such commerce by the
use of reproductions, copies, counterfeits, or colorable imitations of
registered marks.”
15 U.S.C. § 1127. This aim sounds in protecting two
categories of persons: consumers who are deceived by knockoff products, and
owners, whose products and services are defrauded by imitators, from a third
group: mark infringers who profit off of deception. Co-owners of a mark, who
generally have the right to use their marks as they please, fall only on one side
of this dividing line.
It is likely because of this framework that a leading trademark treatise
has summarized: “[w]hen parties are co-owners of a mark, one party cannot
sue the other for infringement. A co-owner cannot infringe the mark it
owns.” 2 McCarthy on Trademarks and Unfair
Competition § 16:40 (5th ed. 2025). Similarly, as the district court
noted, all courts “to consider the rights of co-owners in trademark cases have
uniformly held that federal claims for infringement cannot be maintained
against co-owners.” Summary Judgment Decision, 699 F.Supp.3d at 577
(collecting cases).
We find Piccari v. GTLO Prods., LLC, 115 F. Supp. 3d 509 (E.D. Pa.
2015), particularly persuasive because of its factual similarity to the instant
dispute. The case, which stemmed from the Eastern District of
Pennsylvania, featured a trademark co-owner who was ousted from his Led
Zeppelin-themed band by the mark’s co-owners.
Id. at 512. The co-owner
and another plaintiff brought a trademark infringement claim to recover postouster profits earned by the band. But the district court concluded that “[a]
co-owner with an equal right to use the trademark cannot be an imitator at
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whom this statute is directed.” Id. at 514–15. In doing so, it relied on two
points: a plain text analysis similar to that described above, and the
observation that “the purpose of the Lanham Act is [] to protect both the
public and the providers of goods and services—i.e. owners of marks—from
imitators seizing to capitalize on the owner’s hard-earned goodwill.”
Id. at
514.
Reed asserts that Piccari is unpersuasive because its analysis “entirely
failed to consider scenarios in which the actions of a co-owner alter the
public’s perception of the mark vis-à-vis the other owners.” But the question
is not whether joint ownership of a trademark could cause confusion if co-owners went their separate ways, but whether the Lanham Act affords a
statutory right for those co-owners to sue each other. And, as Piccari
recognized, “[a] co-owner with an equal right to use the trademark cannot be
an imitator at whom” the trademark infringement statute is directed. 115 F.
Supp. 3d at 514–15. Simply put, Reed cannot direct Lanham Act contributory
infringement claims against Harris and Marshall, who are fellow owners of
the mark allegedly being infringed.
Resolving Reed’s infringement claim against Holloway charts a
similar course. Marshall and Harris, as persons with complete ownership
interests in the mark, have an unencumbered right to use the mark as they
please. “A trademark co-owner does not infringe upon his co-owners rights
by exercising his own right of use.” Puri v. Yogi Bhajan Admin. Tr., No. CV
11-9503 FMO (SHX), 2015 WL 12684464, at *11 (C.D. Cal. Oct. 30, 2015)
(citations omitted). “It reasonably follows, then, that a valid licensee of one
co-owner of a trademark cannot be liable to another co-owner for
infringement.” E. W. Tea Co., LLC v. Puri, No. 3:11-CV-01358-HZ,
2022
WL 900539, at *6 (D. Or. Mar. 28, 2022) (citation omitted).
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Reed disagrees with these licensee-related principles, and offers two
responses. First, she concedes that “she would be foreclosed from an action
against [Holloway] were [Holloway] a proper licensee,” but contends that
Marshall and Harris are mere “fractional[] registrants and owners of the
JADE Mark.” But absent proof of a contractual agreement that enumerates
such a fractional division, her argument is aspirational and unreflective of the
actual rights to the JADE mark. Indeed, Reed’s argument is further undercut
by her later statement that if “Marshall and Harris want to use the mark on
their own, they should be free to do so.”
Second, she asserts that any reliance on East West Tea is misguided
because the Oregon district court’s analysis “rested primarily upon
Piantadosi,” a Ninth Circuit case concerning copyright law. See Piantadosi v.
Loew’s, Inc., 137 F.2d 534, 534–35 (9th Cir. 1943). We disagree with this
characterization; the East West Tea court’s findings were derived from the
weight of authority concluding that co-owners are not proper defendants in
Lanham Act infringement cases, as well as the principle that co-owners do
not infringe upon the ownership rights of others by exercising their own right
to use the mark. E. W. Tea Co.,
2022 WL 900539 at *6. At best, East West
Tea cites to Piantadosi in a cf. citation—in other words, a comparison by
analogy—and uses copyright law as a point of reference, not as a primary
rationale, for its holding.
Id.
Simply put, “[w]hile joint ownership of trademarks is disfavored
because it could lead to consumer confusion, it is not prohibited under federal
trademark law, and [Marshall and Harris] are within their rights as co-owners
to license their interest in the Marks to [Holloway].” E. W. Tea Co., 2022
WL 900539 at *6. The Lanham Act does not afford a trademark infringement
cause of action between co-owners of a mark, and the district court correctly
granted summary judgment in the defendants’ favor.
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B. Trademark Dilution
Next, Reed appeals the district court’s summary judgment
determination with respect to her trademark dilution claim. The cause of
action addresses “the weakening of the ability of a mark to clearly and
unmistakably distinguish the source of a product.” Scott Fetzer Co. v. House
of Vacuums Inc., 381 F.3d 477, 489 (5th Cir. 2004) (citations omitted). In this
court, a trademark owner must prove three elements in support of the claim:
“that its marks are famous and distinctive,” that the defendant “adopted its
mark after [the owner’s] had become famous and distinctive,” and “that [the
defendant] caused dilution of [the owner’s] mark. Westchester Media v. PRL
USA Holdings, Inc.,
214 F.3d 658, 670 (5th Cir. 2000). Once again, though,
this case presents the antecedent question of whether Reed has the ability to
sue the defendants for dilution in the first place.
The trademark dilution statute entitles “the owner of a famous mark
that is distinctive . . . to an injunction against another person who . . .
commences use of a mark or trade name in commerce that is likely to cause
dilution by blurring or dilution by tarnishment of the famous mark.” 15
U.S.C. § 1125(c)(1) (emphases added). The statute’s provisions are notably
cast in reference to the rights of an owner. For example, a consideration for
the “dilution by blurring” cause of action is whether “the owner of a famous
mark is engaging in substantially exclusive use of the mark,”
id. § 1125
(c)(2)(B)(iii), while an exception to the claim as a whole is “identifying and
parodying, criticizing, or commenting upon the famous mark owner or the
goods or services of the famous mark owner,” id. § 1125(c)(3)(A)(ii).
One other textual feature is worth highlighting. The plain text of 15
U.S.C. § 1125(c)(1) signals that at least two distinct marks need to be in play
for dilution to occur: “the famous mark” possessed by an owner, and an
imposter “mark or trade name” that causes dilution of the original mark. At
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least one district court has concluded that “[t]he plain language of these
provisions appears . . . to distinguish between ‘the mark’s owner’ and the
person against whom an action may be brought.” Derminer v. Kramer, 406
F. Supp. 2d 756, 758 (E.D. Mich. 2005). And that distinction is absent here:
the famous mark that Reed owns, and the one that defendants are allegedly
improperly using, are literally one-and-the-same.
We find Derminer’s reasoning particularly persuasive. The case, from
the Eastern District of Michigan, featured a dispute over a registered mark
that was jointly owned by the members of a rock band. One of the band’s
members passed away, and his interest in the trademark was inherited by the
eventual plaintiffs. Those plaintiffs sued under the Lanham Act after the
band’s remaining members released recordings without their consent or any
accounting of revenues. The magistrate judge recommended that when “a
mark is held by multiple owners[,] each owner would have an equal right to
use the mark such that a joint owner cannot be held as an infringer against
any other joint owner.” Derminer v. Kramer, No. 04-CV-74942-DT, 2005
WL 8154857, at *7 (E.D. Mich. July 14, 2005) (citation omitted).
The district court adopted the magistrate judge’s recommendations,
386 F.Supp.2d 905 (E.D. Mich. 2005), and subsequently denied the
plaintiffs’ motion for reconsideration,
406 F. Supp. 2d 756, 757 (E.D. Mich.
2005). In that denial, the district court interpreted the statute and came out
with a conclusion similar to the analysis above: under “the language of the
[trademark infringement] statute, there are two classes of parties: owners of
marks, and ‘another person.’”
Id. Accordingly, “Congress never intended
to create a trademark dilution cause of action between owners” of the same
mark.
Id.
Reed asserts that Derminer is of little use because it references patent
law, which allegedly embraces co-ownership and allows for the distribution
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of licenses without consent from co-owners. She argues that trademark law,
in contrast, is premised on an indivisible, singular mark that
“communicate[s] information about the source of goods and services directly
to customers.” But that objection concerns an ex ante policy question of
whether marks should be issued to multiple individuals, not what to do once
co-ownership has been established. And, Reed’s objections regarding the
inapplicability of patent and trademark law do not displace the plain text
analysis that makes the cause exclusive to an “owner” alleging dilution by
“another person.” 15 U.S.C. § 1125(c)(1). The district court did not err in
concluding that Reed could not assert a Lanham Act trademark dilution claim
against the defendants.
V.
Lastly, Reed appeals the summary judgment over her false advertising
and false designation of origin claims. Both causes of action stem from the
Lanham Act’s provisions regulating unfair competition. Section 43(a) of the
Lanham Act provides:
(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact,
which--
(A) is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics, qualities, or
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geographic origin of his or her or another person’s goods,
services, or commercial activities,
shall be liable in a civil action by any person who believes that
he or she is or is likely to be damaged by such act.
15 U.S.C.A. § 1125. These provisions “create[] two distinct bases of liability:
false association, § 1125(a)(1)(A), and false advertising, § 1125(a)(1)(B).”
Lexmark,
572 U.S. at 122 (citation omitted).
A. False Advertising
With regard to false advertising, Reed alleges that the “[d]efendants’
unauthorized use of [her] JADE Mark . . . in conjunction with the promotion
and provision of live entertainment services constitutes unfair competition
and false advertising.” More specifically, she claims that in using the JADE
mark, the defendants falsely advertised that “Holloway is a member of the
group Jade” and “that the performances promoted and provided by
Defendants are those of the group Jade.”
The district court granted summary judgment for the defendants for
two overlapping reasons. First, it noted that both of Reed’s unfair
competition theories hinged on the incorrect premise that defendants were
using the JADE mark in an unauthorized manner. Summary Judgment
Decision, 699 F. Supp. 3d at 586. Second, it observed that the factual record
lacked any evidence that defendants’ use of the JADE “mark in commerce
proximately caused Plaintiff to suffer injuries to commercial interests in
business reputation or sales.” Id.
Both explanations are sound. Reed’s purported Lanham Act injuries
are premised on “defendants’ unauthorized use” of the JADE mark, but as
detailed above, Harris and Marshall, as co-owners, are allowed to use the
mark as they so choose—including licensing its use for performances that
include Holloway. And as for the injury concern, the Supreme Court held in
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Lexmark that “to come within the zone of interests in a suit for false
advertising under § 1125(a), a plaintiff must allege an injury to a commercial
interest in reputation or sales.” 572 U.S. at 131–32.
Reed’s assertions of error as to false advertising are difficult to
decipher. She claims that she satisfied “the minimum requirement of
alleging an injury to a commercial interest in reputation or sales.” But the
proceedings are at the summary judgment stage, where the nonmoving party
must “make a showing sufficient to establish the existence of an element
essential to that party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986) (emphasis added). Said otherwise, while allegations of injury are
sufficient to withstand a motion to dismiss, evidence of injury is required to
survive a motion for summary judgment.
And evidence of any “injury to a commercial interest in reputation or
sales” is lacking from the record. Lexmark, 572 U.S. at 132. Reed’s best
allegation is that in marketing materials for the 2024 “R&B Block Party”
concert, the event’s promoters created social media posts that included a
Jade song that featured Reed’s voice. But with respect to the Lanham Act,
Reed concedes that “[a] person’s name, image, or likeness cannot function
as a trademark such that it affords a plaintiff a cause of action for trademark
infringement,” and in any event, the promoters who made the
advertisements in question are not parties to this suit.
Finally, Reed claims commercial injury through “lost opportunities
such as the creation of new compositions under JADE name and subsequent
profits from new compositions”; “business reputation in the form of
deliberate exclusion from promotional appearances under JADE name”; and
lost “performances under the JADE name.” Notwithstanding the lack of
evidence to support these theories, the defendants’ co-ownership of the
JADE mark does not exclude Reed from using the mark as she pleases. In
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other words, the defendants’ use of the JADE mark has not caused Reed to
“los[e] opportunities” associated with the mark; she, as a co-owner, has the
right to pursue those opportunities consistent with the (lack of) conditions
linked to her ownership interests. Reed has accordingly not evidenced the
injury necessary to sustain her false advertising claim.
B. False Designation of Origin
As for her false designation of origin (also known as false association)
claim, Reed asserts that the defendants’ “unauthorized use” of the JADE
“mark” and her “voice and likeness in commerce” was “likely to deceive
consumers as to the origin, source, sponsorship, or affiliation of Defendants’
services.” She specifically claims that the defendants’ illegal use of the
JADE mark was “likely to cause consumers to believe” that the HollowayMarshall-Harris performances were “affiliated with or sponsored by” her.
The district court dismissed Reed’s false designation of origin claim for the
same reasons as its dismissal of the false advertising claim: (1) she failed to
plead any injury to her commercial interests; and (2) even if she did fall within
the statute’s zone of interests, her injuries were not proximately caused by a
violation of the Lanham Act.
The second rationale is dispositive here. 5 As the district court aptly
explained, even if Reed fell “within the zone of interests” for a false
designation of origin claim, “the result would be the same because [her]
Lanham Act claims are all premised on allegations that Defendants are using
the [JADE] mark without authorization.” Reconsideration Ruling, 2024 WL
1468702 at *13; cf. Lexmark,
572 U.S. at 133 (barring “suits for alleged harm
that is ‘too remote’ from the defendant’s unlawful conduct”). Here, as to
_____________________
5
We express no determination as to whether a false designation of origin claim, as
opposed to a false advertising claim, requires proof of commercial injury.
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the ownership rights of the mark itself, Harris and Marshall have not engaged
in “unlawful conduct”: their ownership rights afford the authority to (1)
perform under the mark and (2) license Holloway as a guest to perform with
them. Those facts doom Reed’s theory of liability as to her false designation
of origin claim.
VI.
This case is illustrative of the perils associated with co-ownership of a
mark, and serves as a clarion call that parties considering such should
establish an agreement outlining their contractual rights in the event they
part ways. At bottom, the Lanham Act does not support Reed’s theories of
liability against her mark co-owners or their licensee, and accordingly, we
AFFIRM the summary judgment in the defendants’ favor.
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