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October 7, 2004.

DANIEL MELE, d/b/a Blizzard Records, and BLIZZARD RECORDS, INC., Plaintiffs,

The opinion of the court was delivered by: JOHN T. ELFVIN, Senior District Judge


Plaintiffs Daniel Mele d/b/a Blizzard Records and Blizzard Records, Inc. (collectively "Blizzard Records") filed this declaratory judgment action on June 21, 2002 against defendant Davidson & Associates, Inc. On February 24, 2003 plaintiffs filed an Amended and Supplemental Complaint ("ASC") seeking injunctive relief and damages in addition to a declaration of the parties' rights. Five causes of action are alleged. The first three causes of action seek a declaration that plaintiffs' use of the BLIZZARD RECORDS designation (1) does not infringe defendant's trademarks pursuant to 15 U.S.C. §§ 1114(1) and 1125(a), (2) does not constitute unfair competition under state law and (3) does not dilute defendant's trademarks under state or federal anti-dilution statutes. The fourth cause of action seeks a declaration that defendant's use of the "marks BLIZZARD and BLIZZARD ENTERTAINMENT in any aspect of the music industry is in violation of Plaintiffs' rights under 15 U.S.C. § 1125(a)" and plaintiffs therefore ask the Court to enjoin defendant's use of the BLIZZARD and BLIZZARD ENTERTAINMENT marks in the music industry. (ASC ¶ 37.) The fifth cause of action seeks damages and attorneys' fees for false designation of origin and unfair competition under 15 U.S.C. §§ 1125(a) and 1117.

Defendant has filed two motions for partial summary judgment. In the first such motion, defendant seeks a declaratory judgment that it has an incontestable right to use its BLIZZARD ENTERTAINMENT trademark in connection with computer programs for video and computer games pursuant to 15 U.S.C. § 1065. The second such motion is aimed at a portion of plaintiffs' fourth cause of action and plaintiffs' fifth cause of action. In particular, defendant claims that (1) it acquired rights in its trademarks before plaintiffs acquired any trademark rights in BLIZZARD RECORDS, (2) plaintiffs did not own any enforceable rights in the BLIZZARD RECORDS designation before August 1999 and (3) if plaintiffs did acquire trademark rights to BLIZZARD RECORDS, they abandoned those rights between 1987 and 1995. Thus, defendant seeks summary judgment declaring that plaintiffs' mark is not entitled to protection. Additionally, defendant seeks summary judgment dismissing plaintiffs' damages and attorneys' fees claims because defendant contends that there is no evidence of actual confusion and no evidence of any willful infringement on defendant's part. For the reasons set forth below, defendant's first Motion for Partial Summary Judgment will be denied and defendant's Second Motion for Partial Summary Judgment will be denied in part and granted in part. Plaintiffs' Use of the BLIZZARD RECORDS Mark.

  The facts in the light most favorable to the plaintiffs — the non-moving parties — are found as follows and are undisputed except where otherwise noted. Plaintiff Mele adopted the BLIZZARD RECORDS trademark in July 1986 for use in connection with the promotion of recording artists and the sale and distribution of pre-recorded music. He filed an assumed name certificate for "Blizzard Records Company" in Buffalo, N.Y. on July 14, 1986*fn2 and operated his business under the names "Blizzard Records" and "Blizzard Records, Inc." On July 13, 2000 plaintiff Mele filed an application for the BLIZZARD RECORDS trademark with the United States Patent and Trademark Office ("USPTO") for "computerized on-line retail store services featuring prerecorded compact discs and audio tapes featuring music; and promotion of recording artists via a global computer information network." The registration is still pending due to this action and to opposition pending at the Trademark Trial and Appeal Board. In November 2000 plaintiff Mele licensed the BLIZZARD RECORDS trademark and trade name to Blizzard Records, Inc.

  In 1986 plaintiffs began promoting a heavy-metal rock band known as "Zillion,"*fn3 with Mark Fretz, Mike Terrana, Kenny Kanowski and Vincent Mele*fn4 as members. During 1986 and 1987 Zillion toured and distributed musical recordings. No money was made from such touring or record distribution and plaintiff Mele used the money he made from his other businesses to pay Blizzard Records' expenses.*fn5 Plaintiffs promoted and provided services to Zillion; they provided the band with a bus for touring, arranged rehearsals and recording sessions, covered expenses incurred on tours and for rehearsals and recording sessions, promoted the band through media channels, distributed cassette demos and other promotional items such as T-shirts, posters and stickers during live performances and, at other times, designed the promotional items, arranged for performances, coordinated with recording studios and arranged for media attention and press releases. However, plaintiff Mele admits to not having any physical evidence of promotional materials showing the use of the mark BLIZZARD RECORDS with Zillion during this period. Moreover, Blizzard Records is mentioned rarely, if at all, in the magazine features that promoted Zillion.*fn6 Additionally, plaintiffs do not have documentation in any form relating to plaintiffs' costs during this time; plaintiffs claim all purchases of promotional items, wages to band members*fn7 and touring costs (including cost of gas, fuel and truck) were paid in cash. Zillion recorded its first album, "Heart of a King," on or around September 7, 1986 under the direction of Blizzard Records*fn8 and distributed under the BLIZZARD label.*fn9 It is unclear whether the BLIZZARD mark was displayed on the demo cassettes of Zillion's music.*fn10 Plaintiffs were not able to produce any finished copies or demos of the "Heart of a King" album bearing the BLIZZARD RECORDS mark.*fn11 Additionally, plaintiffs do not have any records showing the dates and amount of Zillion's record sales. Plaintiffs claim this is because everything was done on a cash basis.

  In 1987 two of the Zillion members left. The remaining two members — Kenny Kanowski and Vincent Mele — moved to California to continue to pursue their music careers under Blizzard Records' guidance. Zillion's last performance was in the mid-1980s. Until 1999 plaintiffs represented only two bands — Zillion and Chillin' Sun, formed in 1993 by Kanowski and Vincent Mele of Zillion. It is during this period — after Zillion's last performance in 1987 to 1995 when Chillin' Sun began to record its album — that is the factual focus of the dispute in this case.

  From 1987 to 1993 Blizzard Records provided studio time for its artists for rehearsing and recording, paid the artists for writing music and attracted new artists to the band by giving the existing members of Zillion "phone numbers to call."*fn12 (V. Mele Dep. at 59:10.) Zillion spent this time rehearsing and writing songs while Blizzard Records tried promoting itself in the music industry by "never passing up an opportunity to hand out a business card displaying the BLIZZARD mark." (Banas Decl. ¶ 23.) Plaintiffs claim that it was important for them to build the BLIZZARD RECORDS name as an independent record label. Yet, plaintiffs rarely, if ever, included the BLIZZARD RECORDS mark on their documents, letters, contracts*fn13 or promotional materials.*fn14

  In 1993 some of the members of Zillion formed a new band, "Chillin' Sun." As it had done with Zillion, plaintiff Mele and Blizzard Records supported and promoted Chillin' Sun by paying for rehearsal time and paying the two artists for writing songs. Blizzard Records arranged for Chillin' Sun to rehearse and record its music in California. Beginning in early 1995 plaintiffs arranged for an entertainment attorney to help secure a distribution agreement for Chillin' Sun's recording on the BLIZZARD label. In August 1995 plaintiffs secured Chillin' Sun's attendance at two live showcases,*fn15 circulated invitations to the showcases, and obtained numerous demo tapes of Chillin' Sun's songs for distribution to members of the music industry and general public. Again, as with services provided to Zillion, plaintiffs do not have any records identifying the costs, dates and locations of the goods and services — in particular, the promotional and recording services and concert support — provided by plaintiffs to Chillin' Sun.

  While Blizzard Records was working with Chillin' Sun sometime around 1993 or 1994, two of Chillin' Suns' members, Kanowski and Vincent Mele, were approached by the band "Steel Heart" to perform one of the songs Kanowski and Vincent Mele had originally written for the Chillin' Sun album. Blizzard Records allegedly negotiated the terms of the arrangement between the Chillin' Sun members and Steel Heart on behalf of the Chillin' Sun artists*fn16 and paid for rehearsal facilities for the recording. The Chillin' Sun song was released on Steel Heart's album entitled "Wait," which was not released under the Blizzard Records label and plaintiffs did not pay for the recording of the song. In fact, there were no references to Blizzard Records, Chillin' Sun or Danielle Mele on the Wait album.

  Between 1988 and 1994 plaintiffs did not entertain the public through any acts; the only public exposure of BLIZZARD RECORDS was through the already-distributed Zillion albums and possibly some Chillin' Sun demos on compact discs ("CDs"),*fn17 neither of which plaintiffs could produce. Until 1997 Chillin' Sun did not perform any live performances except two August 1995 showcases and Blizzard Records did not produce any T-shirts or posters and only produced one flyer advertising Chillin' Sun. When defendant's counsel asked plaintiff Mele how defendant was expected to know about Blizzard Records in 1994, plaintiff Mele did not have a coherent response. He first said that, if one wanted to find a company, one could. (Mele Dep. at 121.) He then said that Buffalo, N.Y. is "known for * * * [having] the world's biggest blizzard. * * * [Blizzard Entertainment] should have known to [go] down to the City Hall of Buffalo and check[] if anybody had the name Blizzard in Buffalo, New York." (Mele Dep. at 136-137. See generally Mele Dep. at 121-124, 137-139.)

  Between December 29, 1994 and 1997, Chillin' Sun worked with Blizzard Records and Mark's Custom Recording Service, Inc.*fn18 to produce Chillin' Sun's first release on the BLIZZARD label. Mark's Custom Recording Service, Inc. produced 1098 Chillin' Sun CDs in July 1997, of which almost 800 were distributed for free to the public between 1997 and 1999.*fn19 The CDs had the BLIZZARD RECORDS mark on them and also included a synopsis of Blizzard Records' role in the band's first album.

  Besides the handing out of several hundred CDs, plaintiffs did not perform any other activities until 1999 when they launched their website. The vast majority of the sales of the Chillin' Sun album occurred after 1999.

  Starting in August 1999 and continuing through today, Blizzard Records promotes and sells music and musical recordings internationally through the internet using the domain name "". Every CD that is sold on this website is produced by Blizzard Records and has the BLIZZARD RECORDS mark on it. Prior to the launch of their website, plaintiffs had only promoted Zillion and Chillin' ...

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