The Legal Dance Off Over the “MJ” Trademark | Seyfarth Shaw LLP
Before we start the show, the casts of characters may drive you Off the Wall, so here’s a little primer to help you:
Triumph International, Inc. (“Triumph”) is a merchandise licensing company for the estate of Michael Jackson.
MJJ Productions, Inc. (“MJJ Productions”) is a California-based record label and the custodians of Michael Jackson’s estate.
MJL 12, LLC (“MJL 12”) is a third-party company behind the “MJ Live” tribute act in Las Vegas.
Now let’s begin…
On July 2, 2019, Triumph moonwalked into the USPTO with Application Serial No. 88497689, hoping to secure a registration for the mark “MJ” for use in connection with a medley of services including live and televised performances that span music, dance, drama, and comedy. This mark was filed under the “intent to use” section of the Lanham Act, signaling a future where the mark would be used in the commercial arena.
Triumph Inc. didn’t Stop ‘Til They Got Enough, obtaining five extensions to show actual use of the MJ mark in commerce. On December 19, 2022, Triumph filed a specimen of use with the USPTO: a picture of the marquee for MJ THE MUSICAL shining bright like a sequined glove at the Neil Simon Theatre in New York City, alleging use dating back to October 2010. On February 28, 2023, the USPTO granted U.S. Trademark Registration No. 6,991,973 to Triumph. Interestingly, the mark has not yet been proclaimed the King of Trademarks!
With registration in hand, MJJ Productions really Wanted to Be Starting Something. The battle lines were drawn when MJJ Productions told MJL 12 to Beat It, claiming trademark infringement and violation of the right of publicity through use of the King of Pop’s likeness. This really put MJL 12 in a Jam. Would MJL 12 accept defeat without letting any Blood on the Dancefloor, or would they tell MJJ Productions to Leave Me Alone?
MJL 12 decided to Rock With MJJ Productions to see who’s Bad. Specifically, MJL 12 retaliated with a lawsuit against MJJ Productions and Triumph in Nevada, seeking declaratory judgment in its favor regarding trademark infringement and right of publicity. This legal Thriller challenges Triumph’s MJ trademark and seeks a declaration that MJL 12’s “MJ Live” show does not infringe the MJ mark and does not constitute a violation of the right of publicity. The drama intensifies with allegations of “MJ THE MUSICAL” and “MJ LIVE” being confusingly similar, leaving fans puzzled, whispering Who Is It?
In its pleadings, MJL 12 asks the court to Remember the Time. Since 2012, their “MJ Live” logo has been a constant feature, with over 3,800 performances under their belt. MJL 12 also tries to undermine Triumph’s registration for MJ, challenging the claimed first use date in 2010 in light of the 2022-dated specimen submitted with Triumph’s application and the start of MJ the Musical’s marketing around 2019 or 2020. This discrepancy will make anyone Scream!
Navigating the intricacies of these intellectual property law arguments is not as Black or White as it seems. This lawsuit dances on the edge of legal nuances at the intersection of trademark law and the right of publicity. With time-sensitive defense strategies at play, the case, MJL 12 LLC v. MJJ Productions LLC, spins into a legal showdown, leaving everyone in suspense, wondering who will emerge as the Man in the Mirror, claiming Victory in this battle over the legacy of the King of Pop.
