Michael Jackson tribute act challenges singer’s TM
Las Vegas tribute act files suit against the artist’s estate | MJ Live seeks to clear the way for hit show to tour the US | Singer’s estate claims impersonator’s image on posters could mislead consumers.
A Michael Jackson tribute act has filed a suit against the singer’s estate, requesting an order stating its Las Vegas show and logo does not infringe the estate’s trademarks.
The complaint, filed in the US District Court for the District of Nevada on 17 January, sought declaratory and other relief regarding the use of ‘MJ Live’, a musical stage show that pays homage to Michael Jackson through impersonation and dance.
The act, which is produced by MJL 12 and opened at the Rio Hotel in Las Vegas in 2012, has performed over 3,600 shows and toured internationally in Mexico, Guatemala, and Tahiti.
The plaintiffs argued that as a result of its long use of the ‘MJ Live’ trademark consumers located in Nevada, throughout the US, and even the world, have come to associate ‘MJ Live’ trademark with the show.
Jackson’s estate alleges trademark infringement
MJL 12’s bid for declaratory relief follows a complaint by The Michael Jackson estate, which argued that the logo for MJ Live being used to advertise the show infringes the estate’s rights.
The estate said MJL 12 is using the ‘MJ’ mark “in a stylised typeface significantly larger than other writing—coupled with pictures of what appears to be Michael Jackson to advertise its show.”
While “the person in the pictures is not Michael Jackson”, “the average consumer would likely be misled to believe that the picture is Michael Jackson and that the show is associated with the Jackson Estate,” it continued.
The estate is also a co-producer of the broadway show ‘MJ the Musica l’ and the logo used for the MJ Live show is “confusingly similar” to the broadway musical show, said the estate.
Trademark registration
In July 2019, Triumph, named as one of the defendants, filed a US trademark application seeking registration of the ‘MJ’ mark for entertainment services, including live performances.
Despite not using the mark in commerce at that time, Triumph indicated an intent to use it in the future.
Triumph submitted a statement of use to the US Patent and Trademark Office (USPTO) on December 19, 2022, claiming a first use date of October 31, 2010.
The supporting statement included a printout from Michael Jackson's official website showing the ‘MJ the Musical’ mark.
The USPTO approved the application, and on February 28, 2023, issued US a trademark registration.
In addition to alleging infringement of the MJ mark, the estate also sent cease and desist letters to venues in California, Florida, Illinois, Ohio, and Wisconsin where MJL 12 performs its MJ Live shows and demanded that these venues “cancel the MJ Live performances altogether.”
The tribute act sought an injunction to prevent the estate from interfering with its current and potential contracts for performing ‘MJ Live’, a declaration stating the ‘MJ Live’ trademark is not infringing, and for the USPTO to cancel the trademark registration for the ‘MJ’ mark.
The attorneys representing MJL 12 are W West Allen and Jonathan Fountain from Howard & Howard.
The defendant's representatives are not yet available.
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