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WHS ENTERTAINMENT VENTURES v. UNITED PAPERWORKERS INTERN. UNION
997 F.Supp. 946 (1998)
WHS ENTERTAINMENT VENTURES, et al.
v.
UNITED PAPERWORKERS INTERNATIONAL UNION
No. 3:97-1114.
United States District Court, M.D. Tennessee, Nashville Division.
March 11, 1998.
Lee Webb Campbell, II, Andrew J. Pulliam, Sherrard & Roe, Nashville, TN, Steven R. Gustavson, Parker H. Bagley-Bakers Botts, L.L.P., New York City, for Plaintiffs.
Lynn Allen Agee, United Paperworks Int'l, Nashville, TN, Mark Milton Brooks, Nashville, TN, Michael T. Anderson-Davis, Cowell & Bowe, San Francisco, CA, for Defendant.
MEMORANDUMJOHN T. NIXON, Chief Judge. Pending before the Court is the Defendant's Motion to Dismiss (Doc. No. 7), to which the Plaintiffs have filed a Response (Doc. No. 11). The Defendant in turn has filed a Reply (Doc. No. 13). For the reasons more fully elaborated below, the Court hereby grants the Defendant's motion, dismisses the federal claims in this action with prejudice, and dismisses the state law claims without prejudice for lack of jurisdiction. I. BACKGROUNDThe Wildhorse Saloon is a three-story restaurant and country music dance club situated on Second Avenue at the heart of downtown Nashville. The Wildhorse Saloon features a 3,300-square foot dance floor and stage, and is the location for the taping of the shows "Wildhorse Saloon" and "Wildhorse Saloon Concerts," both of which are broadcast over the Nashville Network (TNN) and watched by millions of viewers. It is legendary among country music fans, and has been labeled "the most celebrated `honky-tonk' since Gilley's near Houston was immortalized in the 1980 John Travolta movie `Urban Cowboy.'" Joe Edwards, Emphasis is on Dancing at Wildhorse Saloon, Peoria Journal Star, Jan. 2, 1990 at C-6. Approximately a million people per year visit the Wildhorse Saloon to eat, dance, and listen to country music stars such as Merle Haggard, Alan Jackson, Kris Kristofferson, and Waylon Jennings. Id. Even Tennessee's own Albert Gore has been known to
patronize the Saloon, though he has discreetly refrained from testing the dance floor. Id. As of late, however, the Saloon has attracted more than just the regular two-stepping crowd. Much to the Saloon management's consternation, in recent months its patrons have been approached by representatives of the United Paperworkers International Union ("Union"), the Defendants in this case. The representatives have been distributing flyers bearing a parody of the trademarked Wildhorse Saloon logo1 and listing a series of health violations, including such infractions as "dirty towels on plates," and "fruitflies over utensil bins," which were found by a health inspector at the Wildhorse Saloon restaurant. Below the list of health violations, the flyers also include: (1) a disclaimer stating that the health violations are not necessarily ongoing; (2) the words "A Public Service," and "UPIU Special Projects;" (3) a telephone number; and (3) a date, October 1997. It appears that the health violations reported in the flyers are accurate, as they were obtained by the Union's attorney from the Nashville, Tennessee Health Department. (See Brooks Aff. ¶ 12.) Presumably, the phrase "A Public Service" is included to highlight the public interest nature of the flyers, although the Union was motivated to target the Wildhorse Saloon because of its labor dispute with a distantly related company. Specifically, the Union's dispute is with Shepherd Tissue, a company which has a common investor with Levy Limited Partnership ("Levy"), the manager of the Wildhorse Saloon Restaurant. It is not been alleged that the leafleting has been anything but peaceful. The Plaintiffs, WHS Entertainment Ventures, the owner of the Wildhorse Saloon, WHS Licensing Limited Partnership, the owner of the Wildhorse Saloon Trademark,2 and Levy, seek compensatory and injunctive relief against the Union. They have asserted several causes of action, including violations of the Lanham Act, 15 U.S.C.A. §§ 1501 et seq., Tennessee trademark law, interference with prospective economic advantage, and unfair competition. However, the parties have most extensively briefed the issue of whether the Union's actions violate the Plaintiffs' trademark rights under the Lanham Act.
1. The logo featured in the flyers depicts a drawing of a long-maned horse enclosed by two rings of triangles. The rings are broken by the words "WILDHORSE" above the horse, and "SALOON" below it. The logo is nearly identical to the trademarked Wildhorse Saloon logo, except that the horse in the flyers is emaciated and has drops of sweat running from its face, while the horse in the actual logo is muscular and healthy. 2. WHS Licensing Limited Partnership is the holder of the Service Mark "Wildhorse Saloon," which was registered originally by Nuckolls, Inc.—Registration No. 1,965,992, and is dated April 2, 1996. Furthermore, WHS Licensing own the Wildhorse Saloon Design Service Mark, which has a Registration Number 2,045,167, and is dated March 11, 1997. The Service Mark was also originally obtained by Nuckolls, Inc. 3. The lower court in IAM had come to a similar conclusion. See IAM v. Winship Green Nursing Center,914 F.Supp. 651, 655 & n. 7 (D.Me.1996). 4. The law in the Sixth Circuit is unclear as to whether the Union's conduct constituted "commercial speech," as well as to what degree commercial speech is protected from the reaches of the Lanham Act. See Semco, Inc. v. Amcast, Inc.,52 F.3d 108, 110-13 (6th Cir.1995) (declining from interpreting the meaning of "commercial" for purposes of the Lanham Act).
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