Om Records, LLC v. OM Developpement, SAS

Background

Om Records alleged that it had operated a music label since 1995 and that BMG France and Olympique de Marseille launched a label called “OM Records” in 2020. The defendants used the name and related social-media accounts while selling or streaming music through online platforms. Om Records asserted that the use caused confusion, including among at least some California consumers.

Om Records brought four claims: unfair competition under Section 43(a) of the Lanham Act, common-law trademark infringement under California law, unfair competition under California’s Unfair Competition Law, and intentional interference with prospective economic relations.

Personal Jurisdiction

The OM Defendants and BMG France moved to dismiss for lack of personal jurisdiction, meaning they argued that this federal court could not exercise authority over them. The court found that the French defendants were incorporated and headquartered in France and were not subject to general jurisdiction in California.

The court also found that Om Records had not made the required initial showing that the French defendants purposefully directed their conduct toward California or the United States. The court concluded that the defendants’ knowledge of Om Records’ California connections, use of California-based internet platforms, relationship with the California-based artist Trackdilla, and OM Developpement’s abandoned U.S. trademark application were insufficient on the current record.

The court nevertheless found that limited jurisdictional discovery was appropriate because additional evidence about the defendants’ use and distribution of the “OM Records” mark in California or the United States could clarify the jurisdictional dispute. The court therefore deferred ruling on the French defendants’ motions to dismiss for lack of personal jurisdiction and referred jurisdictional discovery matters to a randomly assigned magistrate judge.

Forum Non Conveniens

The French defendants also argued that the case should be dismissed under forum non conveniens, a doctrine allowing dismissal when another available forum is substantially more appropriate. The court denied that request. It held that the defendants had not met their heavy burden of showing that an adequate alternative forum existed, noting that their arguments concerning courts in the United Kingdom, France, and the European Union were insufficiently supported.

Failure to State a Claim

The court denied the OM Defendants’ motion to dismiss for failure to state a claim. It held that Om Records adequately alleged domestic use of the “OM Records” mark because the defendants allegedly made music and videos bearing the mark available for sale and streaming to U.S. consumers through internet platforms. The court emphasized that the Lanham Act does not cover conduct occurring solely outside the United States, but found that Om Records alleged that the defendants placed the mark in domestic commerce.

The court also found that the nearly identical names of the two music labels plausibly suggested a likelihood of consumer confusion. The court therefore declined to dismiss the state-law claims against the OM Defendants because those claims were argued to rise and fall with the federal trademark claim.

The court granted the BMG Defendants’ motion to dismiss for failure to state a claim. It found that the amended complaint did not adequately identify what BMG US or BMG France allegedly did to support liability. The court also found that the allegations that BMG US and BMG France were a “single enterprise” were too sparse to support treating one company’s conduct as the other’s conduct. Om Records may file an amended complaint within 21 days.

Sealing Motion and Other Orders

The court granted in part and denied in part Om Records’ administrative motion to file materials under seal. It granted sealing for an exhibit containing confidential business information but denied sealing for redacted portions of Om Records’ opposition. Om Records was ordered to file an unredacted version of that opposition on the public docket within seven days.

The court also vacated the previously ordered trial and pretrial dates. The parties were ordered to file a joint case-management statement within 90 days of the order or when jurisdictional discovery was completed, whichever came first.

Disposition

Judge Jeffrey White ruled as follows:

- The OM Defendants’ motion to dismiss for failure to state a claim was denied. - The BMG Defendants’ motion to dismiss for failure to state a claim was granted. - The defendants’ motion to dismiss on forum non conveniens grounds was denied. - Ruling on the French defendants’ motions to dismiss for lack of personal jurisdiction was deferred pending limited jurisdictional discovery. - Om Records’ motion to file materials under seal was granted, in part, and denied, in part.