UMG loses early round in trademark lawsuit over 'Republic' name

2 minute read

Universal Music Group logo is seen displayed in this illustration taken, May 3, 2022. REUTERS/Dado Ruvic

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  • UMG said its Republic Records unit faced consumer confusion with OpenDeal investment platform Republic
  • UMG doesn't own 'Republic' TM rights, didn't show confusion, court says

(Reuters) - A Manhattan federal court has rejected Universal Music Group's request for an order that would have barred the online investment platform Republic from advertising music-related services based on potential confusion with UMG's Republic Records.

U.S. District Judge Analisa Torres said Tuesday that UMG failed to prove it was likely to win its case or that OpenDeal Inc's use of the Republic name would cause UMG immediate harm.

Republic said in a Wednesday comment that the ruling "comprehensively addresses the issues raised in the litigation and decisively confirmed Republic's rights." UMG and its attorneys did not immediately respond to a request for comment.

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Republic Records was founded in 1995 and acquired by UMG in 2000. Artists on the label's roster include Taylor Swift, The Weeknd and Stevie Wonder.

OpenDeal's Republic was founded in 2016 and offers crowdsourced investments in fields including real estate, cryptocurrency and startups. Its "Republic Music" service allowed users to buy non-fungible tokens (NFT) in unreleased songs and receive royalties in return.

UMG sued Republic for trademark infringement last year, and Republic deleted its music investment page two months later, according to the judge. UMG asked the court for a preliminary injunction that would block Republic from using its name in connection with music-related investments.

But UMG provided little evidence that it used "Republic" by itself in advertising, and its trademark rights do not extend to the word "Republic" without "Records" after it, Torres said.

Torres also said that UMG had not shown consumer confusion was likely even if it had rights to "Republic." The companies' trademarks look different in the marketplace with their respective logos, and their products and services also "differ significantly," the judge said.

Republic does not offer music production, distribution or promotion like Republic Records, and Republic Records does not offer investment opportunities like OpenDeal's Republic, Torres said.

The case is UMG Recordings Inc v. OpenDeal Inc d/b/a Republic, U.S. District Court for the Southern District of New York, No. 1:21-cv-09358.

For UMG: David Donahue and Jason Jones of Fross Zelnick Lehrman & Zissu

For OpenDeal: Brett Perala and John Rosenberg of Rosenberg Giger & Perala

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Republic Records sues 'Republic' investment platform over trademarks

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com