UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

SLEP-TONE ENTERTAINMENT 

CORPORATION,

Plaintiff, 

v.

DANIEL ROBERTO, et al., 

Defendants.

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Case No. 12-cv-5750

Judge John W. Darrah

MEMORANDUM OPINION AND ORDER

Plaintiff Slep-Tone Entertainment Corporation (“Slep-Tone”) has brought this action 

against several Defendants, alleging, inter alia, infringement of Slep-Tone’s trademarked 

karaoke discs. Defendants Gary DeLong, Arrowsound Entertainment (“Arrowsound”), and 

D&R Catering Co., Corner Clubhouse Bar and Grill d/b/a Shanahan’s Pub, Inc. 

(“D&R Catering”) moved to dismiss the Amended Complaint, pursuant to Fed. R. Civ. P. 

12(b)(6), for failure to state a claim for relief. Alternatively, Defendants moved for severance 

based on improper joinder.1

 After the Motions were filed and briefed, Slep-Tone dismissed 

D&R Catering with prejudice. For the reasons presented below, DeLong and Arrowsound’s 

Motion to Dismiss is denied, and the Motion to Sever is granted. Defendants DeLong and

Arrowsound are dismissed, for improper joinder, without prejudice. 

BACKGROUND

Slep-Tone, a North Carolina corporation, is a manufacturer and distributor of karaoke 

accompaniment tracks sold under the name “Sound Choice.” (Am. Compl. ¶¶ 16-17.)2

 

Slep-Tone owns federal trademark registrations for the “Sound Choice” word and design marks

 1 None of the Defendants has filed a reply brief in support of their Motions. 

2 The following facts are taken from the Complaint, which are assumed to be true for the 

purposes of a motion to dismiss. See Reger Dev., LLC v. Nat’l City Bank, 592 F.3d 759, 763 (7th 

Cir. 2010).

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(the “Sound Choice trademarks”). (Id. ¶¶ 53-56.) Slep-Tone alleges that its trademarked 

karaoke recordings have been illegally copied, shared, distributed, sold by or to Defendants for 

use without paying Slep-Tone and without Slep-Tone’s consent. When the Slep-Tone’s pirated 

karaoke recordings are used to perform karaoke shows, the Sound Choice trademarks are 

displayed on the video screen. (Id. ¶ 21.) 

On July 23, 2012, Slep-Tone filed its initial Complaint against twenty separately named 

defendants, including individual karaoke entertainers, associated corporate entities, and 

restaurants providing karaoke entertainment. Slep-Tone subsequently dismissed various 

Defendants and filed an Amended Complaint, which asserts claims for trademark and/or trade 

dress infringement (Count I); unfair competition in violation of the Lanham Act, 15 U.S.C. 

§ 1125(a) (Count II); and a state law claim under the Illinois Deceptive Trade Practices Act

(Count III). DeLong is a partner-owner of Arrowsound, and both are in the business of 

providing karaoke entertainment. (Am. Compl. ¶ 9.) Slep-Tone has filed a number of similar 

cases in other jurisdictions across the country.

LEGAL STANDARD

Federal Rule of Civil Procedure 8(a) requires that the plaintiff provide “a short and plain 

statement of the claim showing that the pleader is entitled to relief.” Rule 8 “does not require 

‘detailed factual allegations,’ but it demands more than an unadorned, the-defendant-unlawfullyharmed-me accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic 

Corp. v. Twombly, 550 U.S. 544, 555 (2007)). Under the Federal Rules, the defendant can assert 

a defense that the plaintiff failed “to state a claim upon which relief can be granted.” Fed. R. 

Civ. P. 12(b)(6). To defeat a motion to dismiss under Rule 12(b)(6), a plaintiff must plead 

sufficient factual matter to state a claim for relief that is “plausible on its face.” Iqbal, 556 U.S. 

at 578 (quoting Twombly, 550 U.S. at 570). To meet the plausibility standard, the plaintiff must 

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put forth enough “facts to raise a reasonable expectation that discovery will reveal evidence” 

supporting the plaintiff’s allegations. Brooks v. Ross, 578 F.3d 574, 581 (7th Cir. 2009) (quoting 

Twombly, 550 U.S. at 556). A 12(b)(6) motion does not evaluate “whether a plaintiff will 

ultimately prevail” but instead whether the plaintiff is entitled to present evidence in support of 

the claims. AnchorBank, FSB v. Hofer, 649 F.3d 610, 614 (7th Cir. 2011) (internal quotation and 

citation omitted). 

ANALYSIS

To state a claim for trademark or trade dress infringement under the Lanham Act, a 

plaintiff must allege that: (1) he owns a protectable trademark, and (2) the use of that mark by 

the defendant is likely to cause confusion among consumers. Segal v. Geisha NYC LLC, 517 

F.3d 501, 506 (7th Cir. 2008); see also Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th 

Cir. 2001). A service mark is “in use in commerce” when the mark “is used or displayed in the 

sale or advertising of services and the services are rendered in commerce.” 15 U.S.C. § 1127. 

Courts use the same analysis for deciding whether a plaintiff has stated a claim for unfair 

competition. See, e.g., Flentye v. Kathrein, 485 F. Supp. 2d 903, 918 (N.D. Ill. 2007) (“To state 

a claim of unfair competition under the Lanham Act, Plaintiffs must allege that (1) their mark is 

protectable, and (2) Defendants’ use of the mark is likely to cause confusion among 

consumers.”). Here, Defendants do not dispute that Slep-Tone has alleged ownership of a valid 

and protectable mark. Rather, Defendants argue that Slep-Tone has failed to allege Defendants 

used Slep-Tone’s trademark in a manner likely to cause confusion. 

Slep-Tone has alleged that “Defendants’ use of the Sound Choice Marks, or of the Trade 

Dress, or both is likely to cause confusion, or to cause mistake, or to deceive the Defendants’

customers and patrons into believing that the Defendants’ services are being provided with the 

authorization of the Plaintiff and that the Defendants’ music libraries contain bona fide Sound 

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Choice accompaniment tracks.” (Compl. ¶ 92.) Slep-Tone has likewise alleged that 

“Defendants display SLEP-TONE’s registered trademarks to their customers or potential 

customers for purposes of advertising to their customers the quality and superiority that is 

associated with SLEP-TONE products” and that “Defendants, both [Karaoke Jockeys] and 

venues, directly benefit from the advertisement of SLEP-TONE’s registered trademarks.” (Id. ¶¶ 

34-35.) Construing all inferences in Slep-Tone’s favor, as is required on a motion to dismiss, 

these allegations, taken in context with the other allegations of the Amended Complaint, 

plausibly state a claim for trademark infringement. Likewise, Slep-Tone has stated a claim for 

unfair competition under 15 U.S.C. § 1125(a). Slep-Tone has alleged that Defendants’ use of 

counterfeit karaoke tapes with the Sound Choice trademarks is likely to cause confusion among 

customers (see Am. Compl. ¶¶ 98-99, 104-05) and that this unfair competition has harmed SlepTone and Slep-Tone’s legitimate customers (id. ¶¶ 106-07). 

For the same reasons, Slep-Tone has also stated a claim under the Illinois Uniform 

Deceptive Trade Practices Act (“DTPA”), 815 ILCS 510/2. Among other things, the DTPA 

provides that “[a] person engages in a deceptive trade practice when . . . the person : . . . causes 

a likelihood of confusion or misunderstanding as to the source, sponsorship . . . . [etc.].”

815 ILCS 510/2(a)(2). Slep-Tone’s DTPA claim mirrors its Lanham Act claims; where factual 

allegations underlying a Lanham Act claim also form the basis for a claim under the DTPA, the 

DTPA claim “must rise or fall based on the Lanham Act claim.” MJ & Partners Rest. Ltd. 

P'ship v. Zadikoff, 10 F.Supp.2d 922, 929 (N.D. Ill. 1998). Defendants’ Motion to Dismiss is

denied.3

 

 3 Defendants have put forth various other arguments that will not be addressed, as they 

are inappropriate on a motion to dismiss. 

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Joinder

Under Federal Rule of Civil Procedure 20(a)(2), defendants “may be joined in one action 

as defendants” if the following two conditions are met: (1) “any right to relief is asserted against 

them jointly, severally, or in the alternative with respect to or arising out of the same transaction, 

occurrence, or series of transactions or occurrences,” and (2) “any question of law or fact 

common to all defendants will arise in the action.” Fed. R. Civ. P. 20(a)(2)(A)-(B). “On motion 

or on its own, the court may at any time, on just terms, add or drop a party.” Fed. R. Civ. P. 21.

Defendants argue that they should be severed from this action because they have no 

relationship with each other and were not involved in any of the same “transaction, occurrence, 

or series of transactions or occurrences” with any of the other Defendants. Slep-Tone responds 

that joinder is proper based primarily on its allegation that the infringement stems from its 

allegedly pirated karaoke tapes. 

Courts in this district have repeatedly recognized that similarity of claims between a 

plaintiff and various defendants is not sufficient for joinder. See, e.g., McDowell v. 

Morgan Stanley & Co., 645 F. Supp. 2d 690, 697 (N.D. Ill. 2009) (“One or more defendants’

similar conduct, without anything more, does not rise to a sufficient level that would justify 

joining those defendants in a single action pursuant to Rule 20.”); SB Designs v. Reebok Int’l, 

Ltd., 305 F. Supp. 2d 888, 892 (N.D. Ill. 2004) (“The fact that the defendants allegedly violated 

the same trademark does not mean that plaintiffs’ claims against them arise out of the same 

transaction or occurrence.”); Androphy v. Smith & Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D.

Ill. 1998) (holding that defendants in patent-infringement case who sold different products and 

were competitors of one another were improperly joined); Pergo, Inc. v. Alloc, Inc., 262 F. Supp.

2d 122, 128 (S.D.N.Y. 2003) (“The fact that two parties may manufacture or sell similar 

products, and that these sales or production may have infringed the identical patent owned by the 

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plaintiffs is not sufficient to join unrelated parties as defendants in the same lawsuit pursuant to 

Rule 20(a).”). Indeed, courts in other districts addressing similar lawsuits by Slep-Tone have 

held that Slep-Tone’s allegations of infringement are insufficient to join many defendants. See 

Slep-Tone Entm’t Corp. v. Ellis Island Casino & Brewery, et al., No. 2:12-CV-239-KJD-NJK, 

2013 WL 530905 (D. Nev. Feb. 11, 2013); Slep-Tone Entm’t Corp. v. Mainville, et al., No. 3:11-

cv-122, 2011 WL 4713230 (W.D.N.C. Oct. 6, 2011). 

Here, there are no allegations that Defendants DeLong or Arrowsound were involved in 

any “transaction, occurrence, or series of transactions or occurrences” with any of the other 

Defendants. Likewise, Slep-Tone does not allege that it engaged in any transaction with any of 

the Defendants; rather, it essentially admits that Defendants are virtual strangers to it and each 

other and that the only commonality is that Defendants at some point in time allegedly infringed 

on Slep-Tone’s trademark. Because Slep-Tone has failed to allege a basis for joinder, it is proper 

to sever Defendants DeLong and Arrowsound from this matter. If Slep-Tone wishes to proceed 

against those Defendants, Slep-Tone must file a new action, including paying a filing fee, against 

DeLong and Arrowsound. If Slep-Tone so proceeds, Slep-Tone should indicate that any newly 

filed case is related to this matter. 

CONCLUSION

For the reasons stated above, Defendants DeLong and Arrowsound’s Motion [95] to 

Dismiss is denied and the Motion to Sever is granted. Defendants DeLong and Arrowsound are 

dismissed without prejudice. It is further ordered that if Slep-Tone wishes to proceed against 

those severed Defendants, Slep-Tone must file a new action against DeLong and Arrowsound. 

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Defendant D&R Catering’s Motion [87] is denied as moot; D&R Catering is dismissed 

with prejudice based on Slep-Tone’s voluntary dismissal. 

Date: October 22, 2013 ______________________________

JOHN W. DARRAH

United States District Court Judge

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