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Fight Over ‘Rocky Top’ Rages On In Tennessee

KNOXVILLE (CN) - Developers wishing to use the name "Rocky Top" to market goods and services have been granted time to file a supplemental response to a motion that it be enjoined from moving forward with its plans.

The decision by Chief U.S. District Judge Thomas Varlan is the latest development in a case pitting a famous Nashville music publisher against a developer and a small Tennessee city who want to use the name of one of country music's most famous songs to give their community a bit of panache.

The case is currently awaiting action by the 6th U.S. Circuit Court of Appeals. In the meantime, the parties continue to wage a "motion" war in the district court to block any steps that might be taken on the ground to the plan forward.

"Rocky Top" is a bluegrass-tinged country song written by Felice and Boudleaux Bryant, the husband and wife team best known for penning numerous Everly Brothers hits, including "All I Have to Do is Dream" and "Bye Bye Love."

"Rocky Top," written in 1967 and recorded by the Osborne Brothers the same year, is a city-dweller's lament over of the loss of the simpler lifestyle they left behind in Tennessee. It currently one of 10 songs named Tennessee's official state song.

House of Bryant Publications LLC, which owns the rights to the song, sued Lake City, Tenn., a community of 1,700 in East Tennessee, Rocky Top Tennessee Marketing and Manufacturing Co., and five individuals in March to stop the city from changing its name to Rocky Top, Tenn.

House of Bryant has granted the University of Tennessee worldwide exclusive rights to its "Rocky Top" trademark. It argues that the phrase is "an immediately recognizable and highly distinctive trademark most strongly associated with plaintiff's primary licensee, the University of Tennessee," according to court documents.

The publisher wanted to prevent the eastern Tennessee city and the developers from appropriating the name for the community or any other use.

A federal judge denied House of Bryant's request for preliminary injunction in May, finding that the city would not be using House of Bryant's "Rocky Top" trademarks in commerce, and that the developer defendants did not plan to use or other infringe on the publisher's marks.

House of Bryant appealed to the 6th Circuit, but the city held a vote on June 26, 2014, officially changed its name to Rocky Top.

The 6th Circuit decided on Oct. 2 to hold the appeal in abeyance, which prompted the parties to file a series of cross motions.

Now, however, Judge Varlan seems more inclined to side with the publisher when and if the case is remanded back to his court.

In a ruling n House of Bryant's latest request for injunctive relief, Varlan said several crucial factors weigh in the publisher's favor: strength of mark, relatedness of the goods, similarity of the marks, marketing channels used, likely degree of purchaser care, defendants' intent in selecting the mark, and likelihood of product lines expansion.

"In sum, the analysis of eight factors suggests that it is likely that the developer defendant's use of 'Rocky Top' creates a likelihood of confusion," he wrote.

The developers would have a hard time winning a fair use claim because they are not using the "Rocky Top" marks in good faith, the court held.

"The developer defendants were seemingly instrumental in the City of Lake City, Tennessee changing its name to Rocky Top, Tennessee. Prior to the city changing its name from Lake City to Rocky Top, the developer defendants were aware of plaintiff's trademarks, but nonetheless made plans to build a Rocky Top theme park, saying, 'the magic of that name [Rocky Top] is going to bring [tourists] in'," Varlan wrote, citing case documents. "They also said, 'Success comes in a name - the name of Rocky Top.' Even more, the developer defendants recognized that the theme-park project could proceed only if the city changed its name."

Varlan said the lack of direction from the 6th Circuit was the only thing preventing him from granting the publisher the injunction it has long sought; in the meantime he granted the developers leave to file a supplemental answer to the House of Bryant's petition.

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