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Baltimore sues ex-Light City partners for trademark infringement

 Brooke Hall, Founder and CEO, and Justin Allen, Creative Strategist, at What Works Studio, concept designers behind the vision of Light City. (The Daily Record/Maximilian Franz).

Brooke Hall, left, and Justin Allen of What Works Studio, which partnered with Baltimore city earlier this year on Light City Baltimore, is now being sued by the city for alleged unauthorized use of the ‘Light City’ name. ‘I am not surprised they are attacking us after not holding up their end of the deal,’ Allen says. ‘We look forward to our day in court and having justice be served.’ (File photo)

Baltimore is seeking a court order to block former partners in the city’s Light City festival from using the phrase in their marketing efforts, saying it belongs to Baltimore.

In papers filed Wednesday in U.S. District Court, Baltimore argues it has a “common-law” trademark in “Light City” resulting from the city’s first use of the phrase in commerce.

Baltimore adds that its former partners, including What Works Studio LLC, have unlawfully “used, copied and imitated (the city’s) Light City marks to promote their business activities and obtain new business ventures using the name.”

Permitting the former partners to continue with these activities would undermine the city’s efforts to promote future Light City festivals by causing “consumer confusion” regarding who runs the event, Baltimore stated in its complaint.

The city added it has filed a trademark application for Light City and related symbols with the U.S. Patent and Trademark Office.

Justin Allen, What Works Studio’s chief marketing officer, said the lawsuit follows the city’s failure to honor its contract with the Baltimore-based company.

“I am not surprised they are attacking us after not holding up their end of the deal,” Allen said. “We look forward to our day in court and having justice be served.”

He said the company has been using the Light City phrase since 2013, well before Baltimore started using it.

The first large-scale international light festival in the United States, Light City Baltimore attracted more than 400,000 people for the week-long event in early spring and was estimated to have had an economic impact of nearly $34 million.

In its court filing, the city called Light City Baltimore “a resounding success,” even though the city lost $400,000 on the festival.

The 2016 festival “brought many economic and other benefits to Baltimore City,” the city stated in its complaint, adding that “it is not unusual for such festivals to run a deficit in their first year.”

Plans are under way for a Light City Baltimore 2017 in late March and early April, the city told the court, adding that it is considering holding the event in succeeding years as well.

Baltimore said it dropped What Works Studio and the other former partners for their alleged failure to book speakers for the festival’s conference portion. The city subsequently assigned those tasks to Baltimore Festival of the Arts Inc. and Baltimore Office of Promotion & The Arts Inc.

Baltimore wants the federal court to require the former partners to pay the city all profits from their allegedly illegal use of “Light City,” as well as compensatory and punitive damages and attorney’s fees.

In addition, the city wants the court to enter a judgment declaring that Baltimore and its entertainment divisions are “the exclusive owners of all rights in the Light City marks throughout the United States, including but not limited to in the State of Maryland, and that [the former partners], jointly and severally, possess no rights whatsoever in the Light City marks.”

The case is Mayor and City Council of Baltimore et al. v. What Works Studio LLC et al., No. 1:16-cv-03486-ELH.

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