A well-known strip club in Atlanta appears to have won its battle with a business that was planning to open a similar club in Chicago using the same name.
-M- Entertainment & Consultant Service Inc., the owner of Magic City in Atlanta, filed suit March 7 in Chicago's federal court against 17100 Inc., doing business as Magic City Chicago, and the company's owner Kimberly Walsh, accusing them of improperly using its name to bank off the brand's popularity.
Shortly after the suit was filed, U.S. District Judge Rebecca Pallmeyer granted the Atlanta club's request for temporary restraining order, which effectively prevented the Chicago club from opening on March 7 as planned.
And on Wednesday, the judge issued a permanent injunction that among other things, restricts Walsh from "opening or operating a nightclub with a name including either of the words 'Magic' or 'City,' or formatives or misspellings thereof, including, but not limited, to 'Majik,' 'Majic,' 'Magik', etc.'"
Pallmeyer noted that while she entered the injunction upon the agreement of the parties, "the defendants continue to deny liability and nothing in this order shall act as a finding or admission of liability of the defendants. The defendants preserve all of their rights and defenses to the claims in the complaint."
In its suit, the Atlanta club's owner asserts that Magic City has been operating since 1986 and is "a well-known and respected adult entertainment club."
The Chicago club, located at 17100 South Halsted Street in Harvey, began circulating advertisements through the internet and social media announcing their March 7 opening, according to the suit that notes the ads included images appropriating the Atlanta club's established branding.
The Atlanta club has held a trademark on the name since 1994, granting it an exclusive right to use the name to denote "adult entertainment services in the nature of dancing girls," the suit states.
"The name MAGIC CITY is displayed in large, red script type above the word CHICAGO in smaller, black plain type [in the social media advertisement]," the suit reads. "The obvious intended effect of the juxtaposition of the term CHICAGO below the words MAGIC CITY in this fashion is to convey the false impression that the Plaintiff Magic City is opening a Chicago nightclub like its MAGIC CITY nightclub in Atlanta."
The Magic City adult entertainment night club in Atlanta has earned fame in the rap community, with its name appearing in the lyrics of songs by artists that include Outkast, Jay-Z and Wyclef Jean.
In addition to trying to co-opt the club's street cred, Magic City Atlanta accused the Chicago club and its owner damaging its reputation with its "shabby and dilapidated" location.
"[Magic City Chicago] uses the MAGIC CITY trademark to trade on [Magic City Atlanta's] good will and to mislead patrons into believing they will be frequenting a club owned by, sponsored by, or affiliated with the MAGIC CITY nightclub referenced in popular music when, in fact, they are not," the suit alleges.
A legal representative of the Atlanta club sent the Chicago club a cease and desist letter March 6, in which it demanded the removal of anything with the Magic City name and the transfer of the internet domain name "magiccityofchicago.com" to the Atlanta company.
The Atlanta club claims in its request for an emergency restraining order, filed March 7, that Walsh initially denied using the trademarked name in a phone call with a legal representative of -M- Entertainment and refused to stop using it.
The same day the suit was filed, Pallmeyer issued the restraining order halting the club from opening its doors for its planned opening until they could hold a March 10 hearing.
That order was dissolved Wednesday with the entry of the permanent injunction, which, in addition to preventing Walsh from using the Magic City name, requires her to provide the plaintiff with the names of the club's owners, as well as its promoters.
The injunction also orders the defendants to post a "corrective" advertisement in all of the places, including websites and in social media, they advertised the club's opening stating the following:
“The nightclub that was scheduled to open last Friday at 17100 South Halsted Street, Harvey, Illinois is not affiliated in any way with Magic City of Atlanta. The owners apologize for any confusion they may have caused."
In addition, the order notes that Walsh --who is listed as "Wash" in the injunction, but Walsh in all of the other documents --and Tony Wash-- whose specific role is not identified -- must sit for depositions with the plaintiff's lawyers within 20 days and "provide truthful and fulsome testimony."
Records show -M- Entertainment is being represented by Sean B. Crotty, Elizabeth E. Richert and Eugene J. Schiltz of the Coleman Law Firm in Chicago, as well as Gary S. Freed of Thompson Hine LLP in Atlanta.
The defendants, 17100 Inc. and Walsh, are represented by Michael Joseph Kralovec of Kralovec Meenan LLP in Chicago.