Kanye West, Taylor Swift, Kendall Jenner: When celebrities are sued for trademark infringement

By Audrey Ogurchak
November 3, 2016

Kanye West with Kim Kardashian at the 2015 MTV Video Music Awards held at the Microsoft Theater in Los Angeles, USA.

Kanye West with Kim Kardashian at the 2015 MTV Video Music Awards held at the Microsoft Theater in Los Angeles, USA.

Although celebrities are generally protective of their own brands, they sometimes can be careless in their use of other’s intellectual property. Most of us typically hear about musicians and other artists being sued for copyright infringement, such as the famous case involving Pharrell Williams, Robin Thicke and T.I.’s hit 2013 song Blurred Lines infringing on Marvin Gaye’s 1997 song Got to Give It Up. See here, here and hereHowever, cases where celebrities are sued for trademark infringement are much less common.

After his series of music videos released on the video-sharing site Vimeo in 2015, hip-hop recording artist, Kanye West, ran into some legal trouble when he was sued for trademark infringement by Michael Medina for using the word “Loisaidas” in the title. Medina began using the name “Loisaidas” in 2008 to refer to a Latin band that he had formed. The band originated from Manhattan’s Lower East Side, for which the name came from, as “Loisaidas” is a Spanish slang term for “lower east siders.”

In 2015, Kanye West and Damon Dash created a series of videos, featuring the word “Loisaidas” that presented a narrative about a violent turf war for control of the Lower East Side’s drug business. The Southern District of New York’s District Court evaluated the videos and found that the term “Loisaidas” is spoken or appears a handful of times during the video and “is almost obviously used as the name of a place, rather than as a name of a group of people.” The Court also found that term was used in a more ambiguous context, where a character is identified as “One of the young stars of Loisaidas,” or when the narrator states that “if you wanna get in the Loisaidas, here’s your chance.”

The District Court rejected Medina’s claim, citing First Amendment protections. The Court evaluated West’s artistic work under the standards articulated in Rogers v. Grimaldi and Twin Peaks Productions, Inc. v. Publications Int’l Ltd, [1] considering whether the title has any artistic relevance to the work whatsoever and then, if it does, whether the application of the relevant factors indicates a particularly compelling likelihood of confusion that renders the title explicitly misleading. As to the first prong of the test, the Court found that the title was artistically relevant because the series of videos were about drug dealers seeking to acquire control of the drug trade in Manhattan’s Lower East Side, “Loisaidas” is the Spanish slang term for “lower east siders,” and the scenes were identifiably set in the Lower East Side. However, the title “Loisaidas” was not found to be explicitly misleading such to induce members of the public to believe the “work” was either created by or about Medina’s music group. In October 2016, Medina appealed the case to the US Court of Appeals for the Second Circuit.

Pop artist Taylor Swift has also faced similar infringement claims when she was sued by the clothing brand Lucky 13. Swift had previously stated that 13 is her lucky number and her Twitter handle is @taylorswift13. Lucky 13 alleged that Swift was ignoring its intellectual property rights and causing confusion by selling T-shirts bearing a four-leaf clover and “Lucky 13.” In late 2015, Swift and Lucky 13 entered into a settlement agreement concerning all claims in the action, just before the case was scheduled for trial. The terms of the settlement remain undisclosed, however, Swift was able to keep her Twitter handle, as it remains unchanged after this lawsuit.

In October of last year, West’s sisters-in-law, Kendall and Kylie Jenner were sued for trademark infringement by Island Company, LLC. Island Company owns the US Trademark “Quit Your Job, Buy A Ticket, Get A Tan, Fall In Love, Never Return.” (Registration No. 3,760,762). The Complaint alleged that the Jenner’s use of “Run Away, Fall in Love, Never Return” on tops sold at retailer Pacific Sunwear (PacSun) would “likely cause confusion, mistake and deception among customers, the public and trade as to whether Defendants’ products or services are affiliated with, sponsored by, or endorsed by” Island Company. The complaint was filed in October of 2015 and appears to have settled in January of 2016. The tops are no longer available in PacSun stores.

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[1] Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989); Twin Peaks Productions, Inc. v. Publications Int’l, Inc., 996 F.2d 1366 (2d. Cir. 1993).

The Author

Audrey Ogurchak

Audrey Ogurchak is a 3L at Syracuse University College of Law, pursuing a JD/MS in Computer Science. Audrey also received a B.S. in Chemical Engineering from Ohio University. She is currently focused in patent law and technology transactions. Audrey has spent a portion of her legal education assisting start up companies navigate through intellectual property, regulatory and market issues. She is currently the Technology Editor for Syracuse University's Journal of Science and Technology Law and the President of Syracuse's Intellectual Property Law Society.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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