A New York federal judge has dismissed a trademark suit from Latin band Loisaidas against Kanye West and Damon “Dame” Dash for their film of the same name.
The band’s founder Michael Medina has several registered trademarks for “Loisaidas” for music related goods, including audiotapes, CDs, downloadable MP3s, ringtones, and video recordings. “Loisaidas” is also a Spanish slang term for people who live on the Lower East Side of Manhattan. According to the complaint that Medina filed last year, Dash and West used the title Loisaidas for their eight-part movie musical about drug empires and turf wars on the Lower East Side, knowing that it was the name of his band. He argued that the term was “arbitrary” (which means it is meaningless in the context of the goods or services), described his trademark as “inherently distinctive,” and said that it had acquired “secondary meaning.” Medina also claimed that actual confusion had occurred between his band’s goods and Dash and West’s movie. He argued there was also a likelihood that the confusion would keep occurring.
“An appreciable number of the relevant public mistakenly believed and will continue to believe that the word mark ‘LOISAIDAS’ originated with Defendants’ goods and services unless this Court halts Defendants’ use of LOISAIDAS. The relevant consumers are likely to confuse Defendants’ LOISAIDAS music videos with Plaintiff’s LOISAIDAS music, videos, and marks.”
Medina sued for trademark infringement, false designation of origin, and several state claims related to unfair competition and unfair trade practices. Even though he condemned the violence in the film and how the association is damaging to the image of music in his genre, Medina did not bring any dilution by tarnishment claims.
In dismissing the suit, U.S. District Judge Katherine Forrest relied on the Rogers test from the Second Circuit’s 1989 decision in Rogers v. Grimaldi, which is applied when trademarks are used in an artistic work. In the case, Dancer and actress Ginger Rogers sued film producer Alberto Grimaldi over the film Ginger and Fred, which was about two Italian dancers who imitated the dancing styles of Rogers and frequent onscreen costar Fred Astaire, for trademark infringement, right of publicity, and defamation. The Second Circuit balanced trademark rights with the First Amendment by holding that the trademarked name of another could be used if it had artistic relevance to the underlying work and, if it did have some artistic relevance, it wasn’t expressly misleading as to the source of the work.
Where creative minds come together
Forrest held here that “the title Loisaidas clearly has artistic relevance to a series of short films about drug dealers seeking to acquire control of the drug trade in Manhattan’s Lower East Side.” She also said that Medina’s complaint was “devoid of concrete allegations that defendants attempted to suggest that plaintiff’s duo produced the work; materials promoting the film prominently informed the reader that it was ‘Executive Produced: Dame Dash & Kanye West.’”
For more on trademark infringement cases, stay tuned to The Fried Firm Blog.
