Court Allows Kanye West to Use Another’s Trademark as Title of Video Project
BY JERRY GLOVER
AUGUST 22, 2016
A federal district court has OK’d Kanye West’s and Damon Dash’s use of the trademark LOISAIDAS as the title of a video project they created in 2015. The plaintiff, the owner of that trademark, was using the mark as the name of a New York City-based Latin band and had objected to its use by West/Dash. Medina v. Dash Films, Inc., 2016 WL 3906714 (S.D.N.Y. July 14, 2016).
The trademark owner registered the mark in several categories in 2011 and 2012 including audio recordings of music and accompanying music videos. The term “Loisaidas” is the Spanish slang term for “lower east siders.” In 2015 West/Dash created eight video episodes all entitled “Loisaidas” which were sold online. The logo for the series included the word Loisaidas stylized as a skyline above a handgun. Each episode concerned a narrative about a violent turf war for control of New York’s Lower East Side’s drug business. Most of the videos include prose narration and dialogue. Three times during the series a characters raps to the camera. The word “Loisaidas” is spoken several times during those episodes usually to refer to the name of a place rather than the name of a group of people.
Plaintiff sued West/Dash and several Dash companies involved in the production of the video episodes for trademark infringement. In an infringement action, plaintiff must prove ownership of a valid mark and that the infringer’s use of the mark is likely to confuse consumers as to the origin or sponsorship of the product—in this case, the videos. But where the mark is used as part of an expressive work like the videos, courts must concern themselves with the requirements of the First Amendment. Courts generally construe the Federal Frademark Act strictly to avoid conflict with the First Amendment. The defendants moved to dismiss plaintiff’s case on First Amendment grounds.
The federal appellate court governing New York ruled in 1989 that a plaintiff’s claim of trademark infringement will fall against a First Amendment free speech defense if the defendant uses the mark as the title of an artistic work “unless the title has no artistic relevance to the underlying work whatsoever of explicitly misleads as to the source or the content of the work.” Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In the present case, the court concluded that the term “Loisaidas” had relevance to the video concerning the control of the drug trade in New York’s lower east side especially since that term was slang for the geographic area. In addition, scenes in the video are set in the Lower East Side and people in the video referred to place and places “downtown in Loisaidas.” Therefore, the court noted, the choice of “Loisaidas” was not an arbitrary one and was not chosen just to capitalize on the plaintiff’s music group.
But even if the use of “Loisaidas” was artistically relevant, the court still had to decide whether the title of the videos would mislead the public into believing that the work was either created by or about the plaintiff’s music group. The court noted that titles of expressive works are expected to catch consumer’s attention and to communicate a message about the work; the court added, however, that the public does not expect the title to identify the producer of the work. The district court noted that the defendants had not attempted to suggest that the plaintiff had produced the work. In fact, the defendants issued materials promoting the film that clearly stated it was executive produced by Dash and West.
The court concluded the use of the trademark in the film’s title was artistically relevant and not explicitly misleading. Therefore, there was no trademark infringement.
NOTE: Federal courts in Illinois have generally protected the right of producers to use trademarks owned by others in their films (see, e.g., Fortress Grand Corp. v. Warner Bros., 947 F. Supp. 2d 922 (N.D. Ind. 2013) even though the U.S. Court of Appeals for the Seventh Circuit (which governs Illinois, Indiana and Wisconsin) has not clearly accepted the Second Circuit’s Rogers v. Grimaldi holding (see Eastland Music Group LLC v. Lionsgate Entertainment, Inc., 707 F.3d 869 (7th Cir. 2013).