A New York federal judge granted Kanye West and Damon Dash a victory on Thursday in connection with their 2015 film, Loisaidas. U.S. District Judge Katherine Forrest dismissed Latin musician Michael Medina’s trademark lawsuit, which alleged that the musicians’ film infringed at least two of his federally trademark registrations for the term "Loisaidas," a Spanish slang term for inhabitants of Manhattan, New York's Lower East Side.
Medina alleged in his complaint, which was filed last year in the Southern District of New York and subsequently amended, that West and Dash stole his group’s trademarked name for their film, thereby confusing fans, and tarnishing the mark, due to the fact that the film includes scenes of violence and drugs. (Note: Medina’s case was based solely on trademark infringement and not claims of trademark dilution by tarnishment).
He further held that the despite the defendants’ claims that the work is a film, it was merely a music video, that the use of "Loisaidas" was arbitrary, that the trademark “is inherently distinctive” and “has substantial secondary meaning in the marketplace,” and that West and Dash were aware of the Latin band when they decide to use it as the title of the film and in lyrics contained therein. Medina also claimed that “actual confusion between the parties’ respective Loisaidas brand goods and services has occurred and is occurring,” and that “the Defendants’ use of Plaintiff’s word mark results in confusion as to sponsorship, association, source and origin of the Plaintiff’s and Defendants’ products.”
The defendants were initially handed a blow when they asked the court to dismiss the case on the grounds that their use of the Loisaidas term was protected by the First Amendment, and the court refused to toss the case out. However, as of this week, Judge Forrest set forth an interesting decision in the musicians' favor. Applying the Rogers test, which was originally developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 944 (1989), Forrest focused her attention initially on First Amendment concerns, namely, “whether the title has any artistic relevance to the work whatsoever.”
Forrest held: “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 further noted that “the copyrighted term was ‘not arbitrarily chosen just to exploit the publicity value of [plaintiff’s music duo] but instead ha[s] genuine relevance to the film’s story.’”
Finding that the title is “artistically relevant,” Forrest turned her attention to the second prong of the Rogers test, a likelihood of confusion inquiry, which asks "whether the application of the relevant factors indicates a particularly compelling likelihood of confusion that renders the title explicitly misleading." The judge found that the “Loisaidas” title is not explicitly misleading or likely to be viewed as a source-denoter. Citing Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002), she noted: “A title is designed to catch the eye and to promote the value of the underlying work. Consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer.”
So, that’s a win for Kanye and co. with some interesting implications for future unauthorized uses of trademarked terms in connection with artistic mediums.
The case is Medina v. Dash Films, Inc. et al, 1:15-cv-02551.