Kendall Jenner, DJ Daniel Chetrit, and Apple Music have been slapped with an ugly trademark infringement lawsuit in connection with PizzaBoys, their brand new Beats 1 music show. The name of the show is, according to a new lawsuit, way too similar to a trademark that Robert Karaguezian, a “prominent Los Angeles-based street artist” and the founder of a Los Angeles-based brand and artist collective called Pizzaboyzzz, has been using for almost 5 years.
According to Karaguezian’s suit, which was filed on Thursday in a New York federal court, he has been forced to resort to legal action due to the “direct threat to the goodwill [of his Pizzaboyzzz trademark] by Kendall Jenner, DJ Daniel Chetrit, and Apple Music” (“the defendants”) and their “sudden wide-scale commercial exploitation of the confusingly similar moniker, “PIZZABOYS.”
Karaguezian alleges that he has been using the Pizzaboyzzz mark exclusively since 2014 in connection with the manufacture and sale of “clothing, decorative pins, and various other products … to customers around the United States, as well as in Puerto Rico and Japan.” The defendants opted to start using the “confusingly similar” PIZZABOYS trademark as recently as two months ago for a newly-launched “internet radio program and Instagram account promoting associated PIZZABOYS apparel [that is] directly competitive with goods and services bearing [Karaguezian’s trademark].”
The Pizzaboyzzz founder alleges that not even two months after the defendants launched their PizzaBoys podcast, Instagram account, and corresponding merch, “the internet is rife with complaints by customers who are confused by the nearly identical marks, particularly in view of the defendants’ efforts to specifically target [the same base as Karaguezian’s collective] and exploit the collective’s unique themes, content and lifestyle with which the [Pizzaboyzzz trademark] has come to be associated.”
Still yet, Chetrit, Jenner or persons acting at their direction managed to deactivate the Pizzaboyzzz Instagram account causing significant damage to [Karageuzian],” the lawsuit said. “Only after painstaking efforts was [he] able to recover this account and its followers.”
Despite sending to the defendants last month demanding that they cease and desist their allegedly infringing use of his mark, Karaguezian alleges that they “have refused to cease their unauthorized and infringing misconduct, nor have they assured [Karaguezian] that they will not sell apparel bearing the infringing PizzaBoys mark.”
As a result, Karaguezian has asked the court to order the defendants to immediately and permanently cease all allegedly infringing use of the Pizzaboyzzz trademark and pay a handful of monetary damages in connection with their use of the PizzaBoys mark.
Sam P. Israel, managing partner of Sam P. Israel P.C., who is representing Karaguezian, told TFL on Thursday, “All our client is interested in is maintaining his trademark and the goodwill attendant to it. We sought assurances by way of a firm enforceable commitment by Jenner and company that they would withdraw their trademark applications and destroy competing goods bearing the mark, and instead, they offered to pay our client to use the mark a price equivalent to the cost of an ice cream sundae.”
UPDATED (July 24, 2018): As of July 19, the parties managed to come to an out of court settlement. According to a letter from Jenner and Chetrit’s counsel to the court, the parties “have reached an agreement in principle to settle this matter.” According to the docket, on July 20, the court dismissed the case, holding, that “the action is hereby dismissed and discontinued without costs, and without prejudice to the right to reopen the action within forty-five days of the date of this Order if the settlement is not consummated.”
The terms of the settlement are confidential but likely include a monetary component paid on behalf of Apple, Chetrit, and Jenner to Karaguezian in exchange for the right to use the PizzaBoys trademark in connection with the music show.
* The case is Robert Karaguezian v. DANIEL CHETRIT, KENDALL JENNER, and APPLE, Inc., 1:18-cv-03974 (SDNY).