Plaintiff Michael Medina named his Latin music duo “Loisaidas” — the Spanish slang term for people from Manhattan’s Lower East Side — and began creating music and music videos starting in 2008. Medina trademarked the name in 2011 and 2012 for recordings and music videos.
Defendants Kanye West, Damon Dash and related enterprises created a piece of filmed entertainment called “Loisaidas” in 2015. The filmed work included eight episodes describing a turf war on the Lower East Side. Portions of the work are set to rap music.
In Medina’s second amended complaint, he argued that the defendants infringed his “Loisaidas” mark by using the word in a series of “music videos.” Medina alleged violations of the Lanham Act and related state law claims. The defendants argued their work was a film series, not a series of music videos.
As an initial matter, the district court rejected Medina’s argument that the defendants used “Loisaidas” to refer to the musical duo, saying the defendants “obviously” used the term to refer to the location as the title of their artistic work. The district court next noted that in the context of titles of artistic works, the Lanham Act must be narrowly construed to avoid intruding on First Amendment values. The Second Circuit’s decisions in Rogers v. Grimaldi and Twin Peaks Prods. Inc. v. Publ’ns Int’l Ltd. controlled the motion to dismiss because the term at issue is the title of an artistic work.
Under the Rogers and Twin Peaks analysis, the district court said it must first ask whether the title has any artistic relevance to the work whatsoever. If so, it then determines whether the application of the relevant factors indicates a particularly compelling likelihood of confusion that renders the title explicitly misleading.
“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,” said the district court. The defendants did not arbitrarily choose the trademarked term to exploit the publicity value of Medina’s music duo. The court concluded that “Loisaidas” has genuine relevance to the film’s story.
The court also held that “Loisaidas” was not explicitly misleading. Plaintiff failed to allege that defendants suggested that plaintiff produced their film series. In fact, materials promoting the film series prominently informed the reader that it was executive produced by Damon Dash and Kanye West.
The court also took note of other decisions that have found a “troubling implication” when a trademark owner asserts a right to control how one expresses themselves, especially when the mark has taken on an expressive meaning apart from its source-identifying function, such as Rolls Royce or Barbie. The court found that the mark at issue had a public meaning before plaintiff used the mark, and therefore plaintiff could not “stake his claim to a pre-existing term and then attempt to remove all expressive use from public circulation.”
The district court dismissed Medina’s claims with prejudice.