Kanye Dodges “Loisaidas” Trademark Suit
July 18, 2016 (IP Flow) — Kanye West and Damon Dash won a trademark suit brought by Michael Medina last week over their use of the name “Loisaidas” for their 2015 film depicting the Lower East Side of New York.
“Loisaidas” is Spanish slang for the residents of the Lower East Side. West and Dash’s film documents the violent drug and turf war in the Manhattan neighborhood over 8 episodes of between four and twelve minutes in length released online last year. It includes songs and graphics utilizing the term throughout the film.
Medina contested the use of the term on the basis that he is part of a musical duo of the same name and holds two federal trademark registrations for it. In his suit, he claimed that West and Dash were aware of the band at the time of creating the film and that the use of the name in connection with a film about drug and violence tarnishes the band’s brand and reputation. He further asserted that the film resembled a music video rather than a film, and therefore resulted in confusion as to sponsorship, association, source and origin of the Plaintiff’s and Defendants’ products.”
West and Dash responded by refuting the claims and stating that their use of the term is protected by the First Amendment.
New York federal judge Forrest dismissed Medina’s reasoning and found in favor of the defendants, using the two-prong test developed in Rogers v. Grimaldi. Forrest held that the film was “artistically relevant” and 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.’”; thus satisfying the first prong of the test. Then applying the second prong which analyzes the likelihood of confusion, she found that the use of the title “Loisadas” is not overtly deceptive. Forrest noted that Medina:
is entitled to protect his duo’s trademark, but not by staking his claim to a pre-existing term and then attempting to remove all expressive, non-explicitly-misleading uses from public circulation.
Medina’s lawyer, John Bostany, expressed his disappointment at the decision stating:
My client believes that as a result of this decision there are now two ‘Loisaidas’ groups — the plaintiff’s bachata group and Kanye’s gangsta rap group.