By: Rishele Ellison
“Strange Music,” founded by well-known Kansas City rap artists Tech N9ne in 1999, filed a trademark infringement claim against the newly formed California record label “Strainge Entertainment,” which is headed by founder Elliot Grainge, the son of Universal Music Group chairman/CEO Lucian Grainge.
Strange Music filed the suit in the U.S. District Court for the Western District of Missouri claiming that the new competitor is confusing rap and hip-hop consumers through the use of similar trademarks. In the 24-page lawsuit filed by Strange Music, they allege that Strainge violated Strange Music’s intellectual property rights by “unlawfully adopting the STRAINGE Marks, which are confusingly similar to the STRANGE Marks as used in connection with identical goods and services in the music industry.” They furthered their allegation by stating that “consumers are already confused, and are likely to continue to be confused.” Strange Music also contends that CEOs of Strainge Entertainment offered Stange Music an opportunity to join their distribution company, Caroline, but Strange Music wasn’t interested.
The suit further states that “Strainge Entertainment adopted the Strainge Marks egregiously, willfully, and intentionally to try to capitalize on Strange Music’s notoriety, goodwill, and reputation in the music industry.” In addition to a preliminary and permanent injunction against Strainge Entertainment, Strange is seeking actual damages (“in an amount to be proven at trial”) to include legal costs and attorneys’ fees.
Being that Strange Music was used in commerce in 1999, well before “Strainge Music” was conceived, it seems that this a is a clear open and shut case. But, for good measure, let’s compare the facts.
So, what is trademark infringement? To put it simply, trademark infringement is present when there is a likelihood of confusion between two different marks used in commerce to identity similar goods and/or services. A party that files for trademark infringement (Strange Music, in this instance) has the burden of proof of demonstrating that the owner of the mark (1) has a protectable interest in the mark, and that (2) the opposing party’s use of their mark is likely to cause consumer confusion.
When determining whether a mark has the potential to cause a likelihood of confusion with another registered mark is through the Sound, Appearance, Meaning (S.A.M.) analysis. Thus, we will start with sound. “Strange” and “Strainge” definitely sound the same. Appearance wise, the two words look identical enough to be confusing. The “i” looks like a typo, and the addition of one letter doesn’t change the appearance of the word enough to make any significant difference. As for the meaning? This is where things can get tricky! As of today, “strainge” is not recognized as an actual word in the English dictionary. However, due to it’s phonetic pronunciation, it’s likely that the owner of the mark intended for people to associate their variation of the word “strainge” with the English word “strange.” If that were the case, then it would mean that they would indeed have the same meaning. Despite the idea that the names may have different origins, the mere fact that they’re both in the entertainment industry gives them the same objective, mission, and, dare I say, meaning.
Personally, it seems highly unlikely that Strainge Entertainment would win this case. Even if Strainge Music attempted to trademark its name at this point, their application has a high likelihood of rejection by the United States Patent and Trademark Office (USPTO).
Representatives for Strainge Entertainment have been contacted but have offered no statement on this matter.
By: Niya Rafari-Pearson
Beyoncè Knowles is involved in a lawsuit with BLUE IVY. If you were confused, this lawsuit is between Beyoncè and BLUE IVY event planning services and not with her daughter Blue Ivy Carter. Veronica Morales owns the word mark BLUE IVY. Morales holds a trademark for "event planning and management for marketing, branding, promoting or advertising the goods and services of others." Specifically, BLUE IVY is an event planning firm gaining industry recognition and nationwide notoriety. The company has been providing services since 2009, however, it was not until January 22, 2016 when Morales's mark was threatened by the entertainment mogul, Beyoncè.
Filing a trademark application does not end the process of securing trademark protection. Following a notice of allowance for an intent to use application and publication to the Official Gazette, "any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board." Trademark Manual of Examining Procedure § 1503.01; see also 15 U.S.C. § 1063. If the petitioner meets the conditions of the statute, he or she is able to challenge the contested trademark application. On May 10, 2017, Morales filed a notice of opposition against the trademark BLUE IVY CARTER. Her argument is twofold. First, she argues that there is no intent to use the wide range of services identified in the BLUE IVY CARTER trademark. Second, based on a Vanity Fair article featuring Beyoncè's husband Jay Z, the couple engaged in fraud in their trademark filing by BGK Holdings (BGK). Jay Z is quoted as stating that, "people wanted to make products based on our child's name . . . [filing the application] wasn't for us to do anything; as you see, we haven't done anything." Thus, Morales argues BLUE IVY CARTER should be refused because there is a likelihood of confusion with the BLUE IVY event planning trademark, the owners lacks a bona fide intent to use, and BGK committed fraud.
As a result of a successful motion for early limited discovery, Morales seeks to depose Jonathan Schwartz, former executive of BGK. Schwartz's written declaration associated with the trademark application to use BLUE IVY CARTER in commerce conflicts with the Jay Z Vanity Fair article. Moreover, Schwartz has been convicted of wire fraud and falsifying tax records and BLUE IVY sought to obtain documents from him before he enters prison. Unsuccessfully, BGK argued that Schwartz is no longer associated with the company and Morales incorrectly presumed his agents would not have access to the requested documents.
In 2014, the Trademark Trial and Appeal Board issued Nationstar Mortg., LLC v. Ahmed, 2014 TTAB LEXIS 350 (T.T.A.B. Sept. 30, 2014). In that case the Board held that an applicant that knowingly signs and submits an application to the U.S. Patent and Trademark Office (USPTO) containing false representation engages in the requisite intent to deceive the USPTO. Thus, if BLUE IVY can prove that BLUE IVY CARTER's intent to use application was filed and the owners' had no intent to use the mark in commerce, fraud may be sufficiently pleaded.
How can the USPTO prevent celebrities from squatting on trademark rights to the preclusion of legitimate registrations as celebrities use more unique and distinct names for their children and grow their brand as it relates to their children?
If the Knowles-Carters have no interest in using their trademarks for their children in commerce, they should consider the right to publicity. The purpose of this common law or statutory state law protection is to prevent or control the commercial use of one's likeness or identity. While in this case it may be difficult for Beyoncè to argue that Morales's BLUE IVY commercially exploits her daughter's identity because Morales's use was prior to Blue Ivy Carter's birth. However, Beyoncè may seek to pursue a right of publicity cause of action against future unauthorized uses. Beyoncè has only sought protections relating to commerce by filing a trademark application and thus the right of publicity may be broad enough to protect her and other celebrities like her seeking to protect their children's brand.
Trademark Culture: Can Intellectual Property Law be Used to Thwart Cultural Appropriation in Fashion?
By: Melody Godbolt
From Katy Perry to Beyoncé, plenty of celebrities have been accused of cultural appropriation in one form or another. Instances of cultural appropriation or cultural misappropriation, defined as “the unacknowledged or inappropriate adoption of the customs, practices, ideas, etc. of one people or society by members of another and typically more dominant people or society,” have garnered criticism and scrutiny due to the nature of the appropriated culture being exploited financially without any form of just compensation. Instances of cultural appropriation are often a topic of discussion in the fashion realm, where popular designers are often “inspired” by Indigenous and various other cultures and their designs, which are then incorporated into their fashion lines and paraded across runways around the world. Many cultures or communities look to intellectual property law to remedy what they perceive to be misappropriation of their culture. Unfortunately, the inspiring culture is often left without monetary compensation or a valid legal remedy due to the inherent premise of intellectual property law to protect the rights of original works without stifling the continued development of new, original works.
The issue has sparked many debates and efforts toward legal reform, with many scholars and reform advocates looking to trademark law, rather than the common, more complex use of copyright law, as an area of intellectual property law that is ripe for reducing cultural appropriation in fashion. This idea is articulated in a BBC article entitled, When Does Cultural Borrowing Turn Into Cultural Appropriation? The article discusses a South African designer, Thabo Makhetha, who uses traditional blankets from her hometown of Lesotha, to design what has come to be known as Besotha blankets, which are named after the people of Lesotha. Ms. Makhetha began incorporating the blanket designs into her own fashion line, which she transformed into everyday outfits that could be worn at corporate, formal, and family events. Popular, French luxury brand, Louis Vuitton, was also inspired by the Basotho pattern, ultimately releasing a “Basotha Plaid” menswear collection in 2017. Although the expensive designs sold out quickly in South Africa, critics viewed the collection as merely a copy of cultural Lesotha designs.
The issue of major brands being accused of appropriation is not a novel issue. However, the use of trademark law to assist in protecting traditional cultural expressions has found a more recent push. Registering a mark has many advantages to cultural groups such as, the registration serving as prima facie evidence of the mark’s validity and the mark owner’s ownership and exclusive right to use the registered mark, entitlement to nationwide priority in use, and registration may be used to stop the introduction of infringing goods into the United States. Despite the advantages of trademark law, critics cite various issues that would arise by allowing culturally significant products to be trademarked. For one, some opponents believe that the inherent nature of trademark law to protect owners of original works when they are in commerce or intended to be used in commerce would water down the authenticity and sacredness of the culture being trademarked. Additionally, identifying an “owner” of a culturally significant product could also lead to potential issues – 1) how do you identify what belongs to a given culture and then 2) how do you choose an owner when applying for a trademark registration that represents a culture?
The debate regarding protecting cultures and the methods used to do so are becoming more and more prevalent in intellectual property law. Indigenous people have been rallying for better protections for years; however, as recent as 2017, Indigenous advocates of the United Nation’s World Intellectual Property Organization initiated meetings with the United Nations as an effort to make cultural appropriation of their intellectual property illegal. With this continued push to protect culturally significant IP, many questions arise, such as: 1) is intellectual property law, particularly trademark law, currently able to assist in curbing instances of cultural appropriation and 2) if Indigenous people are able to make cultural appropriation against them illegal, what will that mean for other cultures of people looking to protect themselves, as well? These questions currently remain unanswered; however, in the quest to curb the cultural appropriation of cultures in fashion, is intellectual property law well equipped to deal with these social justice issues? Only time will tell.
 Oxford Dictionaries, https://en.oxforddictionaries.com/definition/cultural_appropriation (last visited Oct. 3, 5:30 PM) (defining “cultural appropriation”).
 See generally Tania Phipps Rufus, Companies accused of exploiting cultural identity of Kenya's Maasai, The Guardian (Aug. 8, 2013, 5:08 PM) (discussing the continuous exploitation of the Massai people by popular fashion designers and how the Massai people have not been justly compensated for the use of their traditional patterns), https://www.theguardian.com/sustainable-business/ethical-exploit-cultural-brands-masai; Nicky Woolf, Urban Outfitters Settles With Navajo Nation After Illegally Using Tribe's Name, The Guardian (Nov. 18, 2016, 5:22 PM) (discussing Urban Outfitter’s use of the “Navajo” trademark, which they argued was a generic mark. The case ultimately settled), https://www.theguardian.com/us-news/2016/nov/18/urban-outfitters-navajo-nation-settlement.