Mention the appellation Westsiders to those who know well the self-proclaimed entertainment capital of the world, and heads nod in knowing acknowledgement: Yes, those who reside in Los Angeles, west of La Cienega Boulevard, are, indeed, a peculiar people. Similarly, the Pet Shop Boys, an English pop duo, scored a 2000 hit by describing the affinities of London’s distinctive “West End girls and Eastern boys.”
But when it comes to residents of a slice of Manhattan, denizens of the Lower East Side or Loisaidas, is that a sort of generic geographical descriptor en Espanol, or is it a name of a group of people, say, a band, that can be trademark protected by a “urban bachata” duo hailing from the neighborhood? And, more key, if a film mentions Loisaidas repeatedly, including in its title, is that a trademark infringement?
No, a federal judge in New York decided recently, dismissing a lawsuit against Kanye West, Damon Dash, and various corporate entities associated with Dash. The court found that Loisaidas, the film series by West and Dash, has artistic relevance and is protected by the First Amendment.
In 2015, musician Michael Medina sued for trademark infringment, then amended his complaint twice. His most recent suit asserted that West and Dash infringed Medina’s Loisaidas trademark, which he obtained for his band name in 2011, and, in 2012, for recordings and music videos.
West and Dash, meantime, had created a work of eight film clips, each between four and 12 minutes long, and the entirety named Loisaidas. The film clips, said U.S. District Judge Katherine B. Forrest, describe a “violent turf war for control of the Lower East Side’s drug business. Portions of the clips, most frequently an opening montage and closing credits, are set to rap music.” The term Loisaidas, the judge said, is “spoken or appears a handful of times; it is almost always obviously used as the name of a place, rather than as the name of group of people.”
That meant that the court had to apply to this artistic work the standards set out in Rogers v. Grimaldi and Twin Peaks Prods. Inc. v. Publ’ns Int’l. Ltd., prompting two key questions: Did this title have significance to the work itself, and did the title create a likelihood of confusion? The judge said the title was apt for a film describing criminal conduct in a specific section of Manhattan; because the film never mentions the bachada musicians or a musical group, the use of Loisaidas was unlikely to create confusion detrimental to the mark holders.
Forrest also warned that the court could not support an over-reach that would curb First Amendment-protected artistic expression in a film, just because the mark-holder sought to protect the name Loisaidas. Courts have “prevented attempts by well-known brands and individuals, such as Barbie, Rin Tin Tin, and Ginger Rogers . . . to quash artistic works with titles and directly incorporate the protected mark,” the judge said. Medina, she said, is entitled to protection of his mark, “but not by staking his claim to a pre-existing term and then attempting to remove all expressive, non-explicitly-misleading used from public circulation.”