Medina v. Dash Films et al., No. 15-2551 (S.D.N.Y. July 14, 2016).
In a trademark infringement action against Kanye West and related parties over use of the title "LOISAIDAS" for various films, the Court dismissed (under Rule 12(b)(6)) the complaint of the owner of the trademark LOISAIDAS for rap-names based on the First Amendment right to artistic expression. Because the term at issue is the title of an artistic work, the Court first asks whether the title has any artistic relevance to the work whatsoever and then, if it does, 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. As noted in the attachments to plaintiff’s complaint, “Loisaidas …. is the Spanish slang term for ‘lower east siders.’” (SAC Exh. B.) The characters repeatedly refer to people and places “downtown in Loisaidas” (Ep. 3, 2:30), and scenes are identifiably set in the Lower East Side (see, e.g., Ep. 2, 0:59 (character bikes past Katz’s Deli)). 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.” Rogers, 875 F.2d at 1001.
Next, the Court found that the title was not explicitly misleading. The term was not a source denoter. In conclusion:
Consideration of plaintiff’s complaint and the expressive work that prompted it permits only one conclusion: that the work is a film, and that its title is artistically relevant to its content and not explicitly misleading as to any association with plaintiff’s music duo. Given the First Amendment values at interest, the Lanham Act and its state law counterparts have been and must be construed not to reach such expression.