Turf Wars and Latin Music Duos Claims of Trademark Infringement in Loisaidas Film Series Dismissed

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What comes to mind when hearing of drug wars, rap music, and Manhattans Lower East Side? Trademark infringement? Correct! Well, these elements all feature prominently in a June decision by New Yorks Southern District Court, which dismissed infringement claims against producers Kanye West and Damon Dash over their use of the title "Loisaidas" for an eight part film series depicting a turf war in the iconic neighborhood. The ruling centres on the use of trademarked terms whose expressive meanings reach beyond the scope of the owners legal right.

Plaintiff Michael Medina named his Latin music duo "Loisaidas," trademarking the name for music videos and song recordings in 2011. He filed a lawsuit against West and Dash, complaining that the defendants infringed Medinas mark, violating the Lanham Act and related state law, after using "Loisaidas" in a series of "music videos." The defendants rejected Medinas claims, arguing the project was a series of films, rather than music videos.

The court rejected the plaintiffs argument that West and Dash used "Loisaidas" in reference to Medinas work rather than its colloquial meaning, in other words as a slang word to describe Lower East Side natives. The decision noted that the defendants "obviously" used the term to refer to a location. It further noted the Second Circuits decisions in Twin Peaks Prods. Inc. v. Publns Intl Ltd. and Rogers v. Grimaldi to control a motion to dismiss, since the term at issue was an artistic works title. Under Twin Peaks and Rogers, the Circuit held that it must first see whether the trademarked title has any artistic relevance to the work in question. If that relevance exists, then the court must judge whether a likelihood of confusion exists, applying relevant factors to determine whether the title is misleading.

To avoid encroaching upon First Amendment values, the decision reinforced a narrow interpretation of the Lanham Act. Since the publicity value of Medinas music was not exploited by West and Dash, their film series "clearly has artistic relevance to a series of short films about drug dealers seeking to acquire control of the drug trade in Manhattans Lower East Side." The plaintiff never held that the defendants suggested any coordination or relationship between the two parties, and because "Loisaidas" had public meaning prior to its trademarking, Medina was unable to "stake his claim to a pre-existing term and then attempt to remove all expressive use from public circulation." At the heart of the matter is the issue of what legal protections, or lack thereof, exist for trademark owners when their mark assumes an expressive meaning separate from its source-identifying purpose? For Medina, those protections are few and far between. For West and Dash, that means another eight-part "Loisaidas" turf war may be on the table.