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Celebrity Protects His and His Son’s IP

Posted in Articles, Civil Procedure, Counterfeits, Idea Protection, Law Suits, Non-Traditional Trademarks, Trademarks

DJ Khaled and his son’s company sued an online retailer named Curtis Bordenave and his company, Business Moves Consulting, Inc., alleging that they are illegally using his and his son Asahd’s intellectual property.

Most of you likely know who DJ Khaled is, but I had not heard of him before reading about this dispute.  When I asked my friend about him on Friday night , she said “I know he is famous but I can’t tell you why.”  In looking at the Complaint, I found that “Khaled has enjoyed tremendous success in the United States and beyond as an entertainer, record producer, radio personality, radio label executive, and media celebrity.”  Wow. It appears I have been missing out.

DJ Khaled himself owns the KHALED mark in connection with musical sound recordings musical video records, disc jockey services, and other entertainment services.

DJ Khaled’s son, Asahd Tuck Khaled, is frequently featured on Instagram. The complaint asserts that Asahd has become a social media phenomenon.  He has lots of followers on Instagram (a social media I need to start using more—I have an account that I only use right now to communicate with my niece and nephew).

In addition, DJ Khaled is challenging Bordenave’s filing an application for “We The Best Lifestyle,” which infringes on his trademark WE THE BEST®.  DJ Khaled has registered the WE THE BEST® trademark in connection with, among other goods and services, musical recordings, entertainment services, online retail clothing store services, recordings and e-cigarette liquid.

Khaled frequently uses the saying “We the Best.”  Forbes even wrote an article entitled “How many Times can DJ Khaled say ‘We the Best’ in 40 seconds?” in November 2014.

Khaled worked the circuit using his catch phrase “We the Best” on shows such as The Ellen Show, Jimmy Kimmel Live, Live with Kelly and Ryan, The Chew, Rachel Ray, The Daily Show, The Late Show with Stephen Colbert, Late Night With Seth Meyers, and Good Morning America.  Khaled formed ATK Entertainment, Inc. to protect his infant son’s interests.

The complaint alleged that “Plaintiffs bring this action to halt the brazen attempt by trademark pirates…to usurp and trade on the names and trademarks of world-famous entertainer Rahled M. Khaled, known popularly as “DJ Khaled, and his 18-month old son, Asahd Tuck Khaled.”  It further describes Bordenave’s actions as “parasitic  conduct and bad-faith act.”  Specifically,  DJ Khaled and his son’s company brought various claims of violation of both Khaled and his son’s trademark rights and right of publicity under New York state law.  Not all states have such laws. Minnesota does not. See a former Duets post on the subject, here.

Specifically, DJ Khaled and his son’s company have brought claims under the New York Right of Privacy Act (N.Y. Civ. Rights Law §§ 50-51), trademark infringement and unfair competition under the Lanham Act and common law, state law claims under the New York Deceptive and Unfair Trade Practices Act (N.Y. Gen. Bus. Law § 349), and commercial defamation.  Finally, they brought a declaratory judgment action seeking a declaration that they are not violating any rights of Bordenave or his company.

Khaled alleges damage because Bordenave attempted to interfere with a deal that Khaled had made with Nike to use his son’s name in conjunction with Michael Jordan to sell clothes.

This is not Bordenave’s first rodeo. The complaint states that he is a “serial trademark infringer.” Bordenave and his company have previously applied to register:

  • CARDI-B—which is the name of a well-known rapper
  • STORMI COUTURE—which it applied to register within a month of the birth of Kylie Jenner’s daughter Stormi Webster.

The complaint also alleges Bordenave improperly filed six other trademark applications based on other famous people, television stations or radio stations.

This appears to be a new trend with the rich and famous: promoting your kids names to sell products. Other famous parents have sought trademarks in connection with their children’s names. For example, Beyoncé and Jay Z applied for the mark BLUE IVY CARTER® in connection with numerous goods and services, including but not limited to, entertainment services, fragrances, cosmetics, skin care products, metal key chains and metal key rings, DVDs, CDs, and audio and visual sound recordings featuring musical performances, handheld and mobile digital electronic devices, baby teething rings, baby strollers and book, bags, and hair accessories. Beyoncé’s company is currently battling an Opposition filed by a company named Blue Ivy that is an entertainment and event planning firm focused on weddings and other elegant events.

We will have to see if DJ Khaled can stop Bordenave from capitalizing on his young son’s fame.