Enjoyable piece by Jeffrey S. Edelstein who practices Advertising, Marketing and Media at Manatt law firm……
In an effort to protect the rights of his “instantly famous” infant son, DJ Khaled filed a new lawsuit in New York federal court against a company attempting to register trademarks of his son’s name.
DJ Khaled, who owns several trademarks using his own name and catchphrase (“We the best”), filed the action to protect the legal rights of his son, Asahd Tuck Khaled. Born in October 2016, “Asahd has become a social media phenomenon,” according to the complaint; he has been the subject of features in several major publications and has collected more than 1.8 million Instagram followers. To protect his interests, Asahd’s parents formed ATK, a corporate entity that holds the exclusive right to his right of publicity and has applied for multiple trademark registrations on his behalf.
When Khaled attempted to negotiate an apparel deal with Nike’s Jordan brand, defendant Curtis Bordenave and his related company wrote to the parties that they would have a “big problem” moving forward with the co-branded apparel line.
Bordenave had attempted to register several marks—Asahd, Asahd Couture and A.S.A.H.D. A Son And His Dad—prior to the formation of ATK when Asahd was less than a year old. Although the U.S. Patent and Trademark Office rejected the applications, the defendants claimed to have offered clothing featuring their Asahd mark.
Khaled asserts the defendants attempted to register their marks only after Asahd was born and already famous, according to the complaint, and “appear to be in the business of appropriating names or trademarks popularized by others and attempting to assert trademark rights over them,” citing other applications filed by the defendant for “Cardi B” and “Stormi Couture,” in an attempt to home in on the rights of rapper Cardi B and the daughter of Kylie Jenner.
Seeking “to halt the brazen attempt by trademark pirates … to usurp and trade on the names and trademarks” of DJ Khaled and his son, the complaint brought claims based on violations of the Lanham Act, New York’s publicity rights law, and common-law unfair competition and trademark infringement.
The plaintiffs asked the court for a permanent injunction, destruction of all products and advertising made by the defendants using the marks, and monetary damages.
To read the complaint in Khaled v. Bordenave, click here.
Why it matters: DJ Khaled’s lawsuit appears to be an example of a hot new celebrity trend: parents protecting the intellectual property rights of their children. Beyoncé and Jay-Z are engaged in a legal battle over a trademark of Blue Ivy, the name of their eldest daughter, while members of the Kardashian clan have similarly fought for legal protection of the names of various relatives.