Abracadabra – it’s a lawsuit! This week’s BL Business Branding Series investigates why Lady Gaga could face mayhem in the courtroom following a recent trademark infringement claim from a popular California surf brand over the art on her newest album.
Following the release of her chart-topping Mayhem album, Lady Gaga has been sued by California surf company Lost International, LLC (“Lost”) for $100,000,000. Lost claims Gaga infringed on Lost’s trademark with her Mayhem album release and coordinating Mayhem merchandise drop. The Complaint alleges that Gaga violated Lost’s registered mark of “Mayhem” by featuring the stylized word on her album and matching clothing and accessories. Both Lost’s and Gaga’s “Mayhem” products feature the word in a grunge font reminiscent of street art, although the specific style of each design is arguably different. Lost claims that Gaga’s mark is “confusingly similar” and that her “purpose in using the Mark was and is to deceive, mislead and confuse customers” into believing her merchandise is connected to Lost’s brand, even after receiving a cease and desist letter.
Because the Complaint alleges Gaga intended to deceive customers by trading on Lost’s good name and reputation, Lost claims it suffers “irreparable and continuing harm” and requests that the court prevent Gaga from continuing to use the mark and award profits Gaga has earned using it so far, along with punitive damages and additional court fees.
Lost does have a registered mark for “Mayhem” at the USPTO dating back to August 11, 2015, (Ser. No 4790623). However, the trademark is only for the word and does not cover the stylized design the company features on its merchandise. Furthermore, the “Mayhem” trademark only applies to “Beanies; Caps; Jackets; Pants; Sandals; Shorts; T-shirts; [and] Tank tops.” If Lost has any valid grounds to enjoin Gaga from sales, it would likely be limited to merchandise that falls under those specific categories of goods. The album and tour, although mentioned in the lawsuit as violations of registration, are beyond the registered use of Lost’s “Mayhem” claim and will likely not be impacted by the suit.
What Can Businesses Learn From This?
The lawsuit is still in the very early stages, and how it proceeds remains to be seen. Gaga’s camp may pursue a settlement with Lost to avoid the headache of litigation, or they may pull the merchandise that features the word “Mayhem” from sale and argue that doing so eliminated the risk of confusion that Lost has alleged. Whichever way the case goes, chances are it will resolve for substantially less than $100,000,000.
A simpler solution, and one that could have helped avoid this headache for Gaga, would have been to perform more comprehensive trademark research before releasing the album and its art to ensure the design was not at risk of an infringement claim. Modifications to the stylization or a potential licensing agreement with Lost may have cleared up the issues she is now facing. Alternatively, Lost could have trademarked its stylized “Mayhem” design when it registered the plain word mark to secure tighter protections for its intellectual property. This would have bolstered Lost’s claims in the lawsuit by pointing to protected design elements beyond the use of a single word.
Have any questions about how comprehensive trademark research can help you protect your business? Contact our BL Trademark Team by reaching out to Seth Berenzweig at sberenzweig@berenzweiglaw.com.