"Not even a moron in a hurry would confuse these
brands."
The Lost v. Lady Gaga lawsuit (not the actual
case name, but we’ll roll with it given the alliterative ring it
has) has done something to the surf community in only a few short
days that I thought I’d never see—turning surfers into armchair
lawyers.
Unsurprisingly, there has been a lot of misconception about the
nature of the claims (for instance, there is no copyright claim
here) and Lost’s likelihood of success, coupled with a slight
misinterpretation by Chas and David Lee Scales on the latest Grit
Podcast of some of the below-the-line comments I’ve made on the
subject. As a surfer and a man with the misfortune of practicing
law in Orange County for the better part of 20 years who has
handled a fair few trademark cases, it is my responsibility to help
the peoples understand what is really going on here, because this
is some kook behavior by Lost and Matt Biolos if you ask me.
If you’re not inclined to read further, let me spell this out
for the TLDR crew: Biolos is getting bad legal advice and Lost is
almost certainly going to lose this case one way or another,
whether by decision or by attrition. While this lawsuit might
finally bring Lost/Mayhem’s existence to the attention of the
99.9999% of Lady Gaga fans who have never heard of Lost/Mayhem and
the 99% of the members of the general public of the United States
who haven’t heard of Lost/Mayhem either, all this lawsuit will
accomplish is to reinforce the well-deserved stereotype that
surfers are generally a bunch of clueless morons.
This article is not intended to provide legal advice and is not
providing legal advice, but it might just give you practical advice
on how to avoid being a kook.
The Original Mayhem (A Legendary Black Metal
Band)
Before we get into the legalese and the lawsuit itself, let’s
start with what was perhaps the most egregious error made on the
latest Grit Podcast—Mr. Scales referring to the band Mayhem as a
“death metal” band. Mayhem is a Norwegian black metal band, and
referring to a black metal band as death metal is the metal scene
equivalent of calling a surfer a boogie boarder.
Incidentally, I cannot believe that Netflix hasn’t made a
mini-series about this band given that its history includes
multiple church burnings, a suicide, and a murder. Nevertheless,
keep the metal band Mayhem in mind, as it will become important
later in this article given that it was founded in 1984, has been
selling t-shirts displaying the name “Mayhem” for decades, and
Biolos has never squawked about that even once.
Wow, That Mayhem Band Is Kind Of Rad, But What Exactly
Is A Trademark?
A trademark is a word, phrase, symbol, or design that identifies
a business owner’s goods or services, and distinguishes those goods
or services from others. There are varying levels of the strength
of these marks ranging from “fanciful” (made-up words like Rolex
and the strongest category of trademarks) to “generic” (if you
opened a coffee shop and named it “The Coffee Shop,” which wouldn’t
even be able to be registered on the federal level in the United
States).
Where the use of the word “Mayhem” lies is in a middle category
known as an “arbitrary” mark. This is an everyday word that has no
association with the goods or services themselves. The
quintessential example of this is “Apple” for computers. Because
the word has no association with the goods or services, it is
possible for the same word mark to be used by multiple different
businesses for different kinds of goods and services without
infringing. For instance, “Viking” is a word mark used by multiple
different companies and is the subject of multiple different
federal registrations for things such as cruise ships and book
publishing.
The key here with respect to trademark infringement is whether
there is a likelihood of confusion by the people who would be
consuming these goods or services. That doesn’t always happen where
two marks are identical. For example, someone could be on a Viking
cruise ship reading a book published by Viking books, yet
understand full-well that the source or sponsorship of the cruise
is not the same source or sponsorship of the book.
Trademark Infringement and Trademark
Dilution
Trademark infringement comes down to three things: 1) the
plaintiff has to own the mark; 2) the defendant has to use the same
or similar mark in commerce; and 3) the defendant’s use of the mark
causes a likelihood of confusion between the defendant’s mark and
the plaintiff’s mark.
What is likelihood of confusion? This is when consumers viewing
the defendant’s mark would probably assume that the product or
service it represents is associated with the source of the
plaintiff’s mark. This is much easier to prove when the plaintiff
and the defendant are direct competitors (Lost and Lady Gaga
certainly are not).
When the plaintiff and defendant aren’t direct competitors,
things get a little more complex, and it becomes more difficult for
the plaintiff to prove trademark infringement absent some actual
evidence of consumer confusion and other factors such as an intent
to copy and the use of the same marketing channels.
Trademark dilution, on the other hand, is a different claim that
has nothing to do with a likelihood of confusion. This when there
is a famous mark (e.g., Budweiser) and there is an unauthorized use
of the mark that is that is likely to weaken the distinctive
quality of, or harm a famous mark (e.g., a surfboard manufacturer
using Budweiser’s stylized logo and font in an Instagram post to
advertise their new “Ripper” board model). Importantly, a “famous
mark” must be something that is widely recognized by the general
consuming public of the United States. This certainly is not
Lost/Mayhem.
The Practical Realities Of A Trademark
Lawsuit
You can get damages for your lost profits and other harm you
experience as a result of trademark infringement. You can also get
the defendant’s profits from the sale of the infringing goods or
services. But the remedy that has the most teeth is injunctive
relief. In short, this is a court order that prevents the defendant
from selling or distributing the infringing products.
This really changes the trajectory of a trademark lawsuit when
there is a “preliminary injunction” at the early stages of a
lawsuit. In short, it is possible to get a court order preventing
the defendant from selling or distributing the infringing goods or
services straight out of the gate that lasts the entire duration of
the lawsuit, even if the ultimate verdict or decision is that there
was no infringement.
Though it’s a very high bar to meet that requires evidence of
irreparable harm to the plaintiff and a likelihood of success in
the underlying case, the consequences of a preliminary injunction
can be devastating for a defendant that has already incurred
overhead and operational expense for products or services that it
is unable to sell. That can sometimes be the death knell of the
defendant’s entire business, and at the very least, it might
financially burden the defendant if the infringing products or
services were a significant part of its cash flow. So, in most
instances, a preliminary injunction against the defendant
effectively ends the lawsuit and forces an early settlement.
All that being said, a motion for preliminary injunction can
backfire against a plaintiff if it isn’t granted. This is because
the court has essentially made a finding that you haven’t shown
that you are likely to prevail on your underlying claims and you
haven’t shown sufficient actual or threatened harm or damages.
Sometimes that might cause a plaintiff to reevaluate the prudency
of continuing with the lawsuit.
If a plaintiff doesn’t file a motion for preliminary injunction,
that is an indication that the plaintiff knows that it does not
have a particularly strong case with the information that it
currently has. We’ll see what Lost decides to do in that regard
given that no temporary restraining order application or motion for
preliminary injunction has been filed yet.
As I’ll explain, it is highly unlikely that Lost is going to get
a motion for preliminary injunction granted in this case even if it
decides to file one.
The Lost v. Lady Gaga Complaint
I’ve taken a look at the Complaint (the case initiating document
that the plaintiff files) in this lawsuit. Lost is suing Lady Gaga
on a number of different trademark and unfair competition claims
and theories, all of which arise from an argument that Lady Gaga’s
use of the word “Mayhem” on her album merch infringes on Lost’s
Mayhem mark. To be clear, this is the Mayhem mark that applies to
clothing—Lost has a separate Mayhem mark registration that applies
to surfboards that it is not suing over. Additionally, the Lost’s
Mayhem mark for clothing is for the word only without regard to the
design. As far as I’ve seen, Lost did not independently register
the wavy Mayhem logo as a separate “design” mark that might protect
the unique look of that logo apart from the word itself.
In short, Lost is arguing that 1) Lady Gaga’s use of the word
Mayhem on her merchandise is likely to cause the purchasers or
would be purchasers of Lady Gaga’s merchandise to think that it is
coming from Lost/Mayhem; and that 2) the Mayhem mark is so famous
and well known that Lady Gaga’s use of the word Mayhem weakens the
distinctive quality of Lost’s mark. All of this has supposedly
caused Lost $100 million dollars in damages.
It is no surprise that Lady Gaga’s lawyers did not take Lost’s
demands seriously, as Biolos has complained to Stab. I wouldn’t
take that kind of demand seriously either, and the fact that both
Mayhem logos have wavy lettering that everyone seems to be focusing
on like this is some kind of copyright infringement claim doesn’t
change this either.
Lost/Mayhem and Lady Gaga are not competitors. Lost is a surf
brand that sells Mayhem branded surfboards and surf apparel to
promote its surf business. Lady Gaga is a musician that sells
albums and merchandise to promote those albums and her overall
personal brand. Lost is not a musician and does not sell music nor
music-related clothing. Lady Gaga is not a surfer and does not sell
any surf-related clothing. Lady Gaga fans are not core or casual
surfers, and very few core or casual surfers are Lady Gaga fans.
Any core or casual surfers would understand the distinction between
Lost’s Mayhem clothing and Lady Gaga’s Mayhem clothing well enough
to know that Lost was not the source or sponsor of the Lady Gaga’s
Mayhem clothing. And I can almost guarantee you that not a single
Lady Gaga fan who isn’t a surfer even knows what Lost/Mayhem even
is.
“Only a moron in a hurry would confuse these two marks” is a
time-honored argument made by trademark defense lawyers to argue
that there is no likelihood of confusion. Here, not even a moron in
a hurry would confuse Lost’s Mayhem with Lady Gaga’s Mayhem, or
vice versa.
Mayhem is also not a household name like Pepsi, Ferrari, etc.,
and the general public in the United States at large is not aware
of this brand. So, Lady Gaga’s Mayhem clothing is not undermining
the distinctive quality of Lost/Mayhem’s brand—Lost’s Mayhem mark
has no such famous distinction.
It is also utterly ridiculous for Lost to proclaim that it has
experienced $100 million in damages (i.e., its own lost sales and
other economic harm) as a result of Lady Gaga’s sale of merchandise
with the word “Mayhem” on it. Even from a profits disgorgement
perspective, there isn’t any basis to even argue that Lady Gaga has
made $100 million in sales of Mayhem branded clothing, or anything
else Mayhem-related to date. Lady Gaga’s record sales for this
album to date would only net her about $3 million even assuming she
kept every dollar of every album sale (which is not how album sale
royalites work) and her Mayhem album tour doesn’t even start until
July.
Perhaps the most absurdly, Biolos has also gone on record with
Stab to say that he believes that any use of the word “Mayhem” on
an article of clothing, even if it is not a stylized logo,
infringes on Lost’s Mayhem trademark (Biolos’ exact words according
to Stab were, “It doesn’t matter if it’s Helvetica or Comic Sans—if
it’s on a T-Shirt, and that T-shirt says Mayhem, it’s infringing.
The font is secondary.”). This is really a bridge too far.
It should be noted that are at least 16 different active or
pending federal registrations for the single word “Mayhem” on the
USPTOs website for businesses that have nothing to do with surfing.
One of these registrations is for the metal band Mayhem, which begs
the following question: does Biolos believe that the metal band
Mayhem is infringing on Lost’s trademark through the sale of
t-shirts and other merch with the word “Mayhem” on them? What about
the other 15 businesses with registered or pending marks that use
the word “Mayhem?” Incidentally, Amazon is currently selling shirts
that display “Mayhem” in non-stylized, block letter format. I have
of course, purchased one.
The only way for Lost to potentially thread the needle in terms
of getting some sort of preliminary injunctive relief is to
establish that Lady Gaga’s graphic designer intentionally copied
the Mayhem stylized logo, but that factor alone is not
determinative of likelihood of confusion even if there were
evidence of it.
There have been people saying that Lady Gaga’s graphic designer
follows a few surfers on Instagram, but that’s a bit of stretch to
say that proves anything one way or another. To obtain concrete
evidence of copying, Lost would need to forensically image the
computing devices that this designer used while creating the Lady
Gaga logo to see what files/websites were being accessed and what
search engine terms where being used, and then take this designer’s
deposition. But that would be a lengthy and expensive endeavor even
assuming Lady Gaga’s attorneys cooperate with a request for a
wholesale imaging of computers and/or cell phones (which they
won’t, and for good reason).
Matt, I’d say that you are getting some bad legal advice, you
are making surfers in general look like absolute muppets, and you
are not going to be able to afford this fight for long if you are
paying your lawyers on an hourly basis.
What’s Next?
To date, Lost has not filed a motion for preliminary injunction.
Whether it does and what the outcome will be if it does will say a
lot about how this lawsuit is going to play out.
I also don’t see Lady Gaga settling this for anything more than
peanuts, if at all. This is because of the “Give A Mouse A Cookie”
effect of a settlement, even where the amount is confidential—that
mouse, or some other mouse, is going to ask for a glass of milk if
you give it a cookie. More specifically, if Lady Gaga pays Lost
anything more than $50K – $100K while retaining her right to use
her Mayhem logo, then the 16 other Mayhem mark holders might start
making their own demands because they know that Lady Gaga is
willing to pay. This also extends beyond the trademark issue, as it
would send a message to anyone else who might make a monetary
demand on Lady Gaga that she will pay in response to a questionable
claim.
Lady Gaga’s attorneys, Gibson Dunn (a big firm with five offices
in California alone), is no stranger to this “Give A Mouse A
Cookie” effect in representing large clients. And, they are going
to want the opportunity to bill the hell out of their client rather
than recommending that she use the money she’d be paying her
attorneys to pay Lost.
Lost, on the other hand, might be a bit outgunned in the
attorney department. It is represented by Bremer Whyte Brown &
O’Meara, which has one office in Newport Beach. This is a firm that
holds itself out as a “full service” firm, when the reality is that
its bread and butter is insurance defense work defending general
liability (e.g., slip and fall) cases on behalf of insureds and
getting paid by the insurance carriers at lower rates. Keith
Bremer, for his part, is a very capable trial attorney, but
definitely has a bit of a California surfer accent (I’m not sure if
he actually surfs), which might not play that well with a federal
jury in Los Angeles even assuming the case gets that far.
It is also highly unlikely that Bremer Whyte is doing this on a
contingency where it only gets paid if there is a settlement or
judgment collected in Lost’s favor. If Bremer Whyte is on
contingency for this case, then they are out of their damn minds.
If Lost is paying them hourly, then Biolos is an idiot and Lost is
going to run out of money. The fact of the matter is that Lost is
up against a person with a net worth of nearly $1 billion in Lady
Gaga who is represented by a firm well capable of “scorching the
earth” (i.e., fighting every single issue to drive up litigation
costs) as a defense strategy.
In military circles, they say that amateurs think about strategy
and tactics (what your overall objective is and the things you’re
going to do to achieve that objective), while professionals think
about logistics (how you’re going to supply your forces over the
duration of the conflict to be able to do that). The same is true
in lawsuits. You might have a great case, your cause might be just,
and you might be entitled to a huge judgment at the end of the day.
But if you can’t afford (or if your attorneys can’t afford in the
case of a contingency) to get the case all the way through trial to
a judgment, it won’t matter—you will still lose at the end of the
day because your supply lines ran out and you cannot continue to
fight.
I’ll be monitoring the docket on this and providing updates if
and when anything interesting happens.
In the meantime, Matt, care to comment on your team riders’
rather questionable choice of company in Andrew Tate?
