Trademark Decisions Update

The U.S. District Court for the Southern District of New York granted a preliminary injunction barring the use of the 'Lil' Kim' mark to advertise or promote a DVD documentary of the rap group Junior M.A.F.I.A. Jones v. Ground Zero Entertainment, 05 Civ. 6461(JSR). Prior to her solo career, Lil' Kim (Kimberly Jones) had been a member of Junior M.A.F.I.A. She filed suit after her likeness and 'Lil' Kim' name were used on the documentary's cover and promotional materials. The complaint alleged, among other things: false endorsement and false advertising in violation of Sec. 43(a) of the Lanham Act; deceptive trade practices; unfair competition; misappropriation; and unjust enrichment. The district court explained: 'Although not persuaded that Jones is likely to prevail on certain of her claims, the Court finds that Jones is likely to prevail on her claim that the defendants' use of her trade name, 'Lil' Kim,' constitutes false endorsement in violation of the Lanham Act. Because the 'Lil' Kim' mark appears prominently on certain of the covers of the DVD, as well as some of the promotional material, in a manner that suggests endorsement, 'an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question' ' Defendants say that the use of 'Lil' Kim' is simply descriptive of one of the prominent persons featured in the documentary. The doctrine of fair use … permits use of a protected mark by others to describe certain aspects of the user's own goods ' but is inapplicable here, as the Court finds (for purposes of preliminary injunctive relief only) that the use here strongly suggests en-dorsement and, in any event, was not in good faith.'