Musical group sues rapper for dilution by tarnishment

On July 8 2014 musical group Atención Atención Inc, which focuses on the creation of educational and entertainment content for children, brought suit against rapper David Sánchez Badillo, p/k/a Tempo, alleging, among other things, trademark dilution by tarnishment under the Trademark Dilution Act (15 USC §1125) and Section 28 of the Puerto Rico Trademark Dilution Act.

According to the complaint, Tempo made use, without authorisation, of the plaintiff's federally registered trademarks ATENCIÓN ATENCIÓN and SR. SAPO on the music track “Tempo - Chota Cos”. The plaintiff alleged that Tempo’s use of the trademarks diluted the plaintiff's goodwill through tarnishment of its famous trademarks. Specifically, Tempo’s track is accompanied by album art which consists of an “extremely grotesque picture of a person’s face with his tongue sticking out of his mouth while it is being cut by a pair of scissors, accompanied with blood spattering all across the image”. Furthermore, the lyrics to the Tempo track include foul language and allusions to murder.

In light of the subject matter of the Tempo track and its accompanying album art, and given the fact that the plaintiff has strived to create an impeccable image as a role model for children, the plaintiff contended that it could not afford being associated with Tempo. As such, the plaintiff alleged that it had been damaged by Tempo, whose unauthorised work infringes the plaintiff's trademarks through tarnishment. 

Under the US Trademark Dilution Act, the owner of a famous mark shall be entitled to an injunction against another person who commences use of a mark in commerce that is likely to cause dilution by blurring or tarnishing the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. It should be noted that the Puerto Rico Trademark Dilution Act includes similar language.

Dilution by “tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. A mark is famous if it is widely recognised by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

1. the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicised by the owner or third parties;
2. the amount, volume, and geographic extent of sales of goods or services offered under the mark;
3. the extent of actual recognition of the mark; and
4. whether the mark was registered.

Thus, in order for the plaintiff to succeed in its dilution by tarnishment claim against Tempo, it will have to show that it is the owner of a “famous mark”. Once the plaintiff has showed that it is the owner of a famous mark, it will also have to show that there is an association that arises from Tempo’s track and the plaintiff's trademarks that harms the reputation of plaintiff.

It remains to be seen whether the plaintiff will be able to succeed in its action against Tempo. However, if the court finds that the plaintiff is the owner of a famous mark, it is likely that the plaintiff will be able to enjoin Tempo’s use of the trademarks given the context in which the trademarks were used. In the meantime, it is clear that Tempo would have avoided the litigation if he had done due diligence and sought authorisation to use the trademarks.

Rafael Rodríguez-Muriel, Ferraiuoli LLC, Puerto Rico