Got Rights? A Jenner or Kardashian Will Probably Infringe Them

I really thought I wouldn’t be writing about this again. I thought that Kylie Jenner and her sisters would hire and listen to knowledgeable and competent trademark and copyright attorneys for their future business endeavors, after:

• Kylie Jenner infringed several of multi-platinum singer Kylie Minogue’s trademarks; and,
• then she and her sister, Kendal Jenner, infringed copyrights and rights of publicity by taking iconic images of rock stars, putting them on T-shirts, putting their respective faces over those of the rock stars, and sold them for $125 each (my blogs about those fiascos are here and here).

I was wrong.

A few days ago, Kimsaprincess Inc. (perfect name, no?), supposedly owned by sisters Kim Kardashian and Kylie Jenner, were sued in U.S. Federal Court for trademark infringement and unfair competition. Kardashian and Jenner recently started a cosmetics line under the brand/trademark “KKW”.  Unfortunately, another makeup company, owned by Kristen Kjaer Weis, a New York-based makeup artist, has been producing and selling high-end cosmetics under the brand “KW” in the United States since 2010 and holds four U.S. trademark registrations for them.

Ms. Weis is claiming that the “KKW” marks are so similar to hers, that they will cause and have already caused confusion in the minds of the buying public as to the source of the lower-end “KKW” cosmetics.  The fact that 100% of the “KW” trademark is in and constitutes most of Kardashian’s and Jenner’s “KKW” trademarks, doesn’t bode well for Kim, Kylie and Kimsaprincess.

The continuing infringement problems in which the Kardashians and Jenners find themselves shouldn’t happen. They’re easily and inexpensively preventable.

Before anyone wants to use a brand, image, or anything else another person created, there are two things they need to do:

• First, find out if someone else owns it. Someone usually does;
• Second, if someone does own it, and one wants to use that work or brand/trademark, they need to obtain permission from the owner(s). If permission isn’t granted, the work or brand can’t be used, without likely infringing it.

Kim and Kylie would have been wise to have a full trademark search obtained and analyzed by an experienced trademark lawyer, before promoting or selling any of their “KKW” cosmetics. Doing so would determine if their desired “KKW” brand/ trademark was available for cosmetics. The legal fees and costs involved in obtaining and analyzing a full, proper trademark search are modest.

Had Kim and Kylie had this done, I’m certain the pre-existing “KW” registrations for cosmetics would’ve come up in the search. The lawyer analyzing it would have told them that they were in danger of infringement if they used their “KKW” brand/trademark for their cosmetic products.

But, according to Ina Treciokas, a publicist for Kim Kardashian, Kim and Kylie haven’t done anything wrong. Ms. Treciokas was quoted as saying “there is no merit to this lawsuit. Before launching, Kim received approval for KKW, KKW Beauty and KKW Fragrance (the three trademarks Kimsaprincess applied to register earlier this year) from the US Trademark Office.”

Really, Ina? Not according to the U.S. Trademark Office database. Nothing about Kim and Kylie’s three trademark registration applications has been approved by the Trademark Office. In fact, in addition to the lawsuit, Ms. Weis also filed an opposition proceeding in the Trademark Office, to stop registration of all three of Kardashian’s and Jenner’s “KKW” marks. The basis for the opposition is Ms. Weis’ seven years of prior use and trademark registrations for her “KW” brand for cosmetics.

You’re probably asking yourself, “How can Kim and Kylie be that stupid? Don’t they have grown-ups helping them?”

Well, I have a theory — I don’t think it’s a stupidity issue.

I think the Kardashian’s/Jenner’s repeated infringement of intellectual property and other rights, is intentional.  Their respective TV series and other antics show that it’s more important for them to constantly be in the public eye and news, than it is to avoid lawsuits. The former’s the fuel for the “famous for being famous” engine.

It appears they keep violating others’ rights for the publicity. I’ve been an entertainment lawyer for over 30 years. I’ve represented and been around famous actors, rock stars and other celebrities my entire career. An old saying in entertainment is “there’s no such thing as bad publicity”.

The Jenner’s and Kardashian’s have built empires on this premise. The more outrageous and narcissistic the drama and behavior, the better. People talk about it. The press covers it. It trends.

Ok, so why don’t Ms. Weis and the other Jenner/Kardashian infringement victims just ignore them?  Why keep providing them the attention (negative or otherwise) on which they thrive?

Unfortunately, a trademark owner can’t ignore confusing uses of their mark or similar marks. Trademark registration conveys a monopoly on a mark’s owner – the exclusive right to use their mark in connection with particular goods or services. Part of the monopoly’s obligation is to aggressively protect the mark. Mark owners must attempt to stop those who engage in confusing uses. Failure to do so can damage or even ruin their trademark’s exclusivity.

The takeaway?

It’s very easy not to infringe someone’s rights when you’re starting a business or endeavor. Find out if the rights you want to use are available to you for that use.  Ask permission if they’re not.  Don’t use those rights if you can’t obtain permission — unless your idea of “Keeping Up with the Kardashians” is to also be repeatedly sued, vilified, and have your intelligence (or lack of it) questioned.

 

Just Sayin’ . . . TM

© 2017 Paul I. Menes (with assist from Holly Gustlin)

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