Does FEYONCÉ blur BEYONCÉ's distinctiveness?

Beyoncé's Drunk in Love

Would you think that products carrying the word FEYONCÉ are sponsored by or affiliated with famous singer Beyoncé, or blur the distinctiveness of her mark? 

This is the question at the centre of Beyoncé Giselle Knowles-Carter, et al., v. Feyoncé, Inc. et al., 16-CV-2532 (AJN).

The facts

The defendants started selling merchandise using the brand name FEYONCÉ, as well as some phrases from Beyoncé's songs. Their products were targeted at the engaged to be married ... that is fiancés. The items were sold through the website feyonceshop.com, as well as etsy.com.

The defendants had even tried to obtain US trade mark registrations, but the USPTO refused them on grounds of confusing similarities with the registered BEYONCÉ trade mark.

Beyoncé and the entity that owns (lots of) her registered trade marks, BGK Trademark Holdings, brought proceedings against them for: 

• Federal Trademark Infringement, ex 15 U.S.C. § 1114; 
• Federal Unfair Competition, ex 15 U.S.C. § l 125(a); 
• Federal Trademark Dilution, ex U.S.C. 1125(c); 
• Deceptive Acts and Practices, in violation of New York General Business Law §349;
• Trademark Dilution, ex New York General Business Law §360-L; 
• common law unfair competition; and unjust enrichment.

Feyoncé's #DRUNKINLOVE vest

The first round

The plaintiffs requested the US District Court for the Southern District of New York to issue partial summary judgment in their favour and issue a permanent injunction against the defendants.

According to the judge (District Judge Alison J Nathan), 

There can be no dispute that in marketing to fiancé purchasers, defendants chose the formation "FEYONCÉ" in order to capitalize off of the exceedingly famous BEYONCÉ mark. 

Likelihood of confusion and unfair competition

However, the question is not this, but rather whether this 'capitalization' would be sufficient to establish likelihood of confusion, which is required under 15 U.S.C. § 1114. Would a rational consumer mistakenly believe that that FEYONCÉ products are sponsored by or affiliated with BEYONCÉ products? 

The court recalled the test in Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492,495 (2d Cir. 1961), according to which one needs to consider:

1. the strength of the senior mark, 
2. the similarity of the marks [this is a key factor - see Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 117 (2d Cir. 2006) - and requires to consider the overall impression created by the signs at issue]
3. the proximity of the products in the marketplace, 
4. the likelihood that the owner of the senior mark will bridge the gap, 
5. actual confusion, 
6. the presence of bad faith on the part of the defendant, 
7. the quality of the defendant's products, and 
8. consumer sophistication.

The court noted that the plaintiffs' and defendants' marks have a high degree of similarity, as just two letters - B and F - are dissimilar. The defendants' sign is however a play on words (so that the mark sounds like 'fiancé'), and this might dispel the risk of confusion. In Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 417 the 2nd Circuit held in fact that 

If the difference is ... such to convey to the ordinary viewer that this is a joke, not the real thing, then confusion as to source, sponsorship, affiliation or connection is unlikely.

Evidence suggests that consumers got the pun, as many purchasers of FEYONCÉ products were, in fact, engaged.

Merpel's favourite Beyoncé song: Kitty Kat 

Although some of the Polaroid factors would weigh in favour of a finding of likelihood of confusion, the court concluded that it was not be possible to say - as a matter of law - whether such confusion is likely. The same would be the case in relation to unfair competition.

Trade mark dilution

Turning to the issue of dilution, the court considered the particular case of blurring. Dilution by blurring occurs when the "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark". Relevant factors to consider include:

1. the degree of similarity between the marks,
2. the degree of distinctiveness of the famous mark,
3. the extent to which the owner of the famous mark is engaging in exclusive use of the mark,
4. the degree of recognition of the famous mark,
5. whether the use of the junior mark intended to create an association with the famous mark, and
6. any actual association between the mark and the famous mark. 

As it was found in Louis Vuitton Malletier, SA. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 434 (S.D.N.Y. 2016), the key question is whether the kind of association a defendant creates is likely to impair the distinctiveness of plaintiff's mark. The court concluded that:

A reasonable factfinder may determine that, given the similarity between the two marks, Defendants' use of FEYONCÉ impairs the distinctiveness and selling power of the BEYONCÉ mark. However, because Defendants' have not merely co-opted the BEYONCÉ mark, but rather repurposed it in a way that can be distinguished from the original, a reasonable factfinder could also conclude that there is little risk of dilution.

Conclusion

The court denied plaintiffs' request for summary judgment and a permanent injunction. This means that the parties will meet next month to discuss settlement and possible dates for trial. 

If this case continues, it will be an interesting one to follow: it is likely to require consideration of the degree of protection of well-known trade marks [or is it, rather, well-known persons?] and how far that can go and interfere with third-party free speech, including humorous distortions and puns.