M.A.F.I.A. in the courts

Jones v. Ground Zero Entertainment, 2006 WL 1788949 (S.D.N.Y.)

Plaintiff, publicly known as Lil’ Kim, used to be a member of the rap group Junior M.A.F.I.A., along with defendant Lil’ Cease and others including Christopher Wallace/Biggie Smalls/Notorious B.I.G. In November 2004, several years after Lil’ Kim severed ties with Junior M.A.F.I.A., defendants produced, marketed and distributed a documentary DVD, The Chronicles of Junior M.A.F.I.A., which featured plaintiff’s name and likeness on its cover and promotional materials.

Plaintiff sued for unfair competition, false endorsement, and false advertising in violation of section 43(a) of the Lanham Act and a plethora of state law claims. In November 2005, the court granted a preliminary injunction against any advertising or promotional material using the mark Lil’ Kim. This opinion explains that order. The court found that defendants’ use of the trade name Lil’ Kim likely constitutes false endorsement in violation of the Lanham Act and thus didn't reach the false advertising claims. The court held that the mark appears prominently on the DVD covers and some promotional material “in a manner that suggests endorsement.”

What is “a manner that suggests endorsement,” exactly? Given that the DVD is about Lil’ Kim, it’s hard to see how it’s supposed to truthfully identify its contents without risking a lawsuit. The court found the use was not descriptive because, at least for purposes of preliminary relief, the use “strongly suggests” endorsement and wasn’t in good faith. Looking at the image I found online, it does look like the name is presented in the way that movie stars' names are usually presented, and since movie stars usually consent to their representations, I could see how ordinary consumers would assume that this was an ordinary claim about the cast's approval of or affiliation with the producers.

The court found that Lil’ Kim’s image, by contrast, doesn’t imply endorsement and isn’t entitled to Lanham Act protection, relying on case law that a photo of a human being is not inherently distinctive in the trademark sense of automatically indicating origin. I must admit, the combination of a low-protectionist rationale for the image and a comparatively high-protectionist reasoning for the name is confusing to me.