On September 15, 2023, T.I. and Tiny Harris were granted a third trial in their trade dress infringement suit against multi-billion dollar toymaker MGA Entertainment. A claim of trade dress infringement involves a company inappropriately using the appearance of another company’s product packaging or product design, and applying it to their own product or service, creating confusion among consumers.
The order came months after a jury determined that MGA’s “L.O.L. Surprise! O.M.G.” dolls do not infringe on the “OMG Girlz” mark. However, District Court Judge James V. Selna agreed with the Harrises that recent change in law, stemming from the Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC (June 2023), entitled the Harrises to a new trial.
The Supreme Court in Jack Daniel’s signaled a change in trademark law, holding that in the context of “expressive works” (such as novels, paintings, and motion pictures) the First Amendment may not be used as a defense to infringement when the alleged infringer essentially adopts another’s trademark to market and sell their own goods. In light of this decision, the jury was erroneously instructed regarding expressive works and First Amendment protection.
MGA is a leading manufacturer of children’s toys. Their most popular product line is the L.O.L. Surprise! line of toys and dolls, which have been the best-selling toys in the United States since 2017. MGA launched the L.O.L. Surprise! O.M.G. doll line in July 2019.
Clifford “T.I.” Harris Jr. is a famous recording artist known for multiple hit songs in the rap and R&B genres. His spouse, Tameka “Tiny” Harris, rose to fame as a member of the R&B group “Xscape”. In 2009, Harris formed the all-female music group, the OMG Girlz. The OMG Girlz burst on to the music scene as an edgy teen pop girl-group, sporting colorful hair styles and eccentric fashions.
MGA initiated its case in 2020 seeking a declaration of its rights from the court to the effect that the L.O.L. Surprise! O.M.G. dolls do not infringe on the trade dress of the OMG Girlz. The case went to trial in January 2023 and resulted in a mistrial. In a second trial in May 2023, the jury found in favor of MGA, unconvinced that MGA’s dolls ripped off the trade name or look of the OMG Girlz.
The Harrises argued their trade dress rights derive from “a combination of the name, vibrant hair, and unique wardrobe” of the OMG Girlz. MGA argued that the O.M.G. dolls themselves are “expressive works” protected by the First Amendment.
At the forefront of this case is the law that was espoused in the seminal case, Rogers v. Grimaldi, which provided First Amendment protection to an alleged infringer who could show that their use of a trademark was part of an “expressive work”, so long as it didn’t “explicitly mislead” consumers.
However, the Rogers test was modified by the Supreme Court for the very first time this past June in the Jack Daniel’s case. That case involved a dog chew toy made by VIP Products styled to look like a bottle of Jack Daniel’s, but called “Bad Spaniels”. VIP Products argued the toy was an expressive work that deserved First Amendment protection because it communicated a humorous message. The Ninth Circuit agreed. However, the Supreme Court disagreed.
The Court clarified that Rogers does not apply when an alleged infringer uses the good will of someone else’s trademark to market their own goods, even if they are also making an expressive comment along the way. In Jack Daniel’s, the Court held that VIP Products took the Jack Daniel’s trademark, under the guise of parody, to create and market their own “Bad Spaniels” dog toy. Since VIP Products used the Jack Daniel’s mark as their own, Rogers no longer applied.
Justice Kagan offered an effective analogy to illustrate the Court’s holding in Jack Daniel’s. She distinguished between a filmmaker who uses a Louis Vuitton suitcase to “convey something about a character”, such as status or taste, versus a luggage manufacturer who uses an “ever-so-slightly modified LV logo” to break into the suitcase market. The latter use is more likely to cause confusion among consumers because it conveys information about who is responsible for the product. In the context of expressive works, that is the type of situation where Rogers and the First Amendment no longer apply.
Judge Selna’s September 15 order stated that in light of the Supreme Court’s guidance in Jack Daniel’s, the jury was erroneously instructed. After being told the dolls are an expressive work that is protected by the First Amendment, the jury was tasked with determining if MGA used the OMG Girlz’s trade dress in a way that would lead consumers to believe the L.O.L. Surprise! O.M.G. dolls were associated with the OMG Girlz. The court concluded that the jury should not have been instructed on the Rogers test, since it is no longer applicable in trademark infringement actions dealing with arguably “expressive works” via the Jack Daniel’s decision.
Judge Selna justified his reasoning saying that the “Rogers instruction was more than just one path for the jury to find for MGA. It was also a hurdle that the Harris Parties were required to overcome in order to prevail on their trade dress infringement claim.” As a result, MGA and the Harrises will head to trial once again in a dramatic case that has touched on issues ranging from trade dress infringement to the bad faith cultural appropriation of black artists and culture. Counsel for the Harrises have argued that damages range from $98 million to $333 million. Trial is expected to commence in 2024.
MGA is represented by Mark A. Finkelstein of Umberg Zipser LLP, Jennifer L. Keller, Chase A. Scolnick and Jay P. Barron of Keller Anderle LLP and in-house by Elizabeth Lachman.
OMG Girlz and the Harris parties are represented by Robert L. Green, John R. Keville, Chante B. Westmoreland and Valerie E. Alter of Sheppard Mullin Richter & Hampton LLP and Jiepu “Bobby” Li of Winston & Strawn LLP.
The case is MGA Entertainment Inc. v. Clifford T.I. Harris et al, case number 2:20-cv-11548, in the U.S. District Court for the Central District of California.
* Lowe & Associates (“The Firm”) is a boutique entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving trademark law, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.