lawyer doesn’t make use in commerce by negotiating for client

Big
Ligas, LLC v. Yu, 2021 WL 1518993, No. 20-23719-Civ-Scola (S.D. Fla. Apr. 16,
2021)

Big
Ligas is owned by three members equally: Daniel Echavarria, also known as Ovy;
Christian Andres Salazar; and Paulo Londra. Ovy and Salazar are the managing
members, and defendant Yu is an entertainment attorney who represents Londra,
an Argentinian “rapper and reggaeton/trap singer.” The parties signed a deal
memorandum “to help Londra launch his career as a singer and songwriter.”

Things
went well, and then as Londra’s success increased, the parties’ relations
deteriorated. Amidst negotiations with other parties about Londra’s second
album, Londra hired Yu.

Big
Ligas alleged that, among other things, Yu “falsely claimed that she and/or
Paulo owned the copyrights that are in fact owned by Big Ligas.”  She allegedly falsely represented that she was
authorized to deliver Londra’s “recording artist and songwriting services …
when in fact, any compositions or recordings created under publishing or record
deals not authorized by Big Ligas, including those negotiated by Yu, are not
commercially exploitable without Big Ligas’[s] authorization, under Paulo’s
name or otherwise.”

Big
Ligas sued for tortious interference and for false advertising and trademark
infringement under the Lanham Act. The tortious interference claims failed for
contractual reasons and because Londra’s lawyer was his agent, not a stranger
to the contract.

Lanham
Act claims: Along with the alleged misrepresentations about authority, Big
Ligas alleged that Yu used Londra’s “name and likeness … to promote his
recording services to Warner (and others) and his songwriting services to
Kobalt (and others), without Big Ligas’[s] approval or authorization,” confusing
third parties.

Yu
rejoined that she was, in fact, Londra’s counsel, and using his name was “classical
fair use” (that is, descriptive fair use) because “she is not using the name
Paulo Londra in the trademark sense, but only to identify her client and
describe his relationship to her.” Of course, descriptive fair use requires
good faith which sure sounds like it’s hard to decide on a motion to dismiss,
but that’s no barrier here. Londra’s stage name and given name are the same
[should the result be different if they weren’t?], “and the Plaintiff’s
allegations do not prove that Ms. Yu used the Plaintiff’s mark in commerce by
referring to and describing her relationship with her client by using his given
name.” [Of course this was a use in commerce; in a different situation, this
argument would be laughable. Trademark law has ruthlessly been stripped of the
tools it needs to say “this is not a trademark claim,” and that’s why the
Seventh Circuit approach of just reaching the equitable result can appeal.]

Even
if we needed to do a descriptive fair use analysis, Yu would win:

The
Court finds that, as Londra’s attorney, Ms. Yu’s use of his name to
identify him as her client was other than as a mark, used in the primary
descriptive sense, and was undertaken in good faith, that is without the intent
to trade on the good will of Big Ligas. To the extent the use of the name Paulo
Londra creates some risk of confusion, Big Ligas assumed that risk by
establishing Paulo Londra, Londra’s given name by birth, as his stage name.
(emphasis added)

This
isn’t motion to dismiss language, although it is clearly the right result.

False
advertising: “That Ms. Yu contacted third parties and stated she is Londra’s
attorney with authority to negotiate on his behalf is not a false or misleading
statement insofar as Ms. Yu was acting on behalf of her client, Londra.” This
was a contract dispute, not a Yu problem.

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