A United States federal judge has dismissed a trademark lawsuit against Lady Gaga over the title of her album Mayhem, ruling that the First Amendment protects the use of the word in an expressive work. The decision ends claims by Lost Surfboards that the album name infringed its Mayhem surfboard brand.
Lost Surfboards sued the artist, whose legal name is Stefani Germanotta, last year. The company argued that consumers would associate the album title and its stylized red logo, which it said was highly similar to the one on the surfboards, with its surfboard line, which it has sold since the 1980s. It called the choice a “blatant disregard” of its trademark rights. The company’s lawyers wrote: “Lady Gaga has unilaterally, and without Lost’s permission or knowledge, attempted to misappropriate the Mayhem name.”
In a decision issued Tuesday (Aug. 18), Judge Fernando M. Olguin ruled the case was too weak to proceed. He wrote that the allegations were “conclusory and insufficient to constitute an explicit indication, overt claim, or explicit misstatement identifying Lost as the source of Lady Gaga’s work.” He added: “The use of a mark alone is not enough … and nothing in the [lawsuit] suggests or otherwise indicates an affirmative misrepresentation in connection with the source or the content of Lady Gaga’s work.”
First Amendment standard
The ruling applied the Rogers test, a legal standard that makes it difficult to sue over trademark use in expressive works such as books, films and songs. Under that precedent, a trademark owner can only bring a claim if the use is completely irrelevant to the creative work or explicitly misleading. The test stems from a case involving Fred Astaire and Ginger Rogers, and was later used in 2002 to dismiss Mattel’s lawsuit over Aqua’s song “Barbie Girl.”
Lady Gaga’s lawyers had argued that the case failed under that standard. They called it “a transparent attempt to extract leverage and publicity from the expressive use of a common dictionary word by one of the world’s most recognizable artists.” They also said that even after months of record sales and touring, Lost Surfboards could not “identify a single confused consumer” who thought Mayhem was linked to the company.
Judge Olguin agreed, writing that expressive works are treated differently from other covered works. He noted that album names “implicate the First Amendment right of freedom of speech” and that consumers were unlikely to think an album name was an endorsement.
Earlier ruling and next steps
The decision echoed an earlier ruling in December, in which Judge Olguin refused to issue Lost Surfboards an injunction barring Lady Gaga from continuing to use the Mayhem name while the case played out in court.
Lost Surfboards can appeal the ruling to a federal appeals court. Neither side immediately returned a request for comment.
