For those unfamiliar with Kesha (stylised as Ke$ha), she rose to fame with her debut single “Tik Tok” which features lyrics such as “Tik Tok on the clock, But the party don’t stop”.
Sometime after the release of Kesha’s single, Wimo Labs applied to register “Tik Tok” as a trade mark in the US and began using the mark in relation to wrist bands used to hold Mp3 players such as iPods.
Kesha wrote to Wimo Labs claiming that use of the term Tik Tok by Wimo Labs infringes her “name, trademark, publicity and other intellectual property rights.” Kesha, who does not have a formal trade mark registration in respect of the phrase “Tik Tok” appears to be relying on common law rights.
If we were to apply this scenario to Australian law, this means that Kesha believes that she has developed such a reputation or right in the term “Tik Tok”, that consumers are likely to erroneously believe that the Wimo Labs wrist strap is somehow associated with Kesha when this is not the case.
Usually in a passing off case, the aggrieved person (in this case Kesha) would bring proceedings if the relief she seeks is not supplied voluntarily. Here, we have the alleged infringer, Wimo Labs, suing Kesha – why?
After receiving a cease and desist letter from Kesha, Wimo Labs decided to apply to the Court for declaratory relief instead of providing a response by letter. Wimo Labs sought an order declaring that its Tik Tok mark does not infringe Kesha’s intellectual property rights. This is designed to pre-emptively bring an end to Kesha’s claim. This approach carries with it both risks and benefits some of which we’ve briefly discussed below.
- it places the alleged infringer on the front foot – an alleged infringer, by seeking a declaratory judgement, can appear ready and willing to defend its IP rights. On the other hand, the approach may be seen, by the other side, as overly litigious especially if the matter could have been solved through a more amicable or cost efficient exchange of letters.
- an expeditious and cheaper trial – if the dispute looks as if it will proceed to trial, an application for a declaratory judgement may be a more efficient alternative. Generally, a declaratory relief proceeding is limited to one or two legal issues avoiding the expense of lengthy pleadings.
- not appropriate for factual disputes – a declaratory judgement is not appropriate if there are facts in dispute or if the case involves complex issues. In the Kesha example, there was no dispute about the facts (Wimo Labs agreed that it was using the term Tik Tok). Also, the legal issue in dispute is relatively straightforward being whether use of the term Tik Tok infringes Kesha’s IP rights. In these limited circumstances, a declaratory judgment may be suitable.
- the nature of the opponent – before instigating legal proceedings the nature of the opponent may need to be considered. For example, an individual may not have the financial backing to sue a large corporation or a large corporation may be concerned about the public relations implications of suing an individual. Other less costly or aggressive options may need to be canvassed before seeking a declaratory judgment.
The other interesting aspect about this dispute is that it is yet another example of a celebrity using IP law to protect aspects of their celebrity identity or celebrity personality. Other recent examples include:
- Mike Sorrentino, a cast member of the reality TV show Jersey Shore who attempted to trade mark the term “The Situation.” The trade mark application for “The Situation”, a nickname Sorrentino gave to his “abs” was ultimately denied on the basis that it had already been registered in respect of retail services.
- Bart Scott, an NFL player for the New York Jets, has registered the trade mark “Can’t Wait!”, a catch phrase he became famous for after a post-match interview, in respect of sporting merchandise.