The clothing and apparel company, Blue Sphere Inc. doing business as Lucky 13, and Robert A. Kloetzly filed a complaint against Taylor Swift and her business entities. In the complaint, BLUE SPHERE, INC. et al. v. SWIFT, et al. CASE NO.: 8:14-cv-00782, Swift is accused of allegedly infringing on Blue Sphere’s federally protected trademarks by selling merchandise using the phrase “Lucky 13” without Blue Sphere Inc.’s authorization. The origin of the action is simple. “Lucky 13” is a clothing and apparel company that has federally protected trademarks using the phrase “Lucky 13” on clothing and their merchandise. However, Swift happens to also sell merchandise that uses the phrase “Lucky 13,” without the company’s authorization.
In the first cause of action, Plaintiff alleges that Swift’s use of “Lucky 13” on the clothing and apparel creates a likelihood of confusion that the goods are authorized, sponsored, or controlled by the Plaintiff, in violation of § 32 of The Lanham Act.
In the second cause of action, Plaintiff alleges that the infringing action confused the public similar to above, in violation of § 43(a) of the Lanham Act, False Designation of Origin and Unfair Competition
The third cause of action, Plaintiff alleges dilution by tarnishment or blurring, where the infringing items diminish quality and goodwill of Plaintiff’s product.
The fourth and fifth causes of action are for Unfair Business Competition under the California Business Code, and Common Law Misappropriation. These re-allege the same allegations as the first three.
E Online reported that Swift once explained her personal connection to the number 13 to MTV News: “I was born on the 13th. I turned 13 on Friday the 13th. My first album went gold in 13 weeks. My first No. 1 song had a 13-second intro. Every time I’ve won an award I’ve been seated in either the 13th seat, the 13th row, the 13th section or row M, which is the 13th letter.”
The Ninth Circuit will use their 8-factor likelihood of confusion test to determine whether Swift violated the Lanham act; which are the following:
1. The strength of the mark
2. Similarity of the mark
3. Proof of actual confusion
4. Defendant’s intent
5. Proximity of the two marks in the stream of commerce
6. The marketing channels used
7. The type of goods
8. The likelihood of expansion of the product line.
This will be an interesting case to follow, as it appears that Plaintiff has a strong argument. There is lot of money at stake, as well as the ownership of the phrase “Lucky 13.”