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T.I. and Tiny Harris get 3rd trial over OMG Girlz, OMG Dolls after judge tosses defense verdict
The hip-hop moguls allege toymaker MGA Entertainment's popular dolls infringe the trade dress of Tiny's daughter Zonnique's music group the OMG Girlz.
Hip-hop moguls T.I. and Tiny Harris will get a third shot at their trade dress lawsuit against toymaker MGA Entertainment thanks to a U.S. Supreme Court ruling over a dog toy that looks similar to a Jack Daniel’s whiskey bottle.
Federal jurors in May rejected the couple’s claims that MGA modeled its line of L.O.L Surprise! OMG Dolls on Tiny’s daughter Zonnique’s music group the OMG Girlz. But they did so after being instructed that the dolls are an expressive work worthy of First Amendment protection, which contradicts a new finding by the nation’s highest court.
Had the Supreme Court ruled before the jury was instructed, T.I.’s and Tiny’s lawyers could have been blamed for allowing the erroneous instruction, and the verdict would stand. But the ruling was issued on June 8, two weeks after the jury swiftly rejected their request for $98 million to $333 million from MGA’s doll profits. Senior U.S. District Judge James Selna concluded on Friday that the situation warrants a new trial with a correct jury instruction.
“When a change in law affects jury instructions, the [9th Circuit U.S. Court of Appeals] routinely vacates the judgment and remands in light of the change. The Court finds this further supports that a new trial is warranted,” according to the nine-page order.
The decision gives T.I.’s and Tiny’s lawyers, led by John Keville of Sheppard, Mullin, Richter & Hampton LLP in Houston, another chance to persuade a jury at the federal courthouse in Santa Ana, California, that 31 dolls manufactured by MGA Entertainment infringe a trade dress established by Zonnique’s OMG Girlz, which disbanded in 2015 and is now making a comeback with Bahja Rodriguez and Breaunna Womack.
T.I.’s and Tiny’s lawyers argued in the previous two trials that the group continues to have a unique trade dress involving vibrant hair color, experimental and urban outfits and the name OMG Girlz. The group last performed at a 2017 New Year’s Eve show in Atlanta with Tiny’s R&B group Xscape, which is one of the events they alleged inspired 31 MGA dolls that began being released in 2019.
Judge Selna’s order for a third trial stems from one of 26 instructions given to the jury for deliberations, which ended in a verdict for MGA on May 27 after two hours.
The instruction told jurors that the dolls “are an expressive work that is protected by the First Amendment” and for T.I. and Tiny to prevail, they needed to establish that the dolls’ use of the OMG trade dress was “explicitly misleading” and “likely to cause confusion.” Alternatively, they could show that the dolls’ use of the OMG Girlz trade dress was not artistically relevant or that it “explicitly misleads” people into believing the OMG Girlz are officially associated with the dolls.
At the time, the instruction followed a legal standard established by the 9th Circuit.
But at the same time, a high-stakes Supreme Court showdown was taking shape over a $15 dog toy called Bad Spaniels that lawyers for Jack Daniel’s argued “imitated a Jack Daniels’ whiskey bottle, while adding poop humor.”
After a four-day bench trial in Phoenix, Arizona, Senior Judge Stephen M. McNamee sided with Jack Daniel’s in January 2018 and ordered Bad Spaniels’ manufacturer, VIP Products LLC, to stop making the toy. But the 9th Circuit reversed him in 2020, ruling the toy a humorous parody protected by the First Amendment and thus subject to a more stringent protection again infringement claims.
The standard assessment involves determining whether consumers are likely to be so confused by a product that they would officially associate it with the product claiming infringement.
But because of the toy’s protective status as an expressive work, the 9th Circuit said Judge McNamee should have required Jack Daniel’s to instead show that Bad Spaniels’ use of its trademark is “not artistically relevant” or that the use is “explicitly misleading as to the source or content of the work.”
In intellectual property law, the standard is known as the Rogers test because it was established through actress Ginger Rogers’ lawsuit over a 1986 movie Ginger and Fred that depicted her relationship with fellow Hollywood legend Fred Astaire.
The Rogers test’s establishing cases include Mattel’s failed lawsuit against MCA Records over the song “Barbie Girl” by Aqua. The 9th Circuit ruled in 2002 that the Rogers test required Mattel to show Aqua’s use of Barbie was either artistically irrelevant or explicitly misidentifying because Barbie wasn’t a “source identifier” that spoke to the song’s origin. The ruling memorably stated that consumers “would no more think that the song was produced by Mattel” than they would “upon hearing Janis Joplin croon ‘Oh Lord, won’t you buy me a Mercedes Benz?,’ . . . suspect that she and the carmaker had entered into a joint venture.’”
But Jack Daniel’s upended the Rogers test by challenging the 9th Circuit’s ruling in favor of Bad Spaniels to the U.S. Supreme Court. The result was hugely consequential for the complex and growing area of intellectual property law: The nation’s nine high court justices unanimously agreed that Judge McNamee was right and the 9th Circuit was wrong.
“Under the Ninth Circuit’s approach, Bad Spaniels was automatically entitled to Rogers’ protection because it “communicate[d] a humorous message,’” according to the June 8 opinion. “On that view, few trademark cases would ever get to the likelihood-of-confusion analysis. And the Ninth Circuit was mistaken to believe that the First Amendment demanded such a result. When a mark is used as a source identifier, the First Amendment does not demand a threshold inquiry.”
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The ruling had immediate and far reaching effects. Attorneys at Skadden, Arps, Slate, Meagher & Flom LLP said it “not only explicitly cabins in the test’s application, but also more broadly casts significant doubt on the viability and scope of the test going forward.” Attorneys at Holland & Knight LLP said the ruling “should serve as a warning to commercial copyists attempting to trade on the goodwill of established brand owners.”
T.I.’s and Tiny’s lawyers said the opinion is “directly on point” to their lawsuit with MGA when they requested Judge Selna toss the May 27 verdict and order a new trial.
“Because MGA uses the accused trade dress as a source identifier, the Rogers instruction should not have been given in this case,” according to a July 12 motion.
The jurors who rejected T.I. and Tiny’s claims didn’t indicate the instruction was particularly influential in their verdict. Instead, they made clear they were sympathetic to MGA’s lawyers’ argument that the lawsuit is a “shakedown” when they not only swiftly rejected T.I. and Tiny’s claims, they asked if they could order them to pay the company’s attorney fees, too.
Federal judges, however, must presume jurors understand and follow each instruction given to them, and an instruction based on an erroneous legal standard is presumed to be prejudicial. A verdict can still stand if a judge is persuaded that the jury would have reached it regardless of the erroneous instruction, which MGA’s lawyer Mark Finkelstein of Umberg/Zipser LLP in Irvine tried to do on Monday after Judge Selna issued a tentative order on Sept. 8 granting the new trial. The judge’s final order makes clear he wasn’t persuaded.
“At oral argument, MGA posited a somewhat tortured path to advance the argument that it was more probable than not that the jury’s verdict was unaffected by the Rogers instruction. The Court finds otherwise,” Selna wrote.
The judge has not yet scheduled a new trial date. He said Monday that it may not occur before the end of the year.
The first trial ended in a mistrial in January after jurors mistakenly heard deposition testimony from a woman who said she stopped buying the OMG Dolls because, “I did not want to support a company that steals from African Americans and their ideas.” Judge Selna had ordered attorneys to stay away from cultural appropriation and racism claims during trial.
The case grew particularly contentious after MGA’s lawyer Jennifer Keller said the n-word when cross-examining Zonnique about her use of the word in song lyrics. The questions were meant to support MGA’s argument that it would not model dolls on T.I. and Tiny or their family, but it led one juror to complain after the mistrial that MGA was trying to appeal to racism. T.I.’s and Tiny’s lawyer Erin Ranahan of Winston & Strawn LLP said in a filing after the mistrial that Keller engaged in “racist behavior,” which led to Keller and her co-counsel, Chase Scolnick, requesting a $75,000 sanction against Ranahan, which Judge Selna rejected.
The judge prohibited MGA’s lawyers from asking questions about Zonnique’s profane song lyrics in the second trial, as well as T.I.’s. He also didn’t allow them to ask T.I. about his criminal convictions, deeming them irrelevant and highly prejudicial, and he wouldn’t allow questions about a now-closed Los Angeles County District Attorney’s Office sexual assault investigation into T.I. and Tiny.
VH1 cancelled the couple’s reality show T.I. & Tiny: Friends & Family Hustle — a sequel to the earlier T.I. & Tiny: The Family Hustle — in 2021 after the D.A’s office publicly announced the investigation, though no charges were filed.
When T.I. took the stand in May, Keller asked him in cross-examination if his show was cancelled “after some very negative publicity about you and your wife,” but Selna sustained an objection for violating a pre-trial ruling. Keller then asked if T.I.’s show had been cancelled, and T.I. answered, “we decided to not move forward.”
The new trial moots MGA’s request that T.I. and Tiny pay nearly $6.2 million to cover the company’s attorney fees. Keller’s and Scolnick’s firm, Keller/Anderle LLP, charged nearly $3.2 million for pre-trial work and the two trials. Their motion for attorney fees includes hourly rates between $250 for paralegals and $825 to $1,025 for partners, as detailed below.
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