For a good synopsis of this scalding hot legal tea, check out this bitchin article.
Hello and welcome to episode 15 of the unfuck your best podcast. I am your host Braeden and today I am joined by my good friend Amanda. If you did not already listen, go back and check out episode three of the podcasts where we do a little bit of an intro, talk about the differences between different areas of law and kind of segue into this episode. Before we do get started, I want to let all of you know that tomorrow, Friday the 22nd will be my last a master class on all of the small business legal shit that you need to know. So hop over to the website unfuck your biz.com if you want to get registered for that. So let's just dig in. Hi Amanda. How's it going? Hi, it's good. Awesome. So we're going to talk a little bit about Jeffrey started a, because he's the only, he's the only makeup artists that I watch on YouTube. I'm sure you might know a lot more of them.
I do. Yeah. There's a whole world out there on YouTube of people that will show you all kinds of tricks with your makeup.
Yes. And I just mostly watch like for the drag queen interviews or for being honest, because a lot of the RuPaul's drag race, drag Queens have gone on these YouTube channel. So that's kind of how I discovered it. But now I'm pretty into his Gucci collection as well. It's different story. Okay. So we're going to talk about, we're going to talk a little bit about this case that we found. Um, do you know this many fellow?
I don't. You introduced him to me and then you, we're calling him Manny. Muah.
You guys. I don't like, I don't know any of this.
I'm like MUA as in a makeup artist. And you were like, yeah, I guess. I dunno,
but okay. So when you Google, like when do you Google it? All of the articles read Jeffrey star and Manny MUA. So I was like, I don't understand.
I mean maybe he pronounces it move with it cause that's fine. Um, I mean maybe it's like one of those things like where you can just call the acronym the way it sounds. I don't know.
I don't get if the articles are calling him Manny MUA, because he requires like more explanation than Jeffrey star does or if that's actually a part of his online persona.
Yeah, I mean he does and his rulings isn't Martinez. So I mean he has maybe he used to go buy me any warranty and now it's just like, no, the MUA makes it clearer. It's his job. He's makeup.
Okay. Perfect. So what we're going to do in this episode is we actually found the complaint for this lawsuit that was filed. And first I'm going to have Amanda explain to you guys what a complaint is. I'm gonna put her on the spot and then we're gonna read through the allegations and just kind of talk about what the legal complaint is, what it does, and then we'll, we'll riff off of that a little bit. So do you want to tell all of our listeners what a legal complaint is since you are a resident litigation expert? Okay.
So a complaint's a really important document. It's where you put together everything that you need to argue that the other side has done. And so you're going to lay out causes of action. You're going to introduce the parties in a federal filing. It's pretty serious and it gets a little repetitive because at the start of every section, it's like we incorporate paragraphs one through eight. You know, like, it's kind of funny the way you have to draft them, but there is an art to doing it. And obviously I would never recommend anybody filing a federal complaints without an attorney because they are even more complicated in federal court. But, uh, complaints really just going to lay out the story, what happened, who did what to who, um, where this falls under the law and then what you want out of the lawsuit, which is, you know, money, uh, injunctive relief, which is basically saying make them stop doing this. And then injunction is something that is, uh, stops people from selling something, stops them from featuring a commercial or using certain advertising. It's a very strong measure from a core basically saying you have to stop doing X, Y, Z. um, complaints can be huge. They can be over a hundred pages or they can be really simple and only be like 10 pages. But in federal court they're usually pretty massive. And in trademark litigation they have to say certain things. So those are going to be longer complaints.
And the reason why Amanda's mentioning federal core is because this case we're going to be talking about as a trademark issue, which is ruled by federal law. So if you're not already aware, we have state courts and we have federal courts. So depending on what you're going to Sue someone for your case is going to go to one of those two court system.
I like to think of state court as basketball that you play in high school and federal court is the NBA [inaudible]
that's interesting cause I don't really, I don't really feel like, I don't really look at it that way because it seems like so much, a lot more litigation has brought in state court. So it's just
really big cases that are happening in state court, and I'm probably gonna get hate mail for this, but federal court has these really rigid requirements and judges that really are strict and very, very bright. I mean, most judges are very, very bright, but they, at least in the Northern district in Dallas, are just tough. And the state court judges in Dallas are also tough. But I don't know, I feel like I get to see their human side a little bit more and just, I feel like they're a little more accessible and approachable and it doesn't seem as though we're doing something that's has just a scary amount of weight. And when I'm in federal court, I always feel like it's like that saying like there you went and made it a federal issue or whatever. You know? Like it really does feel a little bit like of a big deal. Like, okay.
Yeah. The one thing I want to distinguish like really though is that I feel like a lot of non-attorneys are people well who aren't really involved in the legal system. Think that federal court is almost like an appellate level court or something. So what are the the, Oh my God, I can't even talk today. So what I'm trying to say is if you are going to Sue someone for medical malpractice, that can be a very serious issue that's going to go into state court because it's deals with tore and areas of state law. If you're assuming some for trademark, it's going to go to federal court. So it's not like the federal court is looking at issues once the state quarters fuck them up.
Um, sometimes you can remove from state court to federal court on,
well you should do old. Should we do a whole episode on civil procedure?
I know removal, it's a thing. Well, okay, so I'm going to get a tiny example, just so you know. So, okay. So I want us to accompany from California and I have, I have the ability to Sue them here. It's for $500,000 and they're entirely in California and I'm entirely in Texas. I can, they can remove, um, to federal court if they feel like that's a better place for them because there's diversity and it's more than $75,000, that's an issue. And they may want to be in federal court. Maybe I put them in a terrible state court where they're totally gonna get pulled out by a jury or whatever. Um, I think that, yeah, it's, it is a little bit complicated, but
it's a lot complicated. So if you all, if you all have seen legally blonde, that first scene when she's at Harvard and she gets asked what subject matter jurisdiction is and then she doesn't know the answer and she gets kicked out of class. That's a silver procedure question. So at my law school, civil federal civil procedure is a full two semester long class. You spend an entire year learning all of these rules.
Wow. Yeah, we didn't do that. Our Texas roles align very closely with federal rules. So I remember taking a class and being like, is there even a difference? Like what are we doing here? And a lot of other names are the same. And so it was interesting to be like, okay,
we just modeled our entire legal structure. Yeah, ours was. So first semester is basically everything you would expect to be on the bar exam and then second semester was like complaints, discovery and all of the actual rules that you really need to know when you practice. Okay. Sorry, sorry you guys. We really, we need to evolve into law school like memory. We really did and the funny thing is is like my conceptual understanding of this is basically just what I know from law school and internships. Amanda actually worked in litigation so she has had to deal with all of this and then actual work contexts, which is very different [inaudible] but now that you all know what a complaint is, Oh sorry. The other I wanted to mention is I talk a lot about serve as a process just under the subtopic of what a registered agent is. And Amanda, correct me if I'm wrong, but basically when you get served with process, basically it's someone handing you a copy of the complaint that they filed with the court. So the understand the allegations that are made against you and what you're being sued for.
Yeah. And that has to be done. Like that person has to be served or you're not going to get anywhere, like you're going to be in all kinds of trouble. Um, so yeah, it's a necessity and sometimes the sheriff does it or you can just hire a process server to go do it.
Yes. And when we talk about who you want you your registered agent to be, that's why some people don't want to be their own registered agent because they don't want their personal home address being the address they're going to be personally served at.
Yeah. Some days they don't have a choice cause they don't have a physical office. So there's literally nowhere to like have that sense and they don't want to pay the money for the registered agent company. That's, you know,
well and I'm sure in those States are the same, but here you can get a corporate registered agent for $50 a year. So
yeah, they're a little more expensive here. For whatever reason. I think they're like $150 but yeah, it's not a big deal. I just think people don't know about it. So they don't choose that option?
Yes. Okay. So let's dive into this complaint. Should we start with what the causes of action are?
Yes. I need to pull it up being a bad boy right now,
just an FYI co a cause of action. This is the way I look at it and I kind of use mangoes, legal definitions for everything, but I explain it as a cause of action is what you're suing someone for. So there's gotta be like an actual law that someone's breaking that you're suing them for. And that's what the cause of action is. So in those complaints, you're going to have multiple causes of action. So in this one they have common law, trademark infringement, copyright infringement, federal false designation of origin, California statutory, unfair competition, California common law and fair competition and federal trade dress. And Frenchmen. These last four are pretty nuanced. I don't really know much about them to be perfectly honest or mostly just going to talk about the first one, which is common law, trademark infringement. And Amanda, you found that one to be pretty interesting.
Yeah. So normally, um, when you're filing trademark infringement, you've registered your Mark, which means you've gone through the entire process with USP Tao and gotten it approved. You can use that little R with the circle after your logo or name or whatever. You had trademark saying whatever you want. And so because you can't get the kind of statutory damages when you have it registered your Mark, I'm always surprised to see those lawsuits filed. And in this case it looks like they just were in the process of filing. That's why they had to do the common law, common law like it was, it was in process, but it takes like a year to get your trademark file and sometimes it can be a little faster than that, but it takes so long that I'm guessing that's why they just were like no common law trademark infringement. It still works.
Yes. Okay. So you want to just, should we just like read the complaint?
Uh, yeah, go ahead. Okay.
Super exciting podcast guys. You guys are gonna listen to us read legal documents, but really just the first bit, it's actually pretty interesting. So it starts by saying plaintiff black moon cosmetics by and through its undersigned counsel States as follows for this complaint against Manny Gutierrez doing business as that Manny Mula
Oh good here as I said it, the wrong name. His name is Gutierrez, sorry.
Manny MUA, Jeffrey star and Jeffree star cosmetics. So basically it says plaintiff is suing Manny and Jeffrey star and alleges the following. So the action arises out of defendant's intentional and willful business decision to ignore black moon's first used trademark rights and copyright and black Noons packaging for its cosmetic products. Do you want to translate that first paragraph for us?
Yeah, so because they didn't register, they're saying, Oh well we have rights, but their first year S trademark rights, common law, um, and then they apparently copyrighted the image of the black moon. So that's different. That's the image of it rather than the source signifier. Is that clear as mud? I feel like that's,
yeah, the weed have the be really just digging into the lingo of intentional and willful business decision to ignore their first years trademark rights. So essentially what they're saying is that Jeffrey star and that Manny knew that the defendant or that the plaintiff's black moon cosmetics was using this Mark, which is this moon image, and I'm going to put like screenshots in the show notes so you guys can see them. They knew that black moon was using this imagery and they chose to use it in their own product launch anyway.
Yeah, it's a very like, um, unique, it's holographic Crescent moon, uh, with a black background. So it's, it's not something that you see all the time. It's, it was fairly unique for that brand. [inaudible]
yes. Okay. So they say plaintiff launched in 2015 as a mother daughter duo, the manufacturers and sells high quality, well-crafted cosmetic products to consumers at their website and they are known for their use of bold and eye catching packaging on their products. Amanda, is that true? Do you know, black moon for their use of bold and eye-catching packaging?
I mean, I guess I didn't actually know what the spirit beforehand, but apparently they're wonderful. Um, I'm going to look at the now am brand lift for sure with this lawsuit. I'm, yeah,
black. Okay. So continuing black moon has grown organically to over 250,000 social media followers, which I don't know how many Instagram followers DeFreeze star has, but probably a few million. I'm guessing one of black moon's most successful packaging offerings introduced in June, 2015 incorporates a Mark consisting of holographic Crescent moon on the black background with black moon and Boston holographic types near the Crescent moon. So we're not going to read through the rest of this. I think picture basically, so short. Go ahead.
So I dug into their trademark filing and they tried to trademark black man and I didn't get through everything, but I did get through their first attempt, which was back in 2016 and it was rejected because there was another black moon that sold clothing and accessories and it was just too closely related and they lost their appeal with the trademark examiner. But the person said, because sometimes you can get a trademark by having some acquired so much same that you've acquired a second meeting with the name. And the trademark examiner was so cold because they said they were so cold. They said, basically, I'm paraphrasing, but it was like, I don't care about your Facebook, Instagram, YouTube following numbers. You have not acquired fame, which I interpreted as you need to submit magazine articles. You need to submit if you'd be featured on television. I think there's like, there's peer studies that you can show.
I think they didn't have enough evidence to show we've risen to secondary meaning, uh, this is a strong Mark. Um, this isn't going to be confused with the clothing line that was already registered. Um, but it was basically like, I don't care about your like social proof from Instagram. You're 250,000 followers. You're not famous was how I read this comment. Because if you dig in to trademark filings, you can look at all this correspondence. It's all online. And I just thought that was fascinating because of the way that we think about fame and celebrity with influencers, YouTubers. And
I feel like that's so subjective. Like who gets to define like what?
Well, apparently we trademark office fairly at the U S PTO. They're not impressed that you have famous people that use your products. Um, yeah. So I thought that was really, really interesting. And it's the law slow to adapt to internet celebrity. Is it something that's going to work way more later or be weighed? Um, as, as if, you know, this is a famous person or this company has deported so much fame. They apparently were not impressed. So, I don't know, I just kind of hung on those words and thought to myself, okay, I have to think about this when I'm filing trademarks because they're two people do have this massive social media following, don't have write ups in the New York times or local, you know, magazines or newspapers. So you don't get featured in that PR or way they get featured by making their own stories and their own content. I don't know, I was just so fascinated by that and I really like want to talk to that trademark examining attorney now because you know, maybe to me it kind of,
because it basically, it's saying you can't arrive, like you can't really rely on virally on social media. Is that a word anyway to, to kind of get your trademark through because it's still kind of circles back to first use in a lot of circumstances, right?
Yeah, I think so. So anyway, we can go back to the case. Sorry. And I was totally unrelated to this case, but there Mark's like, I wanted to see how much they had filed and they did get their logo approved. So, I mean, the logo with the holographic Crescent moon is registered, no one can use it. Um, I guess now, uh, post this lawsuit. Uh, yeah.
Yeah. So as we're, as we're reading through the complaint, the kind of the idea I just want to get across is the concept of alleging basically all of the facts in a chronological order. And I don't really realize that this is an abnormal way to write until I actually go back and look at legal writing because it's kind of beaten into you in law school, but it's very dry. It's kind of repetitive, but you're supposed to be writing out these very short statements of fact. So here's like paragraph seven, defendant Manny's subsequently communicated with black moon expressing a fondness for black moon's packaging design. So that's a whole paragraph. But basically this is to them, an important fact to help them with their case going back later. Yeah. Showing them that the defendant actually told them that they liked their packaging, which proved like to them that back proves that he was aware of their packaging and knew about it before he copied it. And also he liked it, but he wanted to copy it.
I think it's like kind of the cornerstone of their entire lawsuit. Cause a lot of times you can't really prove, Oh, they even knew about us. I mean it in this, it was pretty blatant. It was like OMG love, you know, like he literally wrote to them and was like, I'm dying for this packaging. Like, so thirsty for it, LOL y'alls. I'll like all of the words. And they were like, yo, we'll send you some. And then, you know, like eight months later he comes out with like identical packaging for a lawyer. That is what we would call like a cornucopia of evidence
according to Copia of evidence.
Like there was no mistake here. Like this is, this is insane. So they have a screenshot of the text message, like the TMS are in this lawsuit, which I don't think people realize in lawsuits. You can include pictures and people included all the pictures and they included all the tools that came in later that we're calling them on the similarity of the designs saying like, nice job, you just copy black moon. Um, and they added that as well. Like in this case it was really about telling the story of what happened because they wanted the judge in this case to understand this isn't just some random people on Instagram talking to each other. These people have a significant following. There's a lot of money involved. This is serious work. This is, this is these people serious work. That's a terrible sentence. But
yeah, so it shows, there's a screenshot of Manny who DMD the company and it says, I am very interested. I asked and we don't know what that's really in regard to some previous conversation. I absolutely love your packaging. Would love to try your lip ease. Do you know what that means? Lipstick? I dunno.
Yeah. Oh yeah, the gloss lip lip, anything.
Okay, perfect. And then they said, Aw, yay. Thanks so much for the kind words. May I have a mailing address to send them to? So they have that screenshot here. Right. And then you scroll down a little bit further with that, even without even really reading. And you see another image of Manny posting his brand new product on his Instagram. Basically the same logo,
holographic moon, and then his name. I mean he threw his name in there. Black moon. That was good. Um, so yeah, typically these aren't open and shut situations, but in this case it really is. And if some workers registered, they wouldn't even have to put up that much information because it's a registered Mark. There's not a lot of defense to a registered Mark. It's kind of like strict liability. Nope, you're in trouble.
Can you also explain the difference between the trademark claim for the name and then the copyright claim for the packaging? Like how those are different things.
Yeah. So copyright is, you can copyright a lot of different things. Images are the big thing, photographs, designs. Um, trademark is more the source identifier as well. And that can be either the actual words or the logo. So in this case, I, it sounds like the moon itself would be copy righted. Um, and that's what he stole. Um, I'm actually not a copyright expert. I don't typically do a lot of cupboard at work, but that's how I understand it. I'm, I've actually worked on a copyright infringement case and that's the closest I've come to it, which also have huge statutory damages. Um, so yeah, I guess that's a distinction. And trade dress, I've actually worked on a trade dress matter as well. Trade dress is your packaging and that can even be your website. Your website's technically packaging as well. But an example of packaging would be the Coke bottle that looks, has the curvature that's, that's the trade dress. And so if someone copied a Coke bottle identically, that would be a trade dress violation. And so in this case they're alleging that the actual packaging was unintelligent as well.
Okay, great explanation. I was like kind of off in LA LA land, just so you know, all of these pictures and off topic, this has nothing to do with the legalities of the case. But if we were going to vote on a winter, I really think that Jeffrey's packaging probably looks the coolest.
Well, I think he probably has the best team, right?
He probably has a whole bunch of people. He's,
I think, I think his vendors are probably giving him the best you know, deal and working with him on the best boxing and all of that, but yes.
Okay. As far as this case goes, unfortunately a little anticlimactic guys, we don't have a great resolution because through our search we found that this case was settled between the parties, which probably means that the defendants just paid the plaintiffs a lot of money to get rid of it, but all of that
knew that disclaimer. We don't know that
we know the disclaimer. We don't know that because
well, yes, if not they have not claimed or asserted any liability and [inaudible].
Right. Once you go into a settlement, it's all strictly confidential so it's not going to be out there in the media.
I believe both sides in a settlement agreement are going to say like no liability because sometimes there's a counter claims and things like that and so everyone's going to say, this is a draw. We're not copping to anything. We're going to resolve this in an amicable way. And then that's all you're allowed to say about it, that this was resolved and that's it. And he basically everyone goes, mom, any tech or listening to a podcast where someone's like, yeah, I got a letter. And then it was fine. It worked out. That is podcast speak for, I got to see some desist, I called my lawyer, we went through months of issues and negotiations. Then we signed settlement agreement and I'm not allowed to talk about any of it. And I listened to a lot of podcasts so I hear certain words and I'm like, Oh, you called your lawyer. And anyway, just a little behind the scenes tip.
Just a, yeah, a hot tip for you guys. But that's why on a lot of these podcast episodes, what we're going to do, you're not going to hear about like any final payouts that are made. So I think that's kinda all we really wanted to talk about with this one and the future. I kind of consider talking about some issues that all of the different fast fashion companies have gotten into with copying designers. Clothing.
Well, I think it's an influencer problem too and it's very fresh and someone got called out recently, um, who I really like and I follow and I feel for her. But she got a cease and desist over a dress that she pushed from Amazon and I had to take down all of her stories and apparently I'm here. This is all secondhand cause she told someone else who talked about on his podcast, but they told her she has to hand over all the money she made off of the Amazon dress that she was promoting that apparently was a rip off of a nice designer dress. This is something I think we're gonna see a lot of because a lot of influencers do this.
Yeah, I have, I have another one too. But um, I remember now one of my friends doing an Instagram story about this girl who was showing people I think have a, she had a blog about how she makes a ton of affiliate income. She'll go on Pinterest social find like an expensive jacket she likes on Nordstrom, like a $300 jacket and then she'll go onto Pinterest and just search like Brown fur jacket and then she'll download the image and then upload it to her blog and then leave the Nordstrom jacket. So it's not even the same product. She's basically stealing other people's photos to then make affiliate income. Like for brands.
I feel like that has to be some kind of like violation of your affiliate thing you signed up for.
Also just like blatant copyright in Frenchmen,
although a lot of influencers will put something up and be like, okay this one is sold out because a lot of stuff sells out cause they're, you know, pimping it. And then they'll say, but here's like three other ones that are similar. So I don't know. It might be some kind of like falling through the cracks, like like ality issue.
I feel like that's fine. But also the, I feel like the differences is if you are selling product for Nordstrom and getting an affiliate income from Nordstrom, then Nordstrom probably not going to care. If you use their photos because you're basically working for them. But when you're a photographer's photos to make money on Nordstrom products, that seems extra problems.
The misuse of photographer products, even by brands apparently like there's someone that I was talking to, amazing photographer and a big company here that's based out of Dallas, probably one of the most historical department stores in the nation. Um, but I'm not going to tell you, I'm not going to name names cause that's not my style. Um, they used her image and didn't pay her and I just thought what's this huge company did that? And I thought that was kind of insane. So the misuse of photographs is something that I think it's just going to keep following up and maybe the laws will change and people will be more careful about this. I don't know if Pinterest is part of the issue where people just think, well, I messed around with a picture on Pinterest. I should be able to use it for my own marketing and start putting it out there. But I've talked to more than one photographer friend of mine that has just been irate about the misuse of their photos. Awesome.
Yes. So these are the exact types of things, types of things that we want to talk about. So if you all find some good articles or you have any personal examples, send them to us and we'll try to break them down on podcast as much as we can. Obviously not like if someone took your photos, we're not giving you legal advice on the podcast, but if you find like a news article, then we'll like talk about the article.
Yes. Like Fenty getting sued for posting. Gigi had did a photo that was owned by getting into itches or you know, things like that.
Yeah, let's talk. I don't know who that is, but let's talk about that.
Yeah, so a lot of designers this time, but yeah, I'm like ready to talk about it and like let's do this. I'm ready. Counted it down. [inaudible]
Amanda's got her coffee and she's ready to roll, but we'll keep this one just to like the Jeffrey star drama and then we'll start stockpiling piling list of future topics. Yes. Okay. Um, any other final words of wisdom on the complaint that we just went through?
Um, I think you should forever be careful about things that you see that you like. And if you have a business in, you're like, I'm gonna start using some similar fall color schemes, color stories, whatever you want to call it. You need to be exceedingly careful, especially if you are, your brand is growing because you will be called out and people are increasingly protective of their intellectual property, which is their trademarks, copyrights, all of those things. I think that we get excited about a design. We think it'll work. It's fine. It comes from me when in fact there it's been gleaned off of a lot of other people and maybe actually might be an exact replica of something that is protected and owned by [inaudible]
somebody else. Yes. We can call that unintentionally derivative work where you subconsciously copied something.
Yes, I actually did it. And was like, it'll work out. Right.
That'll be fine. It's going to be great. Okay. Uh, so thanks. Thanks for joining me in Mattos. Super fun. I hope everyone else had fun listening to our, uh, hot legal gossip.
Okay, so everyone, don't forget to subscribe and leave a review. We'll be back. Probably Amanda will be back probably in about another 10 episodes or so. We'll find something super fun to talk about and record. Uh, I of course will be back with you in your earbuds on Tuesday, so I look forward to chatting with you then. I'm a good date.
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