Overview:
Even after a Brooklyn court docket ordered Haitian musician Dener Ceide to pay $1 million in damages to Zafem World Leisure for trademark infringement, he continues performing beneath the “Zafem” identify. Authorized consultants say the transfer may expose him to new sanctions.
NEW YORK — Dener Ceide, the outstanding Haitian musician and band proprietor, should pay $1 million in damages to the Zafem World Leisure Group, a Brooklyn federal court docket has dominated. The order comes after Wiss Joseph and Mary Joseph, the 2 house owners of Zafem World Leisure, filed a trademark infringement case towards Ceide.
Zafem World Leisure registered its identify in 2021, after practically a decade of use. The corporate is understood within the Haitian-American music business for selling and organizing Haitian live shows and leisure occasions throughout the USA.
In Could 2023, Ceide tried to trademark “Zafem” for his personal music group, however the U.S. Patent and Trademark Workplace rejected the request, ruling that utilizing the identify would infringe on the plaintiffs’ trademark rights.
Since Zafem is a recognized phrase in Kreyol, translating to “my enterprise” or “mine,” there’s a query of whether or not or not it’s a time period that may be protected beneath trademark. Justin M. Jacobson is a New York-based leisure legal professional who focuses on copyright and trademark. He famous that it’s all in how the phrase is used. He additional defined that since Zafem and Ceide provided such related companies, there was motive for confusion.
“You possibly can be Zafem for stickers and hats, if nobody else is utilizing it,” Jacobson mentioned.
“Whenever you have a look at their two purposes, the artist goes for the very same issues: music manufacturing, dwell live shows and manufacturing of music. They’re undoubtedly going to be thought-about confusingly related.”
But Ceide endured in his use of the identify, launching an internet site, “Zafemmusic.com,” and releasing an album titled “Zafem,” whereas repeatedly ignoring a number of cease-and-desist letters despatched by Zafem World Leisure. As well as, Ceide had been making an attempt to launch a band referred to as Zafem. The group’s debut single, “Dlo Dous,” was launched in Could 2023 and has since gained over 2 million streams on Spotify.
“On the one hand, for model house owners, it’s a reminder of the significance of defending one in all their most beneficial belongings via federal trademark registration,” mentioned Alain P. Mathieu, legal professional and co-chair of the Sports activities & Leisure follow group at Prince Lobel Tye LLP. “However, it’s a transparent warning in regards to the extreme penalties of willfully utilizing another person’s protected model identify with out permission.”
Due to Ceide’s actions, Zafem World Leisure filed go well with within the U.S. District Courtroom for the Jap District of New York in Sept. 2024, citing counterfeiting and infringement beneath 15 U.S.C. § 1114, false designation of origin beneath 15 U.S.C. § 1125, and customary legislation unfair competitors. Ceide and his authorized staff failed to reply in time, prompting the Sept. 17 choice by the court docket in 2025.
The decide presiding over this choice, Decide Brian M. Cogan, supported the plaintiffs’ claims of infringement, writing that the defendant’s actions had been an “overwhelming proof of willfulness.”
Leisure legal professional Cassandra Spangler defined giant statutory damages awards assist present the worth of mental property within the music business.
“A big award of statutory damages may help present the worth of an mental property, particularly inside the music business, which depends on the safety of mental property, and assist to discourage improper use of mental property belonging to a different,” she mentioned.
Underneath Part 35 of the Lanham Act, the utmost statutory damages for willful infringement are as much as $2 million per infringed mark. Non-willful infringement can carry penalties as much as $200,000.
Nevertheless, the court docket solely awarded Zafem World Leisure $1 million, for the reason that plaintiffs had been unable to supply ample proof of their monetary losses. In his ruling, Decide Cogan reasoned that since Ceide, the defendant, didn’t reply to Zafem World Leisure’s unique go well with, the plaintiffs couldn’t show the adverse affect on their earnings.
The court docket additionally issued a everlasting injunction that prohibits Ceide, his firm and different associates from utilizing the identify Zafem, or something just like it, to market any of their music.
On their Fb web page, Zafem World Leisure publicly reacted to the court docket’s choice, writing that “justice has spoken.” The put up, printed on Oct. 26, went on to warn others of utilizing their identify going ahead, saying that “anybody knowingly nonetheless selling, advertising and marketing, managing, sponsoring & endorsing…you at the moment are on discover.”
“That is greater than music leisure,” the put up concluded. “That is about fact, respect, and authorized integrity.” Representatives for Zafem World Leisure didn’t reply to requests for remark.
Ceide declined to remark publicly on the court docket’s choice or supply any indication that he’ll attraction. Nevertheless, his band nonetheless has performances lined up. One is for a concert in Guadeloupe on Nov. 8. They’re additionally set to carry out on Nov. 28 in New York. Organizers for the Nov. 28 live performance notified The Haitian Occasions that they haven’t been notified of “any modifications” from the band as of but.
Alain P. Mathieu, an legal professional and Co-Chair of Prince Lobel’s sports activities & leisure group, famous that if Ceide proceeds with utilizing the identify Zafem for these performances, he may face authorized penalties.
“As a result of the court docket issued an injunction,” he mentioned. “They might be in direct violation of a court docket order, and might be topic to extra sanctions. They’re topic to a brand new advantageous each time they violate the order.”
For a lot of Haitian artists constructing careers throughout borders, the case is a cautionary story in regards to the want for authorized safety of their mental property.