Hip-hop legends Outkast recently filed a lawsuit against an Atlanta-based EDM duo for trademark infringement and unfair competition over the use of the group’s name, “ATLiens.” Outkast claims it coined the term “ATLiens” (pronounced A-T-L-iens, a portmanteau of the abbreviation “ATL,” standing for Atlanta, with the word “aliens”) and the group famously used the term as a song title and album name for their 1996 sophomore album. Both the song and album ATLiens were massive successes for Outkast, with the album going double platinum and the song peaking at 35 on the US Billboard Hot 100.
Outkast’s Claims Against ATLiens
Outkast claims that the EDM group ATLiens has been using the name for years without permission and trading off the association to Outkast. The complaint alleges that ATLiens picked the name:
“To trade upon the tremendous fame and goodwill associated with Plaintiff’s ATLiens album, song, and mark, or, at a minimum, to call to consumers’ minds Plaintiff’s famous ATLiens album, song, and mark.”
Outkast also takes exception to the fact that the EDM group performs in masks, which they claim hides their identities in a way that “consumers will mistakenly believe that the members of Defendant are one and the same with — or at least somehow connected to — Plaintiff.”
Outkast claims that they have tried to negotiate with ATLiens, but it seems that the final straw for Outkast occurred when ATLiens promoted an upcoming show in Atlanta using a poster that they claim mimics a show post that Outkast used to promote its 20th anniversary shows.
Trademark Infringement Twist: ATLiens’ Trademark Registration
Musical artists using song titles or terms coined by other musicians to name their musical acts is common in the music industry and is typically seen as a tribute. However, Outkast clearly sees ATLiens’ use of the term as going too far. However, in a twist to a typical trademark infringement/unfair competition claim, ATLiens actually owns a federal trademark registration for the term, which makes enforcement by Outkast more difficult. Outkast will have to prove that it should own exclusive rights to the term, relying on its prior use, even though the USPTO already granted registrations to the EDM group. Outkast seeks to both enjoin ATLiens’ use of the term and cancel their federal trademark registrations,
Outkast’s Legal History: The “Rosa Parks” Case
Outkast is no stranger to intellectual property claims and famously was on the receiving end of a lawsuit in 1999 over the title of its song, “Rosa Parks.” The well-known civil rights activist sued the group for misappropriating her name and objected to the song’s obscenities. Outkast ultimately won in federal court with the court ruling that while there was linkage between the song and Rosa Parks, the song was an “expressive work” and was therefore protected by the First Amendment.
Trademark Protection and Enforcement
If you are interested in trademark protection for your business, need assistance with enforcement against an infringer, or need help defending your use of a term, please contact KJK Intellectual Property & Technology partner Scott Brown at sgb@kjk.com or by phone at 614.427.5752.