Wednesday, July 7, 2010
Court: Suit Against Attorney Over Trademarks Not SLAPP
By STEVEN M. ELLIS, Staff Writer
The Ninth U.S. Circuit Court of Appeals yesterday declined to toss a lawsuit against a Los Angeles attorney embroiled in a family feud over ownership of trademarks for the Sonya Dakar line of skin-care products.
A three-judge panel said a suit against Kia Kamran over his role in helping Sonya Dakar register marks in her own name after they expired in 2007—rather than in the name of a corporation run by her husband, Israel Dakar —was not a strategic lawsuit against public participation.
Ownership of the “Sonya Dakar” and “The Problem Skin Specialists” marks came into dispute after Sonya Dakar, the founder of a Beverly Hills skin clinic that is a favorite of celebrities, and her husband entered divorce proceedings.
According to Israel Dakar, the marks are owned by Mindys Cosmetics, a corporation he founded with the pair’s son Natan in 1994 to manufacture and market the line of skin-care products that bear Sonya Dakar’s name and likeness. The company’s name is an acronym of the first initials of Sonya and Israel Dakar and their children, who also include son Yigal and daughters Donna and Mimi.
Mindys registered the two trademarks in 2000 and 2001, listing Donna Dakar as the owner, but in 2007 Kamran—who had been retained by Yigal Dakar the previous year “on behalf of the family business,” and who had not been involved with the earlier registrations—registered the marks in Sonya Dakar’s name at her request after noticing that they had expired, and after being advised by Yigal, Donna and Mimi Dakar to consult with their mother.
Natan Dakar sided with his father in the divorce, while his siblings sided with their mother, and in 2008 Israel and Natan Dakar sued Sonya and Donna Dakar and Kamran on Mindys’s behalf in federal court. The complaint alleged trademark infringement by Sonya Dakar, legal malpractice and breach of fiduciary duty by Kamran, and fraudulent concealment and conversion by all three defendants.
Kamran moved to strike under California’s anti-SLAPP law, but U.S. District Court Judge Stephen V. Wilson of the Central District of California denied the motion. Applying a two-prong test, he held that the suit did not arise from protected activity, and that even if it did, Mindys had demonstrated a probability of prevailing on the merits.
On appeal, Judge William A. Fletcher wrote that Kamran’s act of filing a trademark application was protected activity because it was “more than merely a ministerial act connected with a business transaction,” and he concluded that the corporation’s suit arose from the protected activity.
But he agreed with Wilson that Mindys’s allegations—if accepted as true—set forth the prima facie case necessary to sustain a favorable judgment, defeating Kamran’s motion to strike.
Examining the malpractice and breach of fiduciary duty claims, Fletcher said Kamran “was at least negligent in determining who had authority to act on behalf of Mindys.” The judge also wrote that Mindys established prima facie fraudulent concealment and conversion claims where it alleged that Kamran, a fiduciary, never advised the company of the marks’ expiration or their registration in Sonya Dakar’s name, and where there was a reasonable probability that Kamran was an agent of Sonya Dakar.
Both Kamran and his counsel, William K. Mills of Parker Shumaker Mills, who represented Kamran along with Justin Denlinger, declined comment.
Los Angeles attorney Al Mohajerian, who represented Mindys on appeal with Michael Thomas Smith, but who is no longer the company’s attorney of record, welcomed the decision, commenting that Kamran’s anti-SLAPP motion was “weak, to say the least.”
He said the corporation’s action could proceed, but that he did not expect any progress until matters of community property ownership are resolved in the Dakar divorce. He also opined that Kamran “shouldn’t have taken sides” in the dispute.
Mohajerian further confirmed that two suits filed in the Los Angeles Superior Court, respectively, by Sonya and Israel Dakar remain pending.
In the first, Sonya Dakar has alleged that she owns the trademark to her name because she was first to use it. She said that she only gave Mindys a verbal license to use her name, and later terminated it, but that the company continues to use her name—as well as her photo, signature and voice—in marketing materials,
Israel Dakar has filed suit against his daughters, claiming they are trying to hide community assets by moving money from Mindys and real estate properties established in their names by their parents.
Judge William C. Canby Jr. and U.S. District Judge John R. Tunheim of the District of Minnesota, sitting by designation, joined Fletcher in his opinion.
The case is Mindy’s Cosmetics, Inc. v. Dakar, 09-55134.
Copyright 2010, Metropolitan News Company