More Modern Art, More Problems

June 27, 2018

Don’t Mess with MoMA

An art museum seems like a very laid-back place. The term evokes a bright space filled with beatnik intellectuals, creative-types, and the sophisticated. But don’t let the lack of flash lure you into complacency. Just because the Museum of Modern Art (“MoMA”) has never bought a Super Bowl ad doesn’t mean they don’t have a brand, or that they’ll fail to protect what they feel is theirs. To wit, MoMA has sued MOMACHA, a café and art gallery.

MOMACHA (formerly MoMaCha) is a new business located on the Lower East Side of Manhattan that opened in April 2018. Compl. at 9. They specialize in both matcha tea and artwork, specifically modern art. Id. They have already announced plans to expand, and they have filed for several trademarks including a trademark for the word “MOMA” on an intent-to-use basis for “Beverages” in a “Restaurant”. Id.

The lawsuit was filed on April 17th, 2018 in the Southern District of New York. The matter is before Judge Louis Stanton, a Reagan appointee with nearly 4,000 dockets to his credit, and 5,235 references attached to his Westlaw Profile, as of this writing.

Shots Fired!

Both MoMA and MOMACHA are located in New York City and integrate modern art with cafés and food—MoMA has two cafés within the museum (Café 2 and Terrace 5) as well as two restaurants (The Bar Room and The Modern). Compl. at 4. Both parties’ logos consist of black-and-white letters, which are displayed both horizontally and vertically. Pl. Mot. Prelim. Injunct. at 12–13

MoMA set forth six claims for relief in its complaint, asking the court for a permanent injunction, the denial of MOMACHA’s pending trademark applications, damages (including enhanced damages), and both fees and interest. Compl. at 13–20. The gist of the complaint is that MoMA is famous and synonymous with “Modern Art.” Pl. Mot. Prelim. Injunct. at 14. MoMA has also registered several Trademarks, which they actively maintain. The primary mark is simply for the word “MOMA” in black and white lettering of a specific font for use in a variety of contexts.

MoMA claims that MOMACHA is deliberately trying to use their name and brand to confuse consumers and build their business. Compl. at 12. They point to a contact they have already received from a confused artist, as well as statements by the founders claiming MOMACHA “mashes art and matcha.” Id. at 12–13. MoMA claims that the “art” in this statement must be a direct reference to them. Finally, MoMA points to press coverage placing MOMACHA together with terms including “Modern Art.” Id.

On April 20th, MoMA asked for a preliminary injunction. Many of the facts and law cited and recited in the memorandum supporting the motion are similar to the complaint. Notably, they recount that they attempted to contact and dissuade MOMACHA before it opened its store. Pl. Mot. Prelim. Injunct. at 1. Further, MoMA points out that this is the first time they have resorted to the courts to enforce their brand. Id.

Trademark Law

MoMA raises trademark infringement under 15 U.S.C.A. § 1114, false designation of origin under section 1125(a)(1)(A), trademark dilution under section 1125(c), claims for trademark infringement and unfair competition under New York common law, and refusal of MOMACHA’s trademark application under 15 U.S.C.A. § 1119. Damages are then assessed under 15 U.S.C.A. 1117, where MoMA requests treble damages and attorneys’ fees for having “acted willfully to usurp MoMA’s right, with full knowledge and intent to cause harm . . . .” Compl. at 14, 15, and 16. The final decision, if the parties do not settle, will be reached under these laws.

The matter before the court right now, however, is whether or not to issue a preliminary, as opposed to permanent, injunction. There is a two-part test. First, the party requesting the injunction must establish “the likelihood of irreparable injury” if an injunction is not granted. The second part can be established by showing “either (a) the likelihood of success on the merits or (b) sufficiently serious question going to the merits to make them a fair ground for litigation, plus a balance of hardships tipping decidedly toward the party requesting the preliminary relief.” Pl. Mot. Prelim. Injunct. at 7 citing 1–800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406 (2d Cir. 2005).

The arguments for the preliminary injunction can be found within the docket at entry 8, while the opposition can be found at entry 18.

Conclusion

MoMA contends that MOMACHA deliberately evoked MoMA’s mark and brand to make money, even going so far as to say that getting sued was a sort of publicity stunt. Compl. at 10 (“free publicity”). MOMACHA responds by pointing to a 22 item list of changes they’ve made to distinguish themselves from MoMA, including changing their font and capitalization as well as placing disclaimers all over. Def. Opp. Prelim. Injunct. at 13–14. MOMACHA also points to similar marks, such as San Francisco Museum of Modern Art (“SFMOMA”) that are held by arguably more direct competitors than MOMACHA. Id. at 4, 20.

A well-funded modern art museum is pitted head-to-head with an inventive and scrappy art café. The laws are above. The standards are known. All that’s left is to kick back, relax, and see how our veteran judge rules on the case—perhaps with a hot beverage!

Additional Reading:

Winthrop & Weinstine, P.A., MoMA v. MoMaCha: An Artistic Trademark Battle, 2018 WLNR 19174526 (JD Supra (Blog) June 22, 2018)

Image Credit: REUTERS/Chip East

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