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10 August 2015Trademarks

Taylor Swift not immune from deposition, says opposing counsel

An attorney representing the clothing company locked in the ‘Lucky 13’ trademark tussle with Taylor Swift has said he is trying to set a date for the singer's deposition, adding that “celebrity is not a synonym for immunity”.

Gary Rinkerman, partner at law firm Drinker Biddle & Reath and who is representing clothing company Blue Sphere, told WIPR his client is looking forward to “moving the case forward”.

Blue Sphere, which does business as Lucky 13 and owns several trademarks for the term, accused Swift of infringing its trademarks for the phrase.

Last week, WIPR reported that Swift had been called to give a deposition because of her alleged infringement of the marks.

The singer had filed a protective order seeking to prevent her from being forced to answer questions and also claimed she had been harassed by the California-based company.

But following a ruling handed down on August 5 at the US District Court for the Central District of California she will now be expected to answer queries about her brand and trademark awareness.

Rinkerman said: “The court’s ruling shows that in the context of appropriate discovery requests, ‘celebrity’ is not a synonym for ‘immunity’. We are currently reaching out to Swift’s counsel to set a date for the deposition.

“Our position was that she [Swift] is a properly named party, is portrayed as being fully in control of her businesses, is keenly aware of her own trademark claims and received the deposition notice properly within the discovery period for the case.”

He added: “Among the areas that we have sought to explore are Swift’s encouragement of a personal association with ‘Lucky 13’, her organisations’ adoption of the mark in the face of Blue Sphere’s federal trademark registrations, and her failure to stop the effects of the infringement before and after Blue Sphere was forced to file a complaint and fight for what is already theirs.”

Swift was sued in May last year.

In its initial complaint, Blue Sphere claimed it has several registered trademarks for ‘Lucky 13’, covering items including clothes, chains and bags.

Blue Sphere alleged that in March 2012, “about 20 years after” Lucky 13 first used its trademarks, Swift began using the term to market and sell apparel in “at least the US, without requesting permission or otherwise securing a licence”.

A new trial date has been set for January next year.

WIPR is attempting to make contact with Swift’s counsel and will update the story should we obtain a response.

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Trademarks
7 August 2015   US singer Taylor Swift has been ordered to give a deposition in a case that centres on her alleged infringement of trademarks for ‘Lucky 13’.