Overview:
Even after a Brooklyn courtroom ordered Haitian musician Dener Ceide to pay $1 million in damages to Zafem World Leisure for trademark infringement, he continues performing underneath the “Zafem” title. Authorized consultants say the transfer might expose him to new sanctions.
NEW YORK — Dener Ceide, the distinguished Haitian musician and band proprietor, should pay $1 million in damages to the Zafem World Leisure Group, a Brooklyn federal courtroom has dominated. The order comes after Wiss Joseph and Mary Joseph, the 2 homeowners of Zafem World Leisure, filed a trademark infringement case towards Ceide.
Zafem World Leisure registered its title in 2021, after almost 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 title would infringe on the plaintiffs’ trademark rights.
Since Zafem is a identified 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 underneath 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 supplied such related providers, there was cause for confusion.
“You could possibly be Zafem for stickers and hats, if nobody else is utilizing it,” Jacobson mentioned.
“While you take a look at their two functions, the artist goes for the very same issues: music manufacturing, dwell live shows and manufacturing of music. They’re positively going to be thought-about confusingly related.”
But Ceide continued in his use of the title, 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 trying to launch a band known 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 homeowners, it’s a reminder of the significance of defending certainly one of their most respected belongings by 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 title with out permission.”
Due to Ceide’s actions, Zafem World Leisure filed go well with within the U.S. District Court docket for the Jap District of New York in Sept. 2024, citing counterfeiting and infringement underneath 15 U.S.C. § 1114, false designation of origin underneath 15 U.S.C. § 1125, and customary regulation unfair competitors. Ceide and his authorized crew failed to reply in time, prompting the Sept. 17 resolution by the courtroom in 2025.
The choose presiding over this resolution, Choose 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 can assist 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.
Nonetheless, the courtroom solely awarded Zafem World Leisure $1 million, because the plaintiffs had been unable to offer adequate proof of their monetary losses. In his ruling, Choose Cogan reasoned that since Ceide, the defendant, didn’t reply to Zafem World Leisure’s authentic go well with, the plaintiffs couldn’t show the destructive influence on their income.
The courtroom additionally issued a everlasting injunction that prohibits Ceide, his firm and different associates from utilizing the title Zafem, or something just like it, to market any of their music.
On their Fb web page, Zafem World Leisure publicly reacted to the courtroom’s resolution, writing that “justice has spoken.” The publish, revealed on Oct. 26, went on to warn others of utilizing their title going ahead, saying that “anybody knowingly nonetheless selling, advertising and marketing, managing, sponsoring & endorsing…you are actually on discover.”
“That is larger than music leisure,” the publish 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 courtroom’s resolution or supply any indication that he’ll attraction. Nonetheless, 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 Instances that they haven’t been notified of “any adjustments” 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 title Zafem for these performances, he might face authorized penalties.
“As a result of the courtroom issued an injunction,” he mentioned. “They might be in direct violation of a courtroom order, and could possibly be topic to further sanctions. They’re topic to a brand new superb 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.