Frida Kahlo is one of the most famous female painters. Not surprisingly, her name is still being marketed today – today Sotheby’s is auctioning the self-portrait ‘Diego y yo’. Another sensation was a Frida Kahlo Barbie – and that jurisdiction over the Frida Kahlo trademark dispute was declined by the US court in Florida.
The starting point of the litigation before the US Court in Florida (10 September 2021, 1:18-cv-21826-RNS) was the ownership of the Frida Kahlo trademark and the long-standing legal dispute over it between the Frida Kahlo Corporation and the artist’s heirs.
Dispute over the trademark rights to Frida Kahlo
The Frida Kahlo Corporation (FKC, based in Panama) was founded in 2004 by the heiress herself; one of the heirs in litigation is a shareholder in the FKC. Then in 2007, the heirs even assigned various trademarks related to Frida Kahlo to FKC; this assignment was registered in the United States. Today, FKC is the owner of sixteen registered trademarks related to Frida Kahlo (including the assigned trademarks).
Since 2011, however, the heirs have been engaged in a heated legal battle over the ownership of the Frida Kahlo trademark. “The heirs” of Frida Kahlo are – since the artist died in 1954 without a will and without children of her own – her niece Isolda Pinedo Kahlo and her daughter, Maria Cristina Romeo Pinedo. They have publicly claimed, online and on television, that FKC does not own these marks. Instead, they published their own website, and offered contracts to license rights to “Frida Kahlo”-related trademarks.
The scandal erupted when the toy manufacturer Mattel obtained a licence from FKC to produce a Frida Kahlo doll in Mexico. The heiresses publicly criticised the appearance of the Frida Kahlo Barbie, denied FKC the licensing rights for the Barbie and sued in a Mexican court. Successfully, the court in Mexico ruled in their favour and ordered Mattel and the department stores in Mexico to stop marketing the doll.
Frida Kahlo trademark dispute in US court in Florida
Then, in 2018, the Frida Kahlo Corporation filed a lawsuit against Frida Kahlo’s heirs in the US District Court for South Florida, accusing them of trademark infringement. This brought a new aspect to the litigation: the jurisdiction of a US court in Florida – and the forum-selection clause and Florida’s long-arm statute.
The plaintiff FKC argued that what FKC considered to be false statements by the heirs were also disseminated in the US and Florida through the internet. Therefore, the Florida court had jurisdiction, even though FKC was based in Panama and the heirs were Mexican citizens. In the alternative, FKC also argued that the “national long-arm statute” under Rule 4(k)(2) conferred personal jurisdiction on Florida.
The heirs, in turn, filed a motion under Federal Rules of Civil Procedure 12(b)(1), 12(b)(2) and 12(b)(3) challenging the US court’s jurisdiction – alleging a facial attack on subject matter jurisdiction under Rule 12(b)(1).
So can a US court have jurisdiction in Florida even though neither plaintiff nor defendant is a Florida resident? The US District Court for South Florida ruled, “No” – and declined jurisdiction over FKC’s suit. This is because in cases involving federal questions – such as trademark infringement suits – a court must first ensure that there is personal jurisdiction over the defendant under the long-arm statute of the state in question – to be tested against the procedural requirements of the federal constitution.
Jurisdiction: US federal case law
There has been precedent-setting US federal case law on this since 1997, which addressed the impact of the Internet on jurisdictional analysis: the Zippo case (Zippo Mfg. Co. v. Zippo Dot Com, Inc. 952 F. Supp. 1119). In it, the court said that the likelihood of a U.S. court having personal jurisdiction was in direct proportion to the nature and quality of the commercial activities a company conducts over the Internet. Just because a defendant did not physically enter the forum state, jurisdiction could not be dismissed. In subsequent ruling, US court in Florida has specified: telephonic, electronic or written communications to Florida can form the basis for personal jurisdiction under Fla Stat. § 48.193(1)(b) (see Wendt v. Horowitz, 2002).
However, evidence of commercial activity in Florida or of communications to Florida must be produced by the plaintiff on a motion to dismiss for lack of personal jurisdiction under Rule 12(b)(2). Thereupon, the burden would then shift to the defendant to disprove the plaintiff’s allegations.
FKC, however, had failed to prove that the defendant’s alleged infringing activities on the internet were directed at Florida, the US District Court for South Florida ruled on 10 September 2021, affirming the heirs’ motion against the US court’s jurisdiction in Florida. The US court in Florida declined to rule on the actual trademark dispute.
Frida Kahlo at Sotheby’s
With today’s auction of the famous painting by Frida Kahlo at Sotheby’s in New York, the artist and her brand name will, in a sense, come to the USA after all – but not in the context of the trademark dispute. Sotheby’s is expecting an exceptionally high bid for the Kahlo portrait ‘Diego y yo’, which was last sold through Sotheby’s in 1990 for $1.4 million at the time. Now the auction house values it at 30 to 50 million dollars.
And with our update from today, 19 November 2021, we can add: indeed, the portrait of Frida Kahlo has been auctioned for $ 34.9 million (the equivalent of 31 million euros), the most expensive work from Latin America ever to be auctioned, according to Sotheby’s.
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