A federal judge Monday stopped short of finalizing a tentative ruling that would award rapper T.I. Harris and his singer-songwriter wife $17.8 million in profits in their legal victory over MGA Entertainment Inc. regarding a doll line in a trademark infringement dispute, but would eliminate more than $53 million in punitive damages.
The rapper and his wife, Tameka “Tiny” Harris, won all of the $17.8 million in profits from seven MGA dolls and punitive damages of $53,616,759 in a verdict handed down Sept. 23. The Harris family successfully made the case that the dolls were a copy of their OMG Girlz singing group.
U.S. District Judge James Selna issued a tentative ruling saying there was not enough evidence to show MGA acted in a way that would legally warrant the punitive damages in the infringement case. But after hearing arguments from attorneys Monday afternoon, he delayed making a final ruling until later this week.
“I don’t want to delay it, but I want to let it percolate so to speak,” Selna told the attorneys.
Under the Lanham Act, it must be shown the company willfully infringed on the trademark and that negligence isn’t enough to warrant the punitive damages, Selna wrote in the tentative ruling.
“Here, the evidence shows that, at most, MGA and (owner and founder Isaac) Larian were negligent about investigating an alleged claim of infringement, but not that they acted with reckless indifference or willfulness,” Selna wrote.
Selna, however, said it was a “narrow” ruling and that there was evidence that the company’s designers produced copycat dolls.
“On numerous occasions, witnesses, particularly designers, were confronted with dolls that appeared to copy famous celebrities,” Selna wrote.
“Rather than concede copying, the designers attempted to explain away blatantly obvious design features copied from real individuals. While this evidence is perhaps the strongest signal of a pattern of blatant infringement and a willingness to deny even the most clear copying; without more, it does not show willful infringement of the OMG Girlz or their trade dress. This is particularly true where MGA conceded using other celebrities as inspiration and even forming partnerships with other celebrities.”
Selna also rejected an argument of consumer confusion because Harris and his wife never produced a doll line, though Tameka Harris entertained the idea at some point but dropped the project “when prototypes didn’t turn out the way she liked,” according to Selna.
Selna also found that the $17.8 million award will be enough to “deter” MGA from repeating the infringement.
Attorney John Keville, who represented the couple, who were born Clifford Joseph Harris Jr. and Tameka Cottle, argued that the punitive damages part of the verdict was not an “advisory” verdict, and that state law curbed Selna’s discretion.
“It was always understood that this was a legal issue for the jury,” Keville said of punitive damages. “Now only when they lost they come back and say, `Oh, that was advisory.’ ”
Keville also took issue with Selna’s ruling on “willfulness,” arguing that it includes “fraud.”
Keville pointed out that despite MGA’s assertion its executives were unaware of an infringement dispute until a cease-and-desist letter was sent to the company, there was evidence that one designer had a picture of the girl group as reference and another admitted watching the group’s TV show.
Attorney Mark Finkelstein, who represents MGA, argued that Selna “made it very clear” during the trial that the jury would render an advisory verdict.
“You and I have lived with this case for four years,” Finkelstein told Selna. “You’re certainly in a position to decide if punitive damages are appropriate.”
Finkelstein further argued that the $17.8 million damages were too high and did not take into account estimates from experts who concluded not every consumer bought a doll based on the girl group and did so for other reasons.
“We’re just elated,” Tameka Harris told reporters following the verdict in September.
“The third time’s the charm,” Harris said, referring to a prior mistrial in the case, followed by an MGA victory last year, and then a rematch in September.
In September 2023, Selna granted another trial based on new law in a case involving a dog toy and the Jack Daniel’s company. In June 2023, the Supreme Court issued an opinion in that case changing how the First Amendment factors into defenses against trademark infringement.
At issue in the trial was whether consumers would be confused and think the Lol Surprise! OMG doll line was some sort of partnership with the OMG Girlz group, which broke up in 2015 but reformed for a show at the Apollo on New Year’s Eve in 2017.
Keville noted in his argument to jurors for punitive damages how MGA argued that the girl group “made only $6,000” to show “they’re small in their eyes… and weak, and could be taken advantage of and they did.”
Keville implored jurors to “send them a message” and suggested punitive damages ranging from $17.8 million to $36 million to $72 million.
Attorney Paul Loh, who represented MGA, argued to jurors that the company had sold 45 million dolls from the line but “never heard any complaints from customers or problems about confusion.”
In 2020, the Harris family sent MGA a letter about the trademark infringement, prompting MGA to sue for declaratory relief because at the time the company thought the claims of similarities between the girl group and the dolls were “unfounded.”
He added, “We do not believe evidence was presented that the OMG Girlz were harmed in any way” by the doll line.
Since the jury had found the company must turn over all of the profits from the seven dolls, that should be enough punishment, Loh argued.
“They’re receiving 100% of the profits. We believe that’s already substantial,” Loh said. “A message has been sent.”
Keville responded that there was evidence from some customers who reported they believed the OMG Girlz were in a “partnership” with MGA on the doll line. One witness said her complaints were routinely taken down on MGA’s Facebook page, Keville said.
The Harris family had considered its own doll line but couldn’t pursue it, Keville argued.
Keville persuaded the Harris family to narrow its claim from 25 dolls to seven in its legal strategy.
Said Kerville: “They had the courage to stand up to a corporate bully.”
In the 2023 trial, there were 71 dolls called into question.