A federal judge has tentatively ruled that rapper T.I. Harris and his singer-songwriter wife should receive $17.8 million in profits in their legal victory over MGA Entertainment Inc. regarding a doll line in a trademark infringement dispute, but the toy giant should not have to pay 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 handed down a tentative ruling that there was not enough evidence to show MGA acted in a way that would legally warrant the punitive damages in the infringement case.
Under the Lanham Act, it must be shown the company willfully infringed on the trademark and that negligence isn’t enough, Selna said in the 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 the 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 turnout 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.
“We’re just elated,” Tameka Harris told reporters following the verdict in the trial in a federal courtroom in Santa Ana.
“The third time’s the charm,” Harris said, referring to a mistrial in the case, followed by MGA’s victory last year, and then a rematch this month.
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, which broke up in 2015 but reformed for a show at the Apollo on New Year’s Eve in 2017.
Attorney John Keville, who represented the couple, who were born Clifford Joseph Harris Jr. and Tameka Cottle, 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. She praised her lawyers as “amazing.”
“I was fighting him a little, but I’m like you’re the professional,” Harris said.
Said Kerville: “They had the courage to stand up to a corporate bully.”
In the 2023 trial, there were 71 dolls called into question.