Khaled v. Bordenave

OPINION & ORDER  Plaintiffs Khaled M. Khaled, a hip-hop music mogul, and ATK Entertainment, Inc. (“ATK”); have moved for leave to file an amended complaint. Dkt. 33. The existing Complaint brings eight claims against defendants Curtis Bordenave and Business Moves Consulting, Inc., (“Business Moves”). These are: two counts of invasion of right of privacy in violation of New York Civil Rights Law §§50-51; trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. §§1114(1), 1125(a); unfair competition under New York common law; violation of the New York Deceptive and Unfair Trade Practices Act, N.Y. Gen. Bus. Law §349; commercial defamation; and a claim for declaratory judgment of non-infringement. The proposed amended Complaint (“PAC”) seeks to add a claim for cancellation of trademark registration pursuant to 15 U.S.C. §1052(a), based on Business Moves’ registration of ASAHD COUTURE (U.S. Trademark Registration No. 5,623,582); to expand its trademark infringement claims by adding allegations regarding defendants’ purported use of additional variations of the WE THE BEST mark; and to shift the statutory basis for plaintiffs’ claim of breach of the right of privacy from New York to Florida law. Defendants oppose this motion on the grounds that: (1) certain newly alleged facts that plaintiffs claim support granting their motion to amend were known or available to plaintiffs at the time they filed the initial Complaint, (2) amending the Complaint would unfairly prejudice defendants, and (3) plaintiffs’ new claims regarding the WE THE BEST mark fail to state a claim of trademark infringement and hence are futile.For the following reasons, the Court grants plaintiffs’ motion in part and denies it in part.I. BackgroundA. Facts¹1. The PartiesKhaled is known professionally as “DJ Khaled.” Among other things, he is known for the use of the phrase “WE THE BEST” in many of his songs. Asahd Tuck Khaled is his 18-month-old son. Dkt. 10 (“Compl.”)

1-2. ATK Entertainment, Inc., is a Florida corporation named after Asahd. It has a principal place of business in Miami-Dade County. Id.8.Bordenave is the founder and principal of Business Moves, a corporation incorporated in Mississippi with a place of business in Dallas, Texas. Id.