When You Hear Zooey, Do You Think Deschanel?
Who do you associate with the name “Zooey”? New Girl star Zooey Deschanel and her lawyers believe you’d think of her - and that Steve Madden thought so too. For this reason, they’re suing Madden for releasing through his Candie’s brand a “Zooey shoe.”
The Hollywood Reporter writes that Deschanel had originally negotiated an agreement with Madden to allow him to use her name and likeness in connection with shoes and accessories. Sometime after the agreement, Madden called off the deal for unknown reasons. Originally, Deschanel filed a lawsuit regarding Madden ending the contract prematurely. That is, until she saw what the department store Kohl’s was selling on its website shortly afterward.
As this screen shot from the Kohl’s site indicates, Candie’s was in fact selling something called “Zooey flats.” Madden has an exclusive contract for designing, distributing and manufacturing Candie’s footwear. Suddenly, Deschanel’s case against Madden has taken an entirely different tone. The court apparently agrees as well, as a Los Angeles judge has tentatively decided to go forward with the case on the contract issues as well as whether Madden had Deschanel in mind when selling the Zooey shoe.
Usually when someone is arguing that another person improperly used their name, a trademark infringement lawsuit emerges. This hinges on essentially proving that the plaintiff’s name is recognizable enough, and the way the name is being used is so confusing that it might mislead consumers into thinking they’re involved with the product or service. Such a fight would be difficult, I think, for Zooey Deschanel. Sure, there’s not a lot of famous Zooey’s, and hers is a bit of a unique spelling as well. However, I don’t know if she’s famous enough that the average person shopping for shoes would mistakenly connect the Zooey shoe to her. Furthermore, I associate her mostly with acting, not with shoes, so the confusion argument is weakened there as well.
The difference for Deschanel, though, is that her and Madden supposedly reached an agreement to use her name to sell shoes. If this agreement is proven, things might be a bit easier for her. This is because it would look awfully suspicious that after cancelling an agreement with her to use her name to sell shoes, Madden then went ahead and used a name that just happened to be hers…to sell shoes. It would almost look like putting the name out there just to see if it would garner some attention, by piggybacking on any familiarity a consumer may have with Zooey Deschanel. This is why the court is concerned with Madden having had Zooey “in mind” when selling the shoe.
But, if there’s one thing everyone needs to know about lawsuits, especially involving public figures, it’s that they frequently settle. Always expect them to settle.