Eminem’s Fight Against ‘Reasonably Shady’ Housewives
8.30.2024
What do Eminem (also known as Marshall Mathers III) and two “Real Housewives of Potomac” have in common? They each claim trademark rights relating to the word “shady.”
For those unfamiliar with the Bravo television network and its “Real Housewives” franchise, “The Real Housewives of Potomac” chronicles the lives of a group of women residing in Potomac, Maryland.[1] Gizelle Bryant and Robyn Dixon have served as main cast members since the show’s first season in 2016.[2] Like many a reality television star, Bryant and Dixon decided to start a podcast, and in May 2021, the pair launched the “Reasonably Shady” podcast. Why “Reasonably Shady”? Dictionary.com defines “throwing shade” as “a subtle way of disrespecting or ridiculing someone verbally or nonverbally,” and shade has become used on its own as a term for the act of an often-humorous snub or slight.[3] Their chosen title was not likely any surprise for viewers. The slang terms “shade” and “shady” are commonly used in “The Real Housewives of Potomac,” and the terms have inarguably evolved in their own right within pop culture over the last decade.
The “Reasonably Shady” podcast is at this writing over 147 episodes in and counting, and its range of topics include dating, rumors, beauty, pop culture, motherhood and, of course, commentary regarding “The Real Housewives of Potomac.” And like many a podcast star, Bryant and Dixon sought to capitalize on their success by selling “Reasonably Shady” merchandise. Cut to February 2022, when Bryant and Dixon filed a trademark application for the mark REASONABLY SHADY.[4] The application sought trademark rights in a range of products, including candles, makeup, mugs and apparel, as well as in “entertainment services.”[5] The application specifies such “entertainment services” as “providing podcasts in the field of dating, relationships, marriage, entrepreneurs, motherhood, style, glam and current events.”[6]
Enter Eminem. In January and February 2023, Mathers filed notices of opposition with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board.[7] Mathers argued he would be damaged by the issuance of a registration for the mark REASONABLY SHADY, citing priority of use, likelihood of consumer confusion and dilution by blurring as grounds for the opposition.[8] Mathers specifically pointed to his own marks for SHADY and SLIM SHADY, which were registered from 2001 to 2002 and remain active.[9] Mathers’s SHADY mark includes apparel (e.g., T-shirts, sweatshirts, hats)[10] Mathers’s SLIM SHADY mark includes apparel as well as “musical sound recordings” and “entertainment services” (with the later specified as “the presentation of live musical performances by a recording artist”).[11] Mathers argued that he has “been engaged in substantially exclusive use” of the name and marks SLIM SHADY and SHADY since 1996, including in connection with his stage identity, entertainment services, musical sound recordings and apparel.[12] Mathers also argued that the “dominant portion” of the REASONABLY SHADY mark is identical to his own marks and that confusion was unavoidable where the mark “simply looks and sounds like SHADY and suggests that it represents the services of Mathers.”[13]
Opposition proceedings have been ongoing before the Trademark Trial and Appeal Board for the past year. To date, however, Mathers has refused to sit for a deposition. On Nov. 29, 2023, applicants Bryant and Dixon filed a motion to compel Mathers to appear. Bryant and Dixon argued that, as the signatory and owner of the marks, and where Mathers claimed dilution of his marks would harm his reputation, they would need to depose Mathers as part of the discovery process.[14] Bryant and Dixon further argued they too were celebrities (or, at the very least, “Bravolebrities,” in the eyes of Bravo fans) in their own right and had each provided the courtesy of sitting for deposition for Mathers. Thus, they argued, it was “not overly burdensome for [Mathers] to extend the same courtesy for his obligation.”[15] Mathers in turn moved for a protective order and again outright refused to appear for a deposition, claiming that it would indeed be highly burdensome for him and that another person had a better understanding of relevant documents, marketing and advertising (i.e., his business manager, Paul Rosenberg).[16]
Mathers is certainly not the first celebrity to oppose appearing for a deposition in a high-profile case. Nor is he the first to be ordered to appear in a trademark proceeding. Other examples include when LeBron James was ordered to appear for a deposition in a trademark dispute over an applicant’s attempt to register the mark KING JAMES.[17] James argued that “King James” is a well-known nickname used to refer to him, and consumers would thus associate the KING JAMES mark with LeBron James. When the applicant sought to depose James, James argued the applicant “only intended to harass Mr. James.”[18] The appeal board was not convinced, however, and cited the facts that James was a named party and had asserted trademark claims in the dispute in its decision.[19]
In another celebrity trademark case, the District Court for the Central District of California ordered Taylor Swift to sit for a deposition in a suit brought by the owner of the mark LUCKY13.[20] There, Swift was defending claims regarding her use of “Lucky 13” on merchandise, with 13 being Swift’s purported lucky number. Swift moved for a protective order, citing harassment, a busy tour schedule and a claimed lack of relevant knowledge, but she was nonetheless ordered to appear.[21]
Back to Eminem. Like the above decisions involving Taylor Swift and LeBron James, on Feb. 29, 2024, the appeals board ruled that Mathers must appear for a deposition.[22] The decision rejected Mathers’s attempt to rely on the burden-shifting analysis applied where a party is seeking to depose an officer at the highest level, or “apex,” of a corporation. Instead, as the sole individual who brought the proceeding and owns the marks pleaded as the basis for opposition (marks by which Mathers alleged he is known by), Mathers was required to demonstrate good cause to prevent his deposition. The board found Mathers failed to demonstrate good cause and that Bryant Dixon would be entitled to take his deposition.
Within hours of the ruling, Mathers filed a motion for summary judgment.[23] Mathers argued that his SLIM SHADY and SHADY marks are famous and that the parties’ apparel and merchandise overlapped in the marketplace, particularly with respect to T-shirts and hats. Mathers also claimed his use of the marks in connection with entertainment services, via live musical performances and musical recordings, was sufficiently related to Bryant and Dixon’s podcast services. According to Mathers, the marks at issue are substantially similar and are likely to confuse consumers into believing the parties’ products and services are from a single source.
Bryant and Dixon responded by filing a motion for discovery under Federal Rule of Civil Procedure 56(d).[24] This section provides that, if a nonmovant demonstrates it cannot present facts essential to justify its opposition, the court may defer or deny a dispositive motion, allow more time for discovery or issue other appropriate relief.[25] Bryant and Dixon argued that they could not rebut facts set forth in the motion, as they had not yet had an opportunity to conduct Mathers’ deposition, expert testimony or follow-up discovery.
The appeals board recently issued an order ruling that Bryant and Dixon could take the deposition of Mathers’s manager, Rosenberg, prior to responding to the motion for summary judgment, particularly where Mathers relied on Rosenberg’s declaration to support the motion.[26] However, the board declined to order Mathers’s deposition in advance of Bryant and Dixon’s response, finding the pair failed to demonstrate it was needed to respond to the motion as drafted. The board rejected Bryant and Dixon’s argument that they had not had the opportunity to ask Mathers about “his state of mind when selecting the trademarks at issue and why he believes they are famous.”[27] The board noted that its assessment of a mark’s fame or strength in connection with a likelihood of confusion claim “is not based on a party’s belief that its mark is famous” and instead “is based on evidence such as the volume of sales and advertising expenditures for the goods and services sold under the mark.”[28] Rosenberg, not Mathers, submitted such evidence. In essence, the board noted that Bryant and Dixon were not barred from taking Mathers’s deposition as part of discovery generally, but the board did not agree that it was necessary to respond on summary judgment.
Bryant and Dixon have sought reconsideration, arguing they should be entitled to depose their mark’s opposer rather than relegated to deposing a third party witness.[29] They also reiterated, “Mr. Mathers’ deposition is critical in determining ownership, validity of rights, state of mind that pertains to fame, along with actual confusion issues, and current use.”[30] This request remains pending, and the board has since suspended all proceedings. Thus, a critical question remains: Will the real Slim Shady sit for a deposition? This is one to keep an eye on for inquiring rap and Bravo fans alike.
Alison Pringle is senior counsel in the Gordon Rees Scully Mansukhani Intellectual Property Practice Group. Her practice focuses on intellectual property and commercial litigation, with an emphasis on trademark, copyright, contract, technology, and privacy disputes. An earlier version of this article appeared in the Entertainment, Arts & Sports Law Journal, a publication of the EASL Section. For more information visit NYSBA.ORG/EASL.
Endnotes
[1] As it turns out, being a resident of Potomac, Maryland is not an actual requirement to be on the show. Rather, the cast includes women generally residing in the “DMV” (or District of Columbia, Maryland and Virginia) area.
[2] In April 2024, Robyn Dixon was fired from the show after eight seasons. Dave Quinn and Dory Jackson, Robyn Dixon Confirms Exit From Real Housewives of Potomac After 8 Seasons: “I Was Fired,” People, Apr. 15, 2024, https://people.com/robyn-dixon-confirms-exit-from-real-housewives-of-potomac-8619843.
[3] “Throwing shade,” Dictionary.com, retrieved Apr. 18, 2024, https://www.dictionary.com/e/slang/throwing-shade/.
[4] United States Patent and Trademark Office, Application Serial No. 97248176, “REASONABLY SHADY,” filed by Gizelle Bryan and Robyn Dixon, Feb. 1, 2022, Goods/services Classes 003, 004, 021, 025, 028.
[5] Id.
[6] Id.
[7] United States Patent and Trademark Office’s Trademark Trial and Appeal Board Opposition Proceeding Nos. 91283402, filed Feb. 14, 2023, and 97248176, filed Jan. 19, 2023.
[8] Notice of Opposition, filed Feb. 14, 2023, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[9] Id.
[10] United States Trademark Registration No. 2468453, Serial No. 75831719, “SHADY,” Goods/services Class 025: T-shirts, sweatshirts, shorts, halter tops and hats.
[11] United States Trademark Registration No. 2626305, Serial No. 76181429, “SLIM SHADY,” Goods/services Class 025- CLOTHING; NAMELY, SHIRTS, LONG-SLEEVE T-SHIRTS; SHORT-SLEEVE T-SHIRTS; CAPS, HATS, KNIT HATS AND BASEBALL CAPS; United States Trademark Registration No. 2641856, Serial No. 76181431, “SLIM SHADY,” Goods/services Class 009: MUSICAL SOUND RECORDINGS; United States Trademark Registration No. 2667895, Serial No. 76152078, “SLIM SHADY,” Goods/services Class 041:
ENTERTAINMENT SERVICES, NAMELY, THE PRESENTATION OF LIVE MUSICAL PERFORMANCES BY A RECORDING ARTIST.
[12] Notice of Opposition, ¶¶ 2-8, filed Feb. 14, 2023, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[13] Notice of Opposition, ¶¶ 22-24, filed Feb. 14, 2023, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[14] Motion to Compel Deposition of Marshall Mathers III, filed Nov. 29, 2023, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[15] Id.
[16] Response in Opposition to Applicants’ Motion to Compel Deposition of Marshall Mathers III and Cross Motion for Protective Order, filed December 15, 2023, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[17] Decision, filed Sept.1, 2021, Trademark Trial and Appeal Board Opposition Proceeding No. 91249886.
[18] Decision, filed Apr. 1, 2021, Trademark Trial and Appeal Board Opposition Proceeding No. 91249886.
[19] Id.
[20] See Fed.Blue Sphere, Inc. v. Swift, No. SACV1400782CJCDFMX, Order Denying Defendants’ Motion for a Protective Order (C.D. Cal. Aug. 4, 2015).
[21] Id.
[22] Decision, filed February 29, 2024, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402
[23] Opposer’s Motion for Summary Judgment, filed Feb. 29, 2024, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[24] Motion for Discovery, filed Mar. 6, 2024, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[25] Federal Rule of Civil Procedure 56(d).
[26] Decision, filed July 1, 2024, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[27] Id.
[28] Id. at p. 10, n. 12.
[29] Request for Reconsideration, filed July 12, 2024, Trademark Trial and Appeal Board Opposition Proceeding No. 91283402.
[30] Id. at p. 2.
