Kardashians Fail to Get Mandatory Arbitration in TM Case

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By Anandashankar Mazumdar

Nov. 10 — The Kardashian sisters cannot rely on a contract between two other parties to compel private arbitration in a dispute over their use of “Khroma” as a brand name for cosmetics, the U.S. District Court for the Middle District of Florida ruled Nov. 9.

Aglaia Lee Tillett, also known as Aglaia Christodoulou or Lee Cristou, is a celebrity makeup artist and founder of cosmetics company Lee Tillett Inc. of Maitland, Fla. Since 2004, Tillett has marketed cosmetics under the brand name “Kroma” and, in 2012, Tillett obtained a U.S. trademark for the term (U.S. Trademark Registration No. 4079066).

Tillett granted an exclusive license to Jay Willey Ltd., an entity owned by an officer of Kroma Makeup EU LLC, to be the exclusive distributor of Kroma products in the European Union.

In 2010, Tillett approached Kim Kardashian's agents to try to arrange a promotion deal. In 2012, Kim Kardashian and her sisters Kourtney and Khloe made a deal with Boldface Licensing & Branding Inc. of Los Angeles to market their own line of cosmetics under the name “Khroma” and submitted applications to the Patent and Trademark Office to register “Khroma Beauty by Kourtney, Kim and Khloe” and “Kardashian Khroma.”

Kroma Makeup EU sued Boldface, alleging trademark infringement, and also sought to make the Kardashians secondarily liable for any infringement. Kroma Makeup also sued Tillett, alleging breach of contract and other claims.

The court ruled that the European importation and distribution contract between Kroma Makeup EU and Tillett required the contract claims to be submitted to mandatory arbitration. The court thus stayed the claims against Tillett.

However, the Kardashians were not parties to the contract, so they could not require Kroma Makeup EU to take the claims against them to private arbitration, the court said.

The court's ruling was issued by Judge Paul G. Byron.

Kroma was represented by Beck & Lee Trial Lawyers, Miami. The Kardashians were represented by Pearson Bitman LLP, Maitland, Fla. Tillett was represented by Stovash, Case & Tingley P.A., Orlando, Fla.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://src.bna.com/0S.