(CN) – An attorney for the Dakar cosmetics family was unable to shake trademark infringement and legal malpractice claims in the 9th Circuit. He had been sued for registering in Sonya Dakar’s name two trademarks that belonged to her husband and his son.
The family dispute over the ownership of two trademarks, the Sonya Dakar mark and The Problem Skin Specialists mark, pitted Israel Dakar and his son Natan against Israel’s wife, Sonya, their son Yigal, and their daughters Daniella and Michal.
Israel and Natan claimed to have founded Mindys Cosmetics in San Fernando, Calif., in 1994 and have controlled the company since 1999. In 2000 Mindys registered the two marks in Daniella’s name.
After Yigal hired attorney Kia Kamran to help deal with the family’s business, Kamran noticed that the marks had expired and was told by Sonya to reregister them in her name.
In 2008, Israel and Natan — operating as Mindys — sued Sonya, Daniella and Kamran for trademark infringement, legal malpractice and breach of fiduciary duty.
A federal judge rejected Kamran’s motion to dismiss under California’s anti-SLAPP law, which bars strategic lawsuits against public participation.
The judge concluded that Israel and Natan’s interests were not protected by Kamran, who was simultaneously working on behalf of Sonya, Daniella, Michal and Yigal.
The three-judge appeals panel in Pasadena agreed.
“If Sonya did not have an ownership right over the trademark, as Israel and Natan contend, Kamran may have caused a wrongful appropriation of trademark rights held by Mindys,” Judge William Fletcher wrote.
“Although it is a close question, under a generous interpretation of the alleged facts, there is a reasonable probability that Kamran was an agent of Sonya such that he, along with Sonya, could be liable for conversion,” Fletcher concluded.