Intro. Do you have a music album on the way? Have you come up with a plan to promote said album? Perhaps you considered releasing a single? Or maybe filmed a promotional music video? Or, if you're lucky enough, you might have thought about sending the album to Lebron James so he can post it on his social media page (yes.this actually happens)? Music album marketing strategies are becoming more and more creative. However, they must not run afoul of the law.
Rappers Aubrey "Drake" Graham and Sheyaa Bin "21 Savage" Abraham-Joseph were recently sued by Advance Magazine Publishers Inc. d/b/a Condé Nast for their use of fake Vogue magazines and covers to promote their album "Her Loss." Hiltzik Strategies, LLC, the alleged public relations firm retained to promote "Her Loss," was also named as a defendant.
The Lawsuit. During the promotional campaign for "Her Loss," the rappers affixed their images on Vogue magazine covers and posted the fake images to their social media pages. The defendants also created counterfeit issues of the fake Vogue magazine issue and distributed copies in various North American cities. Further, Hiltzik Strategies sent out an email blast to an unspecified number of recipients which stated "To celebrate Drake's Vogue cover and his joint album HER Loss, Street teams will be handing out copies of the magazine Monday Afternoon in select cities across America."
Condé Nast asserted several claims against the defendants including (i) trademark infringement, (ii) false designation of origin, (iii) dilution, and (iv) false advertising.
Thereafter, The Honorable Jed S. Rakoff (Southern District of New York) issued a temporary restraining order finding that Condé Nast has a likelihood of success on the merits for its claims. Judge Rakoff further found that the defendants' actions confused consumers about the origin, sponsorship, or approval of the fake Vogue magazine and magazine cover and misled consumers to believe that they are genuine and authentic materials associated with Condé Nast and Vogue magazine. Accordingly, Judge Rakoff enjoined defendants from using, displaying, disseminating, or distributing copies of the fake magazine or magazine cover and directed them to remove and take down all existing social media posts and print posters.
On November 15, 2022, the Parties entered into a Preliminary Injunction on Consent agreement, whereby the defendants agreed to the issuance of a preliminary injunction thereby precluding them from using, displaying, or disseminating copies or images of the fake magazine.
Takeaways. What if the parties didn't enter into the consent agreement? What defenses could the defendants have asserted?
Perhaps the parody defense? Parody is a tricky defense to trademark infringement. There is a thin line between using a trademark to make a political or social commentary, versus using the mark to increase one's sales. This defense would likely be futile as the fake Vogue magazine issue was used to promote "Her Loss" and, as the Court found, defendants actions were likely to cause consumer confusion and deception.
Since Judge Rakoff's decision, the Supreme Court has granted certiorari in a case involving a parody of the famous Jack Daniels trademark. While the Court's decision may help clarify the law regarding trademark parodies, it is not likely to provide a defense for cases involving what appears to be blatant and intentional efforts to deceive consumers.
Perhaps nominative fair use? Nominative fair use permits the use of another's trademark to refer to the trademark owner's goods and services associated with the mark. For example, an auto repair shop may advertise that it repairs Hondas and BMWs, thereby using the BMW and Honda trademarks, to refer to their own service-repairing cars. This defense would be futile as well since the defendants were not utilizing the Vogue trademark to refer to their own services or goods.
Hold On. Could it be that this lawsuit is another creative (albeit costly) marketing strategy?
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