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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?
This alert provides general coverage of its subject area. We
provide it with the understanding that Frankfurt Kurnit Klein &
Selz is not engaged herein in rendering legal advice, and shall not
be liable for any damages resulting from any error, inaccuracy, or
omission. Our attorneys practice law only in jurisdictions in which
they are properly authorized to do so. We do not seek to represent
clients in other jurisdictions.
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