Jay-Z is unquestionably one of the most successful names in the music industry. From hit songs to his own clothing label- he is an artist that has capitalized on his name far beyond the top 20 charts and gotten very rich doing it. He also owns one of the most popular New York night clubs, the 40/40 club. Any given night at the Manhattan club is a virtual who’s who of Hollywood, athletes, and socialites and the club has been showcased on everything from MTV to Vanity Fair.
It is no surprise that others in and out of the music industry are trying to capitalize in a similar manner. So if this recipe for success is something you are considering following in your own pursuit of fame and money...don’t follow it too closely!
Red Sox slugger David Ortiz (aka Big Poppa) is striking out big time. In a $5 million lawsuit recently filed, Jay-Z is suing Ortiz for opening up his own 40/40 club in his native Dominican Republic. The papers allege that Ortiz not only enjoyed the Manhattan-based club on numerous occasions but also was aware of the trademarked name. The suit is essentially over Ortiz cashing in on the now famous name that Jay-Z has built his clubs on which has resulted in “marketplace confusion and damage.”
Interestingly enough, the name 40/40 club is a baseball reference to those superstar players that have stolen 40 bases and hit 40 homeruns in a single season. Big Poppa is one of the most popular baseball players in the game today. His name and popularity is even bigger in his native country so it just seems unnecessary that he would need any help advertising his club with a known name. In the alternative, he should have at least waited until he could claim he was a member of the 40/40 club!!
Ok so how does using a name in a non-trademark suit exactly lead to $5 million in potential damages? Well, it happens in places beyond the bright lights of celebrities too. The claims are the same—fraudulent mispresentation, unfair competition, marketplace damage but the location is much different. AAA, the American Automobile Association with 50 million customers strong, is threatening suit against a small Wisconsin business named AAA Motor Sales. Although AAA is a popular name for other local businesses, it is the fact that AAA Motor Sales is in the same line of business that such a suit is viable. One mitigating factor in the analysis is the length of time of concurrent use. Simply put, the longer the use, the less likely courts will find confusion. In the case of AAA Motor Sales, the company has been using the name for 49 years.
The issue in these types of disputes really boils down to proof of consumer confusion—does a customer actually think it is the same thing or that there is an association? In the case of the 40/40 club, and the fact that it is owned by a famous baseball player, the chance of confusion is high and the popularity of the club really is all in the name. In the case of a mom and pop style mechanic shop the chance is much lower but because the potential is there, so is the potential for a suit with heavy damages. In the end, the best cases must have all the trappings of the 40/40 club suit- a reputable name in the same line of business. In addition to actual legal issues, once egos get involved these types of high-profile lawsuits can get very heated and I expect to see that here.
By: Violet Petran