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
Comments