After multiple collaborations on several tracks, ranging from “Sneakin’” to “Knife Talk” and “Jimmy Cooks,” the two multi-awarded rappers recently released a joint album entitled “Her Loss” originally set to drop on October 28 but postponed on November 4th.
Throughout the album’s promotion, the duo came up with several publicity stunts, from pretending an appearance on NPR’s Tiny Desk, to faking an interview on The Howard Stern Show. Nonetheless, while these faux-media blitzes got the two rappers visibility, the release and unauthorized use of a counterfeit Vogue magazine was not so appreciated by its publisher.
Condé Nast, Vogue magazine’s owner and publisher, first reached out to the two rappers asking them to cease and desist from any additional infringement of its trademark rights. After its request was ignored, the company then decided to file a complaint in the New York Federal Court against the two artists and Hiltzik Strategies, Drake’s public relations agency, for building a promotional campaign allegedly using Vogue trademarks without any permission to do so.
The fake magazine cover was promoted on social media, with Drake tweeting a special thanks to Vogue magazine and its Editor-in-Chief Anna Wintour on October 30. On top of that, the duo distributed multiple copies of the counterfeit magazine in “North America’s largest metropolitan areas”, including New York and Los Angeles.
“All of this is false”, the complaint reads. According to the publisher’s lawyers, “Vogue magazine and its Editor-in-Chief Anna Wintour have had no involvement in Her Loss or its promotion, and have not endorsed it in any way.”
The lawyers argue that the fact that the “defendants would knowingly violate Condé Nast’s rights in this manner underscores the tremendous value that a cover feature in Vogue magazine carries…,” also claiming that such acts resulted in “widespread public confusion”, with press accounts leading fans to believe that a possible October special edition of the magazine was forthcoming.
That said, will the grounds stand? Section 32(1) of the Lanham Act (and N.Y. Gen. Bus. Law § 360-k.) imposes liability against “[a]ny person who shall, without the consent of the registrant — (a) use in commerce any reproduction, counterfeit, copy…. a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive….”
Under the law, Condé Nast is suing the rappers for trademark infringements, false designation of origin and dilution, and other charges, seeking statutory damages up to $4M plus additional punitive damages and an end to any trademark infringement.
The rap stars might defend themselves with the claim that their marketing stunt was meant as a parody of the relationship between media and artists. Nonetheless, opposing Condé Nast’s allegations will not be a walk in the park.
Considering their fame and wealth, it would seem doubtful that the two might need a free publicity ride on the back of Vogue, yet the presence of unauthorized use of trademark rights, in connection with the “widespread public confusion” caused among the fans, could prove enough to satisfy the requirements for the application of the Lanham Act and N.Y. Gen. Bus. Law § 360-k.
The two artists could see additional complaints filed for infringing the right of publicity of those celebrities they included in the unauthorized publication, such as Haley Bieber and Jennifer Lawrence.
One thing is sure. We’re not likely to see any further collaboration between the rappers and Vogue.
