In a recent case, a Chicago-based rapper who goes by the name “Burberry Jesus” has received notice of a lawsuit filed against him by the well-known British fashion brand Burberry. The rapper is being sued by the 164-year-old brand for the use of the brand’s name as his stage name and various other ways. Burberry is claiming that Marvel Yarbrough, who goes by the name “Burberry Jesus” on stage and his various social media handles, is engaging in “willful trademark infringement and dilution of the famous BURBERRY trademarks, as well as copyright infringement of Burberry’s copyright-protected design.”
While Yarborough has given the warning on his Instagram handle that he has no affiliation with the fashion brand, his actions seem to claim the exact opposite. The rapper continues to post pictures of himself, clad in clothes manufactures by Burberry, and even uses Burberry’s trademarked check pattern on his album covers and social media profile pictures. Not only that, but he also owns a car which covered in Burberry’s copyright-protected TB monogram print. These actions tend to create an impression upon the mind of the viewer that there is an association between the brand and the artist.
The actions of Marvel Yarborough fall under what is commonly known as reputation parasitism, or leeching. As the name suggests, reputation parasitism occurs when one uses the well-established name of a brand to promote and market their brand, leading to unjust enrichment of the hard work of the host. In contrast to an outright trademark infringement, parasitism differs in the way that the offender claims no association with the brand over which they are “leeching”, or indulges in no such acts of counterfeiting.
In a classic case of reputation parasitism, the offender places their brand next to the product of the host brand. The result is that in the mind of the viewer, an association is formed between both the brands, bringing the product of offender’s brand in the spotlight. While this may appear to be an “accidental” or an “innocent” act, there certainly is an element of unauthorised utilization of the brand name of the host, which constitutes an act of infringement.
It is important for brands to take vigilant and active action against this kind of conduct, usually employed by artists in the entertainment industry, as these acts have the tendency to tarnish the reputation. Looking at certain recent examples from the Indian entertainment industry itself, one can easily conclude that there has been a rise in the leeching of well-known brands by the artists. Take, for example, the famous Punjabi song titled “Lamberghini”, or the Bollywood song titled “Aajana Ferrari Mein”.
Indian Laws Dealing with Infringement and Parasitism
The Section 29 of the Indian Trademark Act, 1999 deals with issues of infringement and elaborates on such actions that constitute infringement of a registered trademark.
The Section 29(2)(c) reads as, “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.”
Similarly, the Section 29(4) states that, “A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”
Reading further, the Section 29(7) of the states, “A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.”
Also, the Section 29(8) reads, “A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or
(b) is detrimental to its distinctive character, or
(c) is against the reputation of the trade mark.”
Finally, the Section 29(9) states that, “Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”
In cases of leeching of brands in songs, such instances clearly violate the various aforementioned provisions of Section 29. Firstly, the use of a trademark in songs may lead to the impression in the minds of the viewers and listeners that the singers and producers of the song have an association with the mark so used in the song. This impression is false and causes an infringement of a trademark in cases where the producers have not taken permission from the brand of such use. Secondly, the marks used in the song are mostly those that have a certain reputation and popularity in India. When such marks are used in the songs, without the authorisation from the brand, it leads to unjust enrichment of the producers of the song because of the reputation that the brand holds in the Indian markets. Adding to that, use of the mark in such songs that have hidden meaning and innuendos behind their lyrics also has the effect of tarnishing the reputation of the brand. Thirdly, in such cases where the mark is used in lyrics as well as the title of the song, advertisement and publicity of the song when the due authorisation has not been obtained from the brand is a blatant violation of Section 29(7). Fourthly, in such advertisement as mentioned in the above point, it is again an unjust enrichment of the popularity or reputation of the brand and is violative of honest practices in the trade. Finally, the use of the trademark in form of lyrics and visual representation in the music video, without the proper authorisation from the brand is again an infringement of trademark under Section 29(9).
A trademark of a brand acts as an identity for the brand, which enables a customer to distinguish the goods or services from that of other players in the market. It takes years and unmeasurable hard work for a proprietor to build a brand that has a loyal customer base and reputation throughout. When customers hear or see the mark anywhere, they instantly recognise the same with the product or service related to it. A proprietor that puts such an effort must be able to reap the benefits in terms of their trademark protection. However, when the same trademark is used in an unauthorised manner it not only leads to unjust and unfair advantage to the unauthorised use, but also has the potential to cause immense economic damage, and not to forget the damage to the reputation of the brand that may be caused. Therefore, it is important to take adequate steps to avoid such instances of leeching or parasitism, to protect the goodwill of the brand and maintain integrity in trade and commerce.
References:
Burberry is Suing Rapper "Burberry Jesus" for Trademark Infringement, Dilution | The Fashion Law. (2020, November 24). Retrieved from The Fashion Law: https://www.thefashionlaw.com/burberry-is-suing-rapper-burberry-jesus-for-trademark-infringement-dilution/
Chandriani, K. (2020, July 20). Leeching as a mode of Trademark Infringement. Retrieved from The IP Press: https://www.theippress.com/2020/07/20/leeching-as-a-mode-of-trademark-infringement/
Kakar, G. (2020, October 20). Metacept. Retrieved from https://metacept.com/reputation-parasitism-threat-to-ip-protection/