Everyone knows that the stage name an artist chooses to go by is an integral part of the brand of that artist, especially for hip hop artists. But what are the legal implications when the chosen name is a popular brand or similar to such brand? This article will be briefly addressing just that with reliance on the Rolls Royce versus Royce Rizzy case and Burberry versus Burberry Perry.
In 2015, Royce Rizzy, formerly, Rolls Royce Rizzy, learnt the hard way about the legal implications of the stage name he opted to go by. Royce Rizzy appeared on the scene as an artist known as Rolls Royce Rizzy. His business managers and record label advised him to change his name in order to prevent any legal issues with Rolls Royce. He did exactly that, but because of his love for the brand, he had created tour merchandise bearing the name and the Rolls Royce insignia. Rolls Royce heard about this hip hop artist and decided to issue a cease-and-desist letter to Royce Rizzy requesting that he stop selling the tour merchandise and bearing the name “Rolls Royce” as it was an infringement of its trademark.
Shortly after the Royce Rizzy case, another rapper, Burberry Perry, suffered a similar fate at the hands of Burberry. In 2016, Burberry filed a lawsuit against Perry Moise for trademark infringement arising from Moise’s use of the name “Burberry” as well as the use of the trademark protected check pattern. Moise was alleged to be engraved in “wilful trademark infringement and dilution” of the Burberry trademarks.
In order for you to understand the above, I will first explain what a trademark is and secondly what the alleged grounds for trademark infringement are.
A trademark according to the Trade Marks Act 194 of 1993 is “means a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of the trade with any other person”. Simply put, a trade mark is a registered mark used to distinguish one product or service from another. In the case above, the trademark is the “double R” and the name Rolls Royce.
The act of using the trademarked name of another and benefitting or not therefrom is an act of trademark infringement if you have not obtained the permission of the owner of the registered trademark. Trademark infringement is divided into 3 types in terms of section 34(1) (c) of the Trade Marks Act: Primary infringement; Extended infringement and infringement by Dilution. Primary infringement is the unauthorised use in the course of trade of the registered trademark or a confusingly similar mark as a trade mark in relation to goods or services, for example, Adidas Superstar shoes versus Hang Ten shoes (Adidas AG v Pepkor Retail Limited 2013 ZASCA 3). This form of infringement is not applicable to the cases referred to earlier in this article. The next form of infringement is called Extended infringement which is the unauthorised use in the course of trade of the registered trademark or a similar as a trade mark in relation to goods or services which are so similar to the goods or services which the trade mark is registered that there is a likelihood of deception or confusion, for example, Romany Creams versus Romantic Dreams. It is clear to see that this form of infringement is not the type of infringement Royce Rizzy and Burberry Perry committed.
The last form of trade mark infringement, which Rolls Royce and Burberry relied on, was dilution infringement by blurring or tarnishing. This type of infringement requires the unauthorised use in the course of trade of a registered trademark or of a similar mark in relation to any goods or services which is a well-known mark and such use would take unfair advantage and be detrimental to the distinctive character or repute of the registered trademark. By using the “double R” and the name “Rolls Royce”, Royce Rizzy took unfair advantage of the reputation of Rolls Royce even though, as he alleges, was not for financial gain but was to merely pay homage to a brand he loves as he does not sell the t-shirts.
In the Burberry Perry case, Burberry alleged that due to a number of music-related ventures it has engaged in and ad campaigns, the use of the name by Perry is likely to mislead the public and/or dilute its brand and reputation.
The outcome of the above mentioned matters have been similar: both artists ceased using the names of the luxury brands, selling any merchandise bearing the registered trademarks. And in Burberry Perry’s case, he had to change the name of a song on his album titled “Burberry”.
Although the above cases are based on the United States of America law on Trademark, similar principles are applied in the South African context and such cases in the United States, assist South African judges in granting judgments of dilution which has been a challenging area of trademark law.
The moral of the story is, as artists, before you decide to use a popular brand as your stage name, remember that such brand has the power to haul you to court and sue you for trademark infringement which may result in damages being paid to such brands for the unauthorized usage of its trademarks. Most importantly, it will require that the artist ceases to use such name and/or any registered trademark of the brand.
