Burberry has filed suit against an Atlanta-based rapper/producer in New York federal court, alleging that he is infringing its trademarks by calling himself Burberry Perry and using its federally registered check pattern and equestrian trademark in connection with his album and social media pages. According to Burberry’s 48-page complaint, which was filed on Monday in the Southern District of New York, Perry Moise – aka Burberry Perry – is engaged in the “willful trademark infringement and dilution of the famous BURBERRY trademarks" and despite extensive efforts by Burberry to prevent Moise from continuing to engage in such behavior, the musician simply will not cooperate.
For the uninitiated, trademark infringement refers to the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services. Trademark dilution, on the other hand, is the weakening of a famous mark’s ability to identify and distinguish goods or services, regardless of competition in the marketplace or the likelihood of confusion.
According to Burberry's complaint, Moise has engaged in "obvious copying of the Burberry trademarks" with the "intent to benefit from the brand that admittedly inspired the 'Burberry Perry' name and [his] Burberry-dependent persona." The Londo-based brand alleges: “Inspired by Burberry and its trademarks—which have been used exclusively and continuously by Burberry and its authorized licensees for 160 years—Defendant adopted ‘Burberry Perry’ as his stage name, without the authorization of Burberry, and is using the fame and renown of the BURBERRY trademark for his own personal gain, to promote his albums, garner media attention, and grow a fan base, all to the detriment of Burberry.”
Burberry alleges that Moise's "use of 'Burberry Perry' is intentionally and directly inspired by Burberry, which Defendant freely admitted during a live Periscope1 broadcast on July 9, 2016" may infringes upwards of 20 of its federally registered trademarks, including those that extend to its name, checkered logo and its "Burberry equestrian knight on horseback" trademark, which are registered in an array of classes of goods and services, including for garments and accessories, and retail stores services, among others.
The fashion brand goes on to state that given its involvement in a number of music-related ventures, including its usage of musicians, such as John Epstein, Tom Atkin, Edward Larrikin, Kieran Webster, George Craig, Roo Panes, Sir Elton John, James Bay, George Ezra, in ad campaigns, Moise's usage of the Burberry trademarks is particularly damaging.
Burberry notes that it has partnered with Apple Music by way of "Burberry’s channel [which] showcases Burberry’s unique collaborations with emerging and iconic artists, featuring performances, songs, and films alongside regular playlists celebrating great musical talent past and present. Moreover, Burberry cites its launch of BURBERRY ACOUSTIC, “a platform that provides music and exclusive videos from emerging artists who are carefully selected by Burberry” and its “continuous use of the Burberry Trademarks in connection with the sale, distribution, and advertising of music since that time."
The brand also alleges that the defendant’s music sheds a poor light on its company, which is known being "a global luxury brand with a distinct heritage and reputation of design, innovation, and craftsmanship." In particular, Burberry claims: “Defendant’s release of 'Beautiful Day' on the 'Burberry Perry' album caused a social media firestorm about whether Kylie Jenner rapped Defendant’s lyrics, ‘I wish a f*ck n*gga would, yeah.’ Media and the public-at-large criticized the album, noting Defendant’s extensive use of profanity and autotune.”
Burberry asserts that it “undertook extensive efforts to stop Defendant’s infringing conduct. Once it became clear that Defendant had no intention to cease his unauthorized use of the Burberry Trademarks, however, Burberry had no choice but to seek the relief requested herein.” As a result, Burberry is asking the court to order the defendant to cease all use of its various trademarks – including its name and check logo.
Chances are, this case will not go on for long. As we have been reminded in a number of recent cases, including the one that Chanel filed against "Chanel's Salon" owner, Chanel Jones, in 2014 and subsequently won, it is a well-settled fact that an individual does not have an unfettered right to use their personal name for commercial purposes.
Why do design houses like Burberry care when others use their trademarks, you ask? Well, the answer is simple. Because their trademark rights – which are some of their most valuable assets – depend on it. Unlike the legal protection afforded by copyright and patent law, which lasts for a fixed duration, trademark protection can potentially last forever, but only if the trademark does not become generic – the instance when the public begins using the trademark as the name of a product itself as opposed to identifying an exclusive source of a product. Examples: Using the word "Band-aid" to describe a generic adhesive bandage; using "Kleenex" interchangeably with tissues, "ChapStick" as synonymous with lip balm, and "Photoshop" to describe the general digital manipulation of photos. Hypothetical: using “Chanel” to explain a tweed jacket or quilted leather purse.
With this in mind, there is a very real reason why brands do not like it when others take advantage of their trademarks. Luxury fashion brands, in particular, have spent many, many decades, and in some cases, even centuries, building esteem and goodwill around their names (and thus, their trademarks). High fashion brands, for example, are not just selling garments and accessories; they are selling a luxury lifestyles based on quality, exclusivity and allure. If their names become commonplace, that appeal is gone. In order for brand names and corresponding intellectual property to remain as valuable assets (because you’re not going to be buying a bag with the Gucci interlocking “G” print all over it if you perceive it to be a brand of poor quality or low esteem or widespread accessibility), they must be policed.
The use of such marks – whether it be in the form of Louis Vuitton’s Toile Monogram or Burberry's trademarked name – by unauthorized third parties often results in consumer confusion and/or use that may impair the strength of the famous marks by diluting them. We also know that this is most commonly done for the benefit of positive association with a well-known mark and its prestige, and thus, for the financial benefit of the unauthorized third party.
So, when houses are seemingly unnecessarily bullying smaller similarly-named businesses, it is almost always for the purpose of maintaining their own names. That is the trademark owner’s duty, after all.
* The case is BURBERRY LIMITED (UK) ET AL V. MOISEE, 1:16CV05943.
UPDATE (AUGUST 1, 2016): Moise announced via Twitter that he has agreed to change his name, as well as the title of one of his songs. Perry has now changed his name to The Good Perry, and released a new track, entitled, Blueberry. As of Monday, Burberry's lawsuit against Moise is still pending in the Southern District of New York with a hearing scheduled for August 15, 2016.