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Vogue has landed a win in the first round of a lawsuit against Drake and 21 Savage over their unauthorized use of the magazine’s trademark to promote their newly-released album. On the heels of Advance Publications d/b/a Condé Nastfiling a trademark infringement suit against Drake and 21 Savage on Monday, Judge Jed Rakoff of the U.S. District Court for the Southern District of New York ordered that the two musicians immediately refrain from using Vogue’s trademark-protected name to promote their album, Her Loss, and continue to hold off from doing so until at least November 22 when counsel for the parties are slated to appear in court to show cause for a longer-term preliminary injunction. 

In the brief order issued on Wednesday, Judge Rakoff found that Condé Nast has a likelihood of success on its trademark claims in light of Drake and 21 Savage’s creation and dissemination of “images of a counterfeit cover of Vogue magazine featuring the Vogue mark and an image of [themselves], as well as copies of a counterfeit magazine purporting to be a genuine issue of Vogue magazine.” Specifically, the court stated that, “among other things, the defendants’ actions are confusing consumers about the origin, sponsorship, or approval of the counterfeit cover and counterfeit magazine, misleading consumers to believe that these are genuine and authentic materials associated with Condé Nast and Vogue magazine.” 

Condé Nast pointed to media articles linking the musicians’ faux magazine cover to Vogue, and social media user comments that it claims establish that consumers are confused about the nature of the allegedly infringing promo campaign and that reflect “the widespread belief that the counterfeit issue and counterfeit cover disseminated by the defendants were real.” 

Drake and 21 Savage's promo Vogue magazine

“A temporary restraining order is necessary … to protect the public from confusion, deception, and mistake, and to protect Condé Nast from immediate irreparable injury,” according to the court, which ordered that Drake and 21 Savage be barred from disseminating more of the counterfeit materials. 

Additionally, the court is requiring Drake and 21 Savage to “take down and remove all existing internet and social media posts on all websites and social media accounts … that contain or reflect (i) any depictions of or references to the Counterfeit Magazine and/or the Counterfeit Cover, (ii) any use of the [Vogue] trademarks for commercial purposes, including … to advertise, market, or promote the album Her Loss, (iii) any use of [Anna] Wintour’s name, image or likeness for commercial purposes, and/or (iv) any false or misleading statements or misrepresentations concerning the Counterfeit Magazine, the Counterfeit Cover and/or Drake and 21 Savage’s participation or appearance in Vogue magazine.” 

Still yet, the musicians are directed to “take down and remove from public display and circulation all existing physical print posters, in all locations, depicting the Counterfeit Cover” – and remove from circulation “all existing physical copies of the Counterfeit Magazine” – that were displayed or circulated by them or at their direction. 

In its complaint on Monday, Condé Nast claims that it attempted “resolve this matter amicably” with Drake and 21 Savage “as early as October 31” in order to “curtail further public confusion” before the release of their album on November 4, “Nothing was done, with the defendants continuing to benefit from the infringing social media posts that would take seconds to take down.” The defendants’ “flippant disregard for Condé Nast’s rights have left it with no choice but to commence this action,” Condé contends, setting out federal and state law claims of trademark infringement/ counterfeiting, false designation of origin, and false advertising, as well as violations of New York General Business Law. 

As of the time of publication, an Instagram post depicting the cover that previously appeared on Drake’s and 21 Savage’s respective Instagram accounts had been removed. 

UPDATED (Nov. 17, 2022): In order “to avoid unnecessary cost and expense,” Drake and 21 Savage consented to a preliminary injunction “without conceding any liability with respect to the claims asserted by Condé Nast in this action, and without conceding any wrongdoing on their part.” Among other things, the injunction prohibits the musicians from “using displaying, disseminating, or distributing copies of the Cover and Magazine,” and from using the Vogue trademark or any confusingly similar marks in a commercial capacity.

The case is Advance Magazine Publishers v. Aubrey Drake Graham, et al., 1:22-cv-09517 (SDNY).

Drake and 21 Savage have landed on the receiving end of a new lawsuit, but instead of facing a copyright lawsuit over song lyrics, a common cause of action in the music industry, the two rappers are being sued by Vogue’s parent company for allegedly using the magazine’s name as part of a “widespread promotional campaign.” According to the complaint that it filed in a New York federal court on Monday, Advance Publications d/b/a Condé Nast claims that Drake and 21 Savage have promoted their newly-released album Her Loss by way of a campaign “built entirely on the use of the VOGUE trademarks and the premise that Drake and 21 Savage would be featured on the cover of Vogue’s next issue.” 

The problem, according to Condé Nast: “All of this is false,” and no part of the “deceptive campaign” has been authorized” by the Vogue trademark holder. Nw York-headquartered Condé Nast, whose media properties range from Vogue and Vanity Fair to The New Yorker and Architectural Digest, claims that Drake and 21 Savage (the “defendants”) have “gone so far as to create a counterfeit issue of Vogue magazine – distributing copies [of the magazine] in North America’s largest metropolitan areas, plastering posters of the counterfeit cover along streets and buildings throughout these cities, and disseminating images of the unauthorized counterfeit magazine to the more than 135 million social media users who actively follow [them] on social media along with an untold number of others who have viewed false social media posts.”

The "counterfeit" Vogue cover featuring Drake, 21 Savage

More than that, instead of “offer[ing] any indication that [their] supposed cover was of a counterfeit magazine,” Condé Nast asserts that the defendants’ social media posts on both Instagram and Twitter “are accompanied by the following explicitly false statements: ‘Me and my brother on newsstands tomorrow!! Thanks @voguemagazine and Anna Wintour for the love and support on this historic moment. Her Loss Nov 4th.’” Yet, in reality, the magazine publisher states that “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, nor did Condé Nast authorize, much less support, the creation and widespread dissemination of a counterfeit issue of Vogue, or a counterfeit version of perhaps one of the most carefully curated covers in all of the publication business in service of promoting the defendants’ new album.” 

(In specifically pointing out the allegedly “explicitly misleading” statements made by the defendants, Condé Nast appears to already be chipping away at any arguments that counsel for Drake and 21 Savage make in the vein of Rogers v. Grimaldi, the case in which the Second Circuit held that the unauthorized use of a trademark in an expressive work does not violate the Lanham Act unless it has “no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”)

As a result of the campaign, Condé Nast argues that confusion among the public has been “unmistakable.” In the “immediate” wake of the defendants’ deceptive social media posts, Condé asserts that “numerous media outlets” – namely, hiphop music sites – “published stories with titles like, Drake & 21 Savage Land Vogue Cover Ahead of Collab Album Her Loss; Drake and 21 Savage are Vogue’s new cover stars; and Drake & 21 Savage Make History on the Cover of Vogue.” Vogue’s owner also points to its Wikipedia page, which was updated to list Drake and 21 Savage as Vogue’s December 2022 cover stars, and similarly cites social media comments as evidence of confusion and “the widespread belief that the counterfeit issue and counterfeit cover disseminated by the defendants were real.” (For a dive into the appropriateness of social media commentary as evidence of consumer confusion, you can find that here.)

An updated version of Conde Nast's Wikipedia page

While Condé Nast claims that it attempted “resolve this matter amicably” with Drake and 21 Savage “as early as October 31” in order to “curtail further public confusion” before the release of their album on November 4, “Nothing was done, with the defendants continuing to benefit from the infringing social media posts that would take seconds to take down.” The defendants’s “flippant disregard for Condé Nast’s rights have left it with no choice but to commence this action,” Condé contends, setting out federal and state law claims of trademark infringement/ counterfeiting, false designation of origin, and false advertising, as well as violations of New York General Business Law.

With the defendants’s “misappropriation and use of the counterfeit VOGUE mark and colorable imitations thereof in connection with the advertising, sale and distribution of their goods and services” in mind, Condé Nast is seeking preliminary and permanent injunctive relief to bar the them from continuing to use “the VOGUE Mark, or any mark that is confusingly similar to, or a derivation or colorable imitation of, the VOGUE mark, for commercial purposes, including, without limitation, to advertise, market, or promote the album Her Loss,” among other things. In addition to asking the court order Drake and 21 Savage to “deliver up for destruction all physical copies of any and all … goods, labels, signs, prints, packages, wrappers, receptacles or advertisements depicting the Counterfeit Magazine and/or the Counterfeit Cover,” Condé Nast is also seeking a monetary award of the defendants’s profits from the sales of the album and the “counterfeit magazine,” or its damages, “whichever is greater;” statutory damages of up to $4 million, or “the defendants’ profits and [its] damages, increased subject to the principles of equity, in an amount to be determined at trial.”

Putting the legal issues at play aside for a moment, it is likely safe to say that from a pure PR point of view, Drake and 21 Savage (whose counsel must have foreseen the potential for legal pushback from Condé Nast) have managed to super-charge the effectiveness of their promo campaign. As of the time of publication, Condé’s lawsuit – and in turn, Drake and 21 Savage’s new album was not only getting significantly more media attention, it was getting more attention across a broader range of outlets, than the launch of the Vogue-centric promo campaign on its own, with publications ranging from Reuters to TMZ covering the news.

The case is Advance Magazine Publishers v. Aubrey Drake Graham, et al., 1:22-cv-09517 (SDNY).

It was a technological feat that made history, wowed audiences, and brought a dead rapper back to life. In April 2012 at the Coachella festival in California, Tupac Shakur took to the stage with Snoop Dogg and Dr Dre. Since he had been dead for 16 years by 2012, it was a human-like hologram of Tupac performing before a “shocked and then amazed” crowd. Fast forward ten tears and May 2022 will see the latest technological advances in musical immortality when Abba returns to the live stage after a 40-year absence. But this time, they return as humanoids – the digital hologram “twins” of the original global phenomenon.

George Lucas’s Industrial Light and Magic has created holographic lookalikes that interact with a live band in a specially designed purpose-built theatre in east London, while Benny, Björn, Frida and Agnetha have provided the pre-recorded vocals and motion-captured movement which will then be reproduced by the digital avatars. The doppelgangers are more youthful in their appearance – seemingly in their 30s, when they were at the peak of their music fame – raising an interesting conundrum concerning Abba’s human mortality against their new immortality in the metaverse.

Abba’s music is undoubtedly timeless; the simple tunes with incredibly complicated structures appeal to millions. The “Abbatars” are a reinvention for a new audience, but will they continue beyond the lives of their originals, with new creators pulling the strings? Besides Abba and Tupac, there are other instances where “digital twinning” has been identified as a key money-making strategy. The digital band Gorillaz’ 2006 Grammy performance blended flawlessly with Madonna’s. And Richard Burton’s hologram performed on a global tour of War of the Worlds in another 2006 performance. 

Music in the Metaverse

Customizing 3D avatars has become a unique way for artists to create virtual brands across several digital platforms. They can connect virtually with fans and increase loyalty and engagement, while fans can interact, express themselves and experience new things. This is now achievable using AI software to make holograms, as researchers at the Massachusetts Institute of Technology demonstrated in an experiment that created holograms fairly instantaneously.

Ziva Dynamics a pioneer in simulation and real-time character creation, employs synthetic AI-powered avatars to create autonomous and complex movement simulations based on real muscle, fat, soft tissue and skin contact. In April 2021, in a project called Lost Tapes Of The 27 Club, Google’s Magenta AI was even used to compose songs in the styles of musicians who notoriously died at the age of 27, including Jimi Hendrix, Jim Morrison, and Amy Winehouse. 

These technologies have the potential to create realistic synthetic and AI holographic representations of departed artists, allowing them to continue creating, influencing, and performing for future audiences. Epic Games, creators of the phenomenally successful Fortnite, predicts that digital twins will combine with the metaverse, an emerging network of fully immersive digital worlds.

Disrupting the Music Business

Whereas live tours are time-intensive and costly for new artists, a low-cost metaverse “tour” might be a new way for music lovers to see live performances, especially as virtual performances by Justin Bieber, DeadMau5, and The Weeknd have already become popular recently. In this emerging branch of the music industry, record labels and marketing firms could be replaced by decentralized autonomous organizations (“DAOs”), which are organizations that operate like cooperatives, making all decisions jointly. DAOs are already disrupting the music business – along with non-fungible tokens (“NFTs”), which are a way of transferring property between people online. For instance, in October 2021, PleasrDAO – a collective of decentralized finance leaders, early NFT collectors and digital artists – paid $4 million for Once Upon a Time in Shaolin an album by New York hip-hop legends Wu-Tang Clan.

While the release of the album predates the rise of NFTs, PleasrDAO now owns the rights and has imposed strict restrictions on duplication, distribution, or public exhibition. A music-focused DAO like Pleasr may acquire opt to finance and organize events and manage fan-owned record labels and marketing agencies to secure investable commodities like first-edition LPs, artwork, and instruments. 

This could create a new, decentralized route to the market for artists free of corporate interests or interests of individual producers, developing a fairer landscape for the future. With digital avatars likely to be at the center of this new vanguard, it will be fascinating to see how it develops in the months and years to come – and whether it will be enough for music audiences.

Theo Tzanidis is a Senior Lecturer in Digital Marketing at University of the West of Scotland.

Stephen Langston is a Program Leader for Performance at the University of the West of Scotland. (This article was initially published by The Conversation.)

In one of the first major right of publicity cases when it comes to non-fungible tokens (“NFTs”), Miles Parks McCollum, the rapper professionally known as LIL YACHTY, is suing a trio of defendants for allegedly using his name and likeness to promote their metaverse-focused company without his authorization. In the lawsuit that he filed in a California federal court on January 27, McCollum claims that Singapore-based NFT startup OPULOUS and online music distributor Ditto Music, and the companies’ founder Lee James Parsons (the “defendants”) are on the hook for trademark infringement, unfair competition, and for violating his right of publicity in connection with their scheme to sell music-centric NFTs.

Setting the stage in his complaint, Grammy-nominated McCollum claims that in May 2021, he and his management engaged in introductory conversations with the defendants, who pitched their ‘music copyright-backed NFTs” venture OPULOUS, and the potential for McCollum to be involved in the launch of the company, which markets itself as “bring[ing] Decentralized Finance to the music industry, and changing how artists access the funding they need” by allowing individuals to purchase NFTs that act as fractional licenses to musicians’ sound recordings and thereby, enabling those NFT holders to earn a fractional share of the musicians’ digital streaming royalties in exchange. 

While “no agreement or deal terms were ever reached” for his involvement with the inaugural launch of OPULOUS’s products and services following two conference calls in late May 2021, McCollum claims that the defendants, nonetheless, “launched a press and advertisement campaign falsely representing that [he] was affiliated, connected, and associated with the OPULOUS platform” – and that his “copyrighted works would be offered for sale through the OPULOUS platform” – just seven days after the parties’ second and last conference call.

LIL YACHTY NFT

In connection with the OPULOUS launch campaign, which started on June 1, McCollum alleges that the defendants “utilized [his] name, trademark, and photograph” without his consent, including to alert consumers that OPULOUS was “kicking things off with a series of unmissable NFT drops led by world-famous artists, including Lil Yachty.” (In case the defendants’ pattern of co-opting his name and likeness in order to market the company to consumers is not enough, McCollum argues that they went even further and “maliciously utilized [his] alleged affiliation and involvement … as their flagship artist partnership to successfully raise substantial venture capital funds (represented as over $6.5 million), yet never remitted any monies to [him].”)

McCollum asserts that the OPULOUS ads “are likely to cause confusion, and have caused actual confusion, in the minds of the consuming public as to an association [between himself and] the defendants,” when no such association exists. With this in mind, he sets out claims of trademark infringement, unfair competition, and right of publicity violations, and is seeking an array of monetary damages, and injunctive relief “as allowable by law.” (State right of publicity laws protect against the unauthorized use of an individual’s name, likeness, or other recognizable aspects of one’s persona in a commercial capacity.)

Reflecting on the start of the case, Frankfurt Kurnit Klein & Selz partner Jeremy Goldman, who co-chairs the firm’s Blockchain Technology Group, writes that “although the case arises from the wild west of blockchain and NFTs, the complaint appears to state a fairly straightforward celebrity false endorsement claim.” Unfortunately, he notes, “the case is unlikely to answer some hot legal issues that are just outside the periphery of this case, including under what circumstances the sale of an NFT using another person’s image violates their right of publicity, and the legality of selling fractionalized royalty streams via NFTs.” 

Meanwhile, Darren Cahr, who heads up Scharf Banks Marmor’s Advertising and Intellectual Property Practice, says that he expects various right of publicity cases to be “the next big thing in future cutting edge Metaverse litigation,” pointing specifically to right of publicity suits that center on: “(a) avatars designed to look like famous people in commercial contexts; (b) augmented reality overlays that make people look like famous people; and (c) metaverse ‘challenge’ ads that alter someone else’s commercial property or avatar to put your avatar into an ad ‘seen’ by others against your will.” 

A rep for OPULOUS stated in response to the complaint, “Contrary to the assertions in the complaint filed by Lil Yachty, Opulous’s uses of Lil Yachty’s name and likeness were all authorized by Lil Yachty and his representatives. We intend to vigorously defend ourselves against these meritless claims.”

The case is Miles Parks McCollum v. OPULOUS, et al., 2:22-cv-00587 (C.D.Cal.)

In 1970, ahead of its 23 show European tour, someone from The Rolling Stones’ camp reached out to the Royal College of Art in London. The Mick Jagger-fronted band – just 8 years old at the time – was in need of a poster for the tour, which was slated to start that summer in Malmo, Sweden. The Royal College of Art’s recommendation? A Master of Arts student in his final year named John Pasche, who – following a meeting with Jagger – would come on board to design the classic 1930s and 40s travel-inspired poster to announce the impending string of shows. Pasche’s involvement would ultimately prove to be far from a one-off gig, as months later, Jagger called back. “The Stones were going to launch their own record label and they needed a logo,” and could Pasche – still a student at the time – “design it?” 

In a subsequent face-to-face, “Jagger showed Pasche an illustration of the Hindu deity Kali, which [he] had seen in a shop near his home and asked if he could borrow,” the New York Times recalls. According to Pasche, Jagger “was ‘more interested in the Indian nature of it,’ [with] Indian culture in Britain being quite trendy at the time, but the designer was struck” by something else. The goddess’s widely opened mouth and protruding tongue. He told the Times, “I just immediately picked up on the tongue and mouth.” In exchange for £50 and a £200 bonus, Pasche drew up various Pop Art-inspired takes of the tongue and lips logo, which the band would come to adopt as a central element of their branding. 

What “began as a tiny emblem, something to adorn a 45 r.p.m. single or the band’s letterhead,” according to the Times, “quickly became ubiquitous,” appearing on everything from stage sets and posters to t-shirts and lighters across the globe, and ultimately, turned out to be “the most famous logo in rock ’n’ roll.”  

The Pasche-created logo – which has long been registered in European Union by Musidor B.V., the Dutch company that owns and manages most of the band’s intellectual property assets – got the court treatment recently, with the Judicial Court of Paris determining that an unnamed third party in the business of creating fabric patches infringed the band’s trademark rights (as well as its copyright) when it co-opted the tongue and lips logo, and added a Breton flag motif, thanks to the likelihood that that unauthorized logo used by the defendant would give rise to confusion among consumers as to the source of the patches and/or the connection with The Rolling Stones when no such affiliation exists  In response to Mudisor’s copyright and trademark infringement claims, the defendant unsuccessfully attempted to make a parody argument, asserting that its take on the logo amounts to “satirical speech.” 

In what might otherwise be a straightforward infringement matter, French trademark attorney Victoire Leandri says that the case is striking given the court’s finding that The Rolling Stones’ mark is of “well-known character,” and thus, subject to heightened protections. In its February 25 decision, Leandri notes that the court referred to the Court of Justice of the European Union’s decision in the 1999 General Motors Corp. vs. Yplon SA case, which held that in order to be recognized as a well-known trademark, a mark “must be known by a significant part of the public concerned by the goods or services covered by it.” 

(Remaining “the leading authority” on what trademark holders need to prove in order to establish reputation in a mark, the decision in General Motors decision established that a decision-maker must take into account “the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made … in promoting’ the mark,” according to trademark scholars Robert Burrell and Michael Handler, who note that “significantly, in considering the level of reputation required, the decision-maker must consider whether the mark is known by ‘the public concerned by the products or services’ covered by the registration.”)

With this standard in mind, the Judicial Court pointed to an array of newspaper articles that “described the [Stones’ tone and lips] logo as iconic, even ‘the most iconic of all time,’ [and] that said that the logo is considered ‘the living tongue of The Rolling Stones,’ which has accompanied the band for 40 years.” In light of the “very close link between the [tongue and lips] logo” and The Rolling Stones, and given the significant level of media attention that the world-famous band enjoys, the court held that the logo is, in fact, “known by a significant part of the public, [is] used [widely], and therefore, enjoys a high reputation in the European Union.” Leandri states that the court’s decision also places significant emphasis on “the close and systematic link between The Rolling Stones’ trademarks” and the level of fame of the group, itself,” which the court found “directly contributes to the reputation of those trademarks.” 

As a result, the court held that the tongue and lips graphic “clearly refers, for the average consumer, to … a characteristic of The Rolling Stones’ universe,” and can benefit from the classification of a well-known mark.

In terms of the current status of the logo, the Times reported last year that it has “generated an enormous amount of money for the Stones,” citing the British public relations veteran Alan Edwards, who handled the band’s publicity in the 1980s, who says that the band “must have grossed a good billion [pounds] in concerts, record and DVD sales, merchandising and exhibitions,” while also using the logo “all over advertising” during that period of time, and the the decades since. Echoing this sentiment, Briffa Legal attorney Samuel O’Toole told the Times that famous tongue and lips trademark is likely worth “hundreds of millions of pounds.”

As for Mr. Pasche, he ultimately got more than the initial £250 paycheck for creating the logo, which was subsequently tweaked a bit by then-Andy Warhol collaborator Craig Braun before it first appeared on The Rolling Stones’ “Sticky Fingers” album in April 1971. As the Independent reported that in 1976, “an official contract was drawn up between [Mr. Pasche] and Musidor BV,” at which point “the designer began receiving royalties for his work.” According to the British publication, the deal gave Pasche 10 percent of net income on sales of Rolling Stones merchandising displaying the logo, from which he “estimates he made ‘a few thousand pounds’ in total in royalties until 1982, when he sold his copyright to the band for £26,000.” 

Reflecting on the logo years later, Andrew Blauvelt, curator at large for the Museum of Arts and Design in Manhattan, told the Times that Pasche’s “original and singular design,” has certainly “come a long way, despite having been done in a low-key fashion and at low cost.”