Ye (formerly known as Kanye West) has taken aim at Melbourne-based burger-joint, College Dropout Burgers.
Earlier media reports suggest the dispute has arisen over the use of the name COLLEGE DROPOUT BURGERS, murals at the restaurant depicting Kanye West and menu items named in honour of the star.
At the time of writing, it does not appear that Mr West’s interests have taken out trade mark registration for COLLEGE DROPOUT.
Whilst the litigation is at an early stage – the restaurant has yet to be required to file a defence – there are several take-aways (pun intended?) that can be drawn from the saga.
Apart from trade mark infringement (that is where there is unauthorised use of a trade mark registered in Australia), there are two other main causes of action in this context.
Passing off can occur when a trader makes a representation that is false or misleading, at the expense of another.
In this case, an allegation could be made that consumers would likely be confused or deceived into believing that there is a formal association or endorsement between the burger-house and Mr West.
Australian Consumer Law — Misleading & Deceptive Conduct
The Australian Consumer Law also prohibits traders from engaging in conduct that is misleading and deceptive, or is likely to mislead or deceive [s 18].
Further, traders must not make false or misleading representations that:
- purport to be a testimonial in relation to the goods or services [s 29(1)(e)];
- the trader, or their goods or services, have a sponsorship, approval, or affiliation [s 29(1)(g),(h)];
The Potential Consequences
Several consequences can follow including:
- injunctions — a court order requiring the trader to cease use of the name, or cease making the offending representations;
- damages or account of profits — monetary compensation awarded for loss or damage suffered by the celebrity, or the ill-gotten profits made by the infringing business. In some circumstances, the amount of compensation can be increased to account for flagrant breaches of the law;
- adverse publicity — public attention drawn to the dispute can have negative reputational risks for the business;
- legal costs — litigation is time-consuming, stressful and expensive, and unsuccessful parties are often ordered to pay part of the legal costs of the successful litigant;
- other indirect costs — if the claim is successful, the business may be forced to rebrand, remove signage and advertising, or withdraw products or services from sale — all of which would likely cause additional costs to the business.
What this means for ‘fan art’ and ‘tribute’ businesses
The above can make it difficult for businesses who wish to position themselves as a ‘tribute’, or pay ‘homage’ to a celebrity identity.
The risk is heightened when there is a business enterprise, as an argument can arise that the trader is seeking to profit off the reputation and fame of the celebrity.
As outlined above, these arguments do not necessarily depend on whether the celebrity has a registered trade mark in Australia.
Many famous and well-known brands employ strictly-regulated licensing regimes to control authorised uses of their brands and prevent infringement or dilution of their reputation and rights. Celebrity brands can also generally be presumed to have significant resources, which can be deployed toward enforcement actions.
Thus, extreme care should be taken to ensure that no unintended affiliations or endorsements are implied when referencing a celebrity or well-known brand.