August 24, 2005
What 50 Cent Really Said--Use the Term "50" and You'll Hear From My Lawyer
Jackson v. Gary Barbera Enterprises, Inc. (E.D. Pa. complaint filed Aug. 2005).
A car dealer in Philadelphia runs an advertisement for Dodge Magnums. Included is a picture of the popular rapper 50 Cent and the phrase "Just Like 50 Says." 50 Cent has a federal trademark registration in "50 Cent" for various categories but alleges that he is "commonly known...informally as '50.'"
On the surface, this seems like a garden-variety right of publicity violation (a cause of action apparently alleged but omitted from the Smoking Gun's papers). If this use was without permission, then I don't see much room for a strong defense.
Note, however, that the dealer is claiming that 50 Cent recorded two sound bite radio promotions for the dealer, in which case perhaps the newspaper ad really is just like 50 Cent said. If so, this may end up as a simple interpretation of the scope of the publicity consent/endorsement contract from the radio promotion, or it could turn into an extremely complicated case about the scope of "fair use" of a celebrity's personality. Consider the analogy--Oprah raves about a product on her TV show; to what extent can that product manufacturer use Oprah's quotes (attributed to Oprah) in their marketing?
However, I'm more interested in the trademark violation on a stand-alone basis. From my perspective, using the photo isn't a trademark violation. And I think it's pretty hard to extend the trademark registration in "50 Cent" to cover "50." It's possible that 50 Cent has developed common law trademark rights in the term "50," but that would require having developed secondary meaning. I know 50 Cent had some popular albums, so I'm pretty skeptical about that! I'd love to see how many people, seeing the phrase "Just Like 50 Says" without the photo, would think that the phrase referenced 50 Cent. Although I'm not the target audience, I strongly suspect the vast majority of readers would find that opaque.
In any case, I always find it interesting when trademark owners try to pluck individual letters or numbers out of the social lexicon and convert them into proprietary assets (this is hardly the first time). You might want to think twice the next time you punch in "50" into your calculator or spreadsheet.
Finally, in a partially-ironic twist, it seems like every newspaper covering this story has used it as an excuse to show more pictures of 50 Cent. Newspaper use of photo to sell newspapers = OK, car dealers use of photo to sell cars = not.
Interesting case. I'm not sure I agree with your trademark analysis though - at least in terms of the bottom line. I haven't looked at how the case was plead, but it seems to me that whether or not 50 Cent has rights in "50" per se, he has a pretty strong 43(a) claim when that is used together with his picture [in addition to the right of publicity claim, which you note]. I don't think we can analyze the question of rights in "50" apart from the context in which it is being used. It's possible that most people wouldn't understand "Just like 50 said" to be a reference to 50 Cent without a picture, that point seems academic to me. This would be a much harder case, and tell us a lot more about whether 50 Cent was overreaching, if it was an ad that didn't use 50 Cent's picture.
On another note, you make a great point about the inconsistent way the right of publicity treats uses of an individual's picture. The distinction between uses in newspapers and in advertisements is a function of the "commercial use" requirement in right of publicity law, but it doesn't make a lot of sense if that claim is predicated on commercial value - as you note, both are using his picture to extract commercial value. In a bit of shameless self-promotion, I have an article coming out in the Pittsburgh Law Review this fall that tries to reconceptualize the right of publicity (also coming soon to SSRN).
Posted by: Mark McKenna at August 24, 2005 12:59 PM
You're right, Mark, that the term "50" will be evaluated in context, and the superimposition of the term on the picture of 50 Cent will affect that interpretation accordingly. Sorry if that point wasn't clear.
However, there are only two situations where this interpretation becomes relevant:
(1) if 50 Cent has a common law trademark in the term "50." I'm skeptical of this, but he might. Ultimately this is decided by the trier of fact.
(2) if the term "50" + the picture infringes on his trademark for the phrase "50 Cent." It might, as you point out, but then this raises the question of exactly how far his trademark reaches.
Posted by: Eric Goldman at August 24, 2005 02:14 PM
Actually, I'm not sure that captures the breadth of Section 43(a). 50 Cent need not have any common law rights in any particular designation for an advertisement to constitute a false designation of origin. You're right that 43(a) is applied for common law marks, but it doesn't *only* apply to those marks. 43(a) is about what the defendant does, not so much about the plaintiff's particular rights. That's precisely why 43(a) is such an important, and controversial, weapon. So even if 50 Cent had never himself used 50 and had no common law rights in the term, he still might have a claim if people thought the overall context suggested his sponsorship or endorsement.
Posted by: Mark McKenna at August 24, 2005 03:27 PM
I thought trademarks on numbers by themselves were not allowed. Intel couldn't TM 286, 386 or 486 and finally got wise and switched to "Pentium" for the next innovation. How could "50 Cent" ever be construed to cover "50"?
Posted by: Steve Middlebrook at August 24, 2005 04:08 PM