Friday, November 21, 2008

Taco Bell's Answer to 50 Cent's Trademark Infringement Lawsuit

Yo Yo Yo No Quiero Taco Bell !

The trademark infringement story du jour on Thursday was the Answer filed by Taco Bell in the trademark infringement lawsuit filed by Curtis James Jackson, III (better known as the rapper 50 Cent) on July 23, 2008. See Jackson v. Taco Bell Corp., Case No. 08-cv-06545 (S.D.N.Y.). A copy of the answer filed in September is available here (courtesy of which ran a story on the filing yesterday). News articles on the originally filed lawsuit can be found here and here.

50 Cent filed the lawsuit after Taco Bell sometime in July sent an open “letter” to 50 Cent, signed by Taco Bell President Greg Creed, which offered to make a $10,000 donation to 50 Cent’s charity of choice if he agreed to change his name from 50 Cent to 79, 89, or 99 Cent and stop by any Taco Bell restaurant of his choosing and rap his order at the drive-thru using the new name. See news reports here and here.

The letter, which was part of Taco Bells’ “Why Pay More” value menu campaign advertising the company's 79, 89, and 99 cent food items, read “We know that you adopted the name 50 Cent years ago as a metaphor for change. We at Taco Bell are also huge advocates for change... We encourage you to 'Think Outside the Bun' and hope you accept our offer.” Taco Bell also agreed to feed for free all of the guests at the Taco Bell location where 50 Cent decided to place his order.

50 Cent felt that the letter used, without his authorization, his name, persona and trademark (the the registered mark 50 CENT) for commercial purposes and led consumers to mistakenly believe that he was endorsing Taco Bell. 50 Cent also felt that the campaign had made his fans think that he had “sold out” by endorsing Taco Bell, thus harming his rap image.

In Taco Bell’s Answer, 50 Cent is described as only lawyers would describe:

Plaintiff Jackson is a self-described former drug dealer and hustler. He is now a rap music performer who uses the term “50 Cent” to identify himself. His work falls in the subgenre of hip hop music known as “gangsta rap”, a style associated with urban street gangs and characterized by violent, tough-talking braggadocio.

Jackson has used his colorful past to cultivate a public image of belligerence and arrogance and has a well-publicized track record of making threats, starting feuds and filing lawsuits. At the same time, Jackson holds himself out as a giver to charity and one who wants to give back to his community.

This lawsuit is another of Jackson's attempts to burnish his gangsta rapper persona by distorting beyond all recognition a bona fide, good faith offer that Taco Bell made to Jackson.

Taco Bell describes its “challenge” of asking 50 Cent to change is name as a “soft ridicule and good-natured lampoon of the rapper's moniker, 50 Cent, and his public image as a tough gangsta rapper.” Taco Bell argues that the offer was a good natured parody of the rapper's name and provided 50 Cent with “an opportunity to give back to his community and a public forum to showcase a softer, playful side for his fans.”

Taco Bell claims it did not disseminate the letter in advertising or otherwise use Jackson's name in an advertising campaign, but rather sent the letter directly to 50 Cent’s agent. Of course, the letter was provided to the press, but only “because of the legitimate public interest in a charitable offer to a celebrity of Jackson's stature.” [Comment: Isn’t it up to 50 Cent to decide whether he would want to accept such an offer and have the public know about it – was Taco Bell trying to guilt 50 Cent into accepting the offer by publicizing it?] 50 Cent’s complaint described the letter as reading like “a poorly written voice-over for one of Taco Bell's television commercials.”

Taco Bell maintains that “The public had a right to know about the offer and whether Jackson would accept it, and Taco Bell had a Constitutionally protected right to make it.” [Comment: Taco Bell certainly had the right to make the offer, but the public had a right to know about the offer?]

Taco Bell concludes that 50 Cent could have simply answered Yes or No to the offer – and that “If Jackson simply had rejected the offer, that would have been the end of the matter.” [Comment: Of course, Taco Bell had already reaped the benefit of using 50 Cent’s name in connection with the "offer".]

Rather than 50 Cent just accepting or rejecting the offer, as Taco Bell puts it,

[I]nstead of responding to Taco Bell's sincere offer in the friendly and humorous spirit in which it was issued, Jackson launched an aggressive, offensive attack on Taco Bell in the press. In a heavily publicized sound bite, Jackson threatened legal action against Taco Bell stating, “When my legal team is finished with them, Taco Bell is going to have a new corporate slogan: 'We messed with the bull and got the horns.'“ Jackson then brought this lawsuit.”

Taco Bell describes 50 Cent’s actions as “a transparent attempt at self-promotion.” [Comment—not to be confused with a company that would send out "humourous" charitable offer that it knows full well will not be accepted by the recipient but which will garner some publicity for the company nonetheless.]

Taco Bell says that 50 Cent’s lawsuit “has garnered significant media coverage – considerably more, in fact, than Taco Bell's offer.” [Comment—But doesn’t Taco Bell also get publicity from the lawsuit?] Taco Bell argues that his claims fail as a matter of law because “Taco Bell did nothing more than make a legitimate, newsworthy offer to him and provide the public with information about that offer.”

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