Jackson v. Odenat
Trademarks: In order to prevail on a defense of implied license the Defendant bears the burden of proving apparent authority to bind the Plaintiff.
(Opinion Keenan) Plaintiff Curtis Jackson (Jackson), better known to the world as 50 Cent, is a hip-hop artist and president of both G-Unit Records and Tomorrow Today Entertainment. Defendant Lee Odenat (Odenat) operated the website www.worldstarshiphop.com (the website). Third-Party Defendant Yves Mondesir (Mondesir) served as a G-Unit DJ. Mondesir creates mixtapes that he distributes for promotional purposes. Odenat claimed that Mondesir gave him mixtapes which contained songs by Jackson, and gave him permission to use both Jackson’s image and the G-Unit mark to market the mixtapes. Between 2005 and 2009, the website used three different mastheads which included images of Jackson. The website also contained a link to “G-Unit Radio,” which directed users to several mixtape samplers. None of the mixtapes accessed under the “G-Unit Radio” link were produced by Jackson or G-Unit Records.
Jackson filed suit against Odenat in 2009, alleging copyright, trademark, false endorsement, and state intellectual property causes of action. Odenat raised defenses of fair use, implied license, equitable estoppel, and unclean hands. Both parties filed cross motions for summary judgment on all actions and affirmative defenses.
The court noted that ownership of a valid trademark is not a requirement of a false endorsement claim under section 43(a)(1) of the Lanham Act. However, in ruling on both the parties’ false endorsement and trademark infringement claims, the court found disputed issues of fact. Specifically, despite the fact that there could be no reasonable dispute that Odenat used Jackson’s image and the G-Unit masthead on the website without their permission, the likelihood of consumer confusion remained a disputed issue of fact for both trademark and false endorsement claims. For those reasons, the court DENIED both parties’ cross motions for summary judgment on the trademark and false endorsement claims.
To prevail on the affirmative defense of fair use, the court held that a trademark or likeness must be used 1) other than as a mark; 2) in a descriptive sense; and 3) in good faith. Because the court found that use of Jackson’s likeness on the website’s masthead to be in no way descriptive, the court GRANTED Jackson’s motion in regard to the fair use defense.
To prevail on the affirmative defense of implied license, the court held that Odenat bore the burden of establishing that Mondesir has apparent authority to bind Jackson. Because Odenat pointed to no source of apparent authority other than Mondesir’s own claims, the court found Odenat’s defense failed as a matter of law and GRANTED Jackson’s motion in regard to the implied license defense.