Notorious Yankee fan Jay-Z and Red Sox David Ortiz are currently at odds, but not over baseball. Their dispute is over Ortiz’s “Forty Forty” nightclub in the Dominican Republic. Jay-Z claims that his US trademark registration of the name 40/40 for his nightclubs in the United States is being infringed on by Ortiz. This claim brings up some interesting issues. First, does a US trademark extend beyond US borders? Also, how similar must a mark be to be an infringement anyways?
The marks Jay-Z has for his nightclubs, “40/40” and “40/40 Club,” are US trademarks. Also, Ortiz is not a citizen of the US, but rather he is a citizen of the Dominican Republic which further distances him from the jurisdiction of US trademark law.
The markets for nightclubs in the US and the Dominican Republic are clearly separate as they are at a vast distance from each other. Since direct competition is unlikely, Jay-Z’s most valid concern would be that Ortiz’s club is trading off of the prestige of his “40/40” trademark. He can claim that Ortiz’s use of his trademark weakens its validity. Also, a negative impression of Ortiz’s club could easily create a negative impression of Jay-Z’s club in the consciences of consumers due to the incredible similarity between the names. That being said, as long as Ortiz is not marketing the club in the United States, it can make it very difficult for Jay-Z to enjoin his use of the mark.
You might be wondering how it could be that Ortiz and Jay-Z came up with the same idea for names of their nightclubs. It may help to note that the “40/40 Club” is a reference to the club of elite baseball players who manages to steal 40 bases and hit 40 home runs in a single season (Ortiz is not a member of this club). It makes sense, then, why both Ortiz and Jay-Z who obviously have interest in baseball would choose a name for their clubs that refers to an elite club within the game.
Perhaps the lesson to be learned from this dispute is that people can and do come up with the same ideas, and it pays to be the first to register a trademark with the USPTO. Jay-Z may not be able to stop the use of “Forty Forty” in the Dominican Republic because of international limitations, but he will definitely be able to stop any infringement on his name within the US.
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