Burberry is Suing Rapper “Burberry Jesus” for Trademark Infringement, Dilution

A Chicago-based rapper has landed on the receiving end of a lawsuit from Burberry over his stage name and various elements of his branding, which the 164-year old British fashion company claims is infringing its world-famous trademarks. According to the complaint that it filed in an Illinois federal court last week, Burberry asserts that Marvel Yarbrough – a musical artist using the name “Burberry Jesus” – is engaging in “willful trademark infringement and dilution of the famous BURBERRY trademarks, as well as copyright infringement of Burberry’s copyright-protected design.”

According to the newly-filed suit, Burberry alleges that Yarbrough “adopted ‘Burberry Jesus’ as his stage name – which he often shortens to ‘Burberry’ – with an intent to replicate the Burberry brand and copy its well-known trademarks that have been used exclusively and continuously by Burberry and its authorized licensees for more than 160 years.” Yarbrough “uses the fame and renown of the BURBERRY trademark for his own personal gain,” the fashion brand claims, as well as “to promote his music, garner media attention, grow a fan base, and unfairly trade off of Burberry’s goodwill, all to Burberry’s detriment.”

Despite having “no association with Burberry,” which Yarbrough acknowledges in his Instagram bio, Burberry asserts that the rapper “has, nevertheless, gone to great lengths to create a Burberry-dependent persona” – from using @BurberryJesus social media handles and the burberryjesus.com domain to “posting photos and videos of himself in Burberry-branded merchandise, as well as his cars, which are vinyl-wrapped in prints bearing unauthorized copies of Burberry’s intellectual property.” Still yet, Burberry contends that “in promoting his music and music videos,” Yarbrough “also copies Burberry’s other famous and immediately recognizable trademarks, including its BURBERRY CHECK trademark, on his digital album covers and social media profile images,” as well as its stylized word mark, and its copyright-protected TB Monogram print.

Prior to filing suit, Burberry says that it undertook “extensive efforts” to put a stop to Yarbrough’s allegedly infringing conduct in an “amicable” manner, including by sending “nearly a dozen” cease and desist letters to the rapper since December 2019. While Yarbrough “initially indicated that he would comply with Burberry’s request to cease his infringing conduct,” Burberry claims that “subsequent events revealed that Defendant’s cooperation was feigned, and he had no intention of complying with Burberry’s reasonable requests.”

In addition to failing to stop using the Burberry Jesus name in connection with his music and on his various social media accounts, Burberry claims that ten days after it sent its first cease-and-desist letter to him, Yarbrough went so far as to “surreptitiously file a request in the Circuit Court of Cook County to improperly change his legal name from Marvel Yarbrough to Burberry Jesus,” presumably in an ill-advised attempt to avoid liability.

(The name change approach almost certainly will not shield Yarbrough from Burberry’s claims. This is not just because Yarbrough obtained the name change in a “fradulent” manner by failing to disclose in his application that he had been “convicted of two felonies in 2011 and a misdemeanor for forgery in 2013,” as required by Illinois law, as Burberry notes in the complaint, but also because as many courts – including the court that sided with Chanel in its case against a salon owner named Chanel Jones – have consistently made clear, individuals do not have unfettered right to use their personal names for commercial purposes, especially when those names conflict with others’ pre-existing trademarks).

At a later date, Burberry alleges that Yarbrough responded to one of its letters “admit[ing] that he was ‘completely aware of the [Burberry] brand,’ and suggested that perhaps a ‘sponsorship’ or some other ‘connection’ could be made between [himself] and Burberry.” At the same time, he allegedly informed Burberry that he had “remedied the issue on all platforms.” However, he had not, and as such, Burberry claims that his “statements were deceptive and designed to create the façade he was going to cooperate when, in fact, unbeknownst to Burberry, he had no intention of doing so.”

Ultimately, Burberry argues that “there is no question that [Yarbrough] has affirmatively sought to make the Burberry luxury brand a part of his public image” in furtherance of “a clear attempt to trade off of the fame and goodwill cultivated by Burberry.”

Given Yarbrough’s “ongoing, unauthorized, and pervasive use of the distinctive and famous BURBERRY name, related trademarks, and copyrighted design,” and his limited attempts to remedy the situation (slightly modifying the spelling of his name to “Burbery Jesus” did not alleviate the infringement, per Burberry), the brand has set forth claims of federal trademark infringement and dilution, false designation of origin, trademark dilution under common law and Illinois’ Trademark Registration and Protection Act, violations of Anticybersquatting Consumer Protection Act, and copyright infringement, among others.

As for whatever Yarbrough’s allegedly infringing acts are likely to cause consumers to be confused as to whether there is an affiliation between Burberry and Yarbrough, or whether Burberry is connected with and/or has authorized Yarbrough’s use of its marks, which is the critical element in a trademark infringement claim, Burberry says that it is. While the brand is “perhaps most well-known for selling apparel and accessories,” it asserts that it also “conducts business in other industries under the famous Burberry trademarks and copyrighted designs, including the entertainment and music industries, where its music offerings are highly regarded around the globe.”

In 2010, for instance, Burberry says that it “launched BURBERRY ACOUSTIC, a platform that provides music and exclusive videos from emerging artists who are carefully selected by Burberry,” and has “continuously used the Burberry trademarks in connection with the sale, distribution, and advertising of music since that time.” More recently, the Riccardo Tisci-fronted brand “has partnered with up-and-coming musical artists to perform Live Sessions for the Burberry Community.”

(It is worth noting that while the majority of the trademark registrations that Burberry cites in its complaint primarily extend to clothing (class 25), handbags and leather goods (class 18), and retail store services (class 35), it does maintain a registration for its word mark for use in connection with “entertainment services,” including “production and online distribution of sound, music and video recordings in the fields on music and fashion” in class 41).

With the foregoing in mind, Burberry is seeking monetary damages to be determined at trial, and injunctive relief to permanently prevent Yarbrough from further infringing its rights. Among other things, the fashion brand wants the court to bar Yarbrough from using “any name that looks or sounds similar or is any way confusingly similar, including any and all spelling variations that are similar in sight or sound, and otherwise confusingly similar to the Burberry trademarks, including but not limited to, ‘burberryjesus,’ ‘burberyjesus,’ ‘burberiijesus,’ ‘Burberrii Jesus,’ [etc.] … and any other hashtag variations.”

And still yet, Burberry wants the court to formally declare that Yarbrough’s name change is invalid under Illinois state law.

If the case sounds familiar, that is because it mirrors one that the brand filed back in 2016 against an Atlanta-based rapper/producer Perry Moise, who previously operated under the stage name Burberry Perry. In a nearly-identical action, Burberry accused Moise of running afoul of federal trademark law in connection with his use of the “Burberry” name and relevant branding, such as its check pattern. The suit ultimately came to a close in November 2016, by way of a final default judgment and permanent injunction in Burberry’s favor, after Moise failed to respond to the complaint.

In light of the injunction, Moise was permanently prevented from “using the Burberry trademarks and any variation thereof as a trademark, service mark, trade name component, title, Internet domain name, or otherwise, to market, advertise, distribute, sell, produce, promote, offer for sale, sell, or identify any business, products, or services.”

*The case is Burberry Limited v. Marvel Yarbrough, 1:20-cv-06909 (N.D. Ill). 

Content retrieved from: https://www.thefashionlaw.com/burberry-is-suing-rapper-burberry-jesus-for-trademark-infringement-dilution/.