Taco Bell, a US fast food outlet specialising in Mexican-style
meals and snacks, wrote to Eminem protégé 50 Cent inviting him to
change his name to help advertise a new pricing structure for its
food. It also sent the letter to newspapers.
"Dear Mr. Jackson," said the letter, referring to 50 Cent's real
name, Curtis Jackson. "For just a few spare coins, we’re giving
consumers more variety for less money with our new 79-89-99 Why Pay
More value menu…so here’s our offer of change to you: For one day
this summer, change your name either 79 Cent, 89 Cent or 99 Cent by
showing up to one of our more than 5,600 locations nationwide and
rapping your order in the drive thru with your new moniker."
"We'll serve the guests of the chosen location with plenty of
free Why Pay More menu items. And we'll reward more than just
customers – we'll also make a $10,000 contribution to a charity of
your choice," it said.
Taco Bell has now been sued by 50 Cent, who says that the chain
made use of his identity and trade marks to promote itself without
the usual agreement and payment involved in celebrity endorsement
deals.
"The 'letter' was no more than a print ad highlighting Jackson's
name, persona and trademarks to promote Taco Bell's new hip-hop
based advertising campaign," said the suit, filed in the district
court for the Southern District of New York. "Thus, without
authorization, Taco Bell traded on the name of the world's biggest
hip-hop star…and generated massive publicity for its business."
"However, Taco Bell violated federal and state law when it
traded on Jackson's name, persona and federally-registered
trademarks without any authorization," it said.
The suit says that the company would have had to pay millions of
dollars for 50 Cent's endorsement, and that it had tried to find a
way to get that for just a $10,000 charity donation.
Previous UK cases have established that celebrities are
protected from use of their identities in endorsements without
their permission.
Iain Connor, an intellectual property specialist with Pinsent
Masons, the law firm behind OUT-LAW.COM, said that 50 Cent would
likely have the stronger argument if such a dispute came before a
UK court.
"In the UK there would be an argument of passing off. 50 Cent
would say that Taco Bell is passing its adverts off as being
endorsed by him when there is no such endorsement. A paid
endorsement from 50 Cent would be expensive and the fact that Taco
Bell is poking fun at the rapper's name is unlikely to defeat his
claim."
Connor pointed to two previous rulings on the subject. In 2003,
racing driver Eddie Irvine won damages from radio station TalkSport
Radio after it used his image in an advert without his permission.
Initially Irvine was awarded just £2,000 but he appealed
successfully. The Court of Appeal said the trial judge was wrong to
dismiss Irvine's claim that "he would not get out of bed for less
than £25,000." The Court of Appeal raised the damages figure to
£25,000.
In another case, the late MP Alan Clark sued Associated
Newspapers after its London title the Evening Standard ran a spoof
diary series called Alan Clark's Secret Political Diary, intended
as a parody of the politician's famous memoirs. The court ruled
that Associate Newspapers was liable for passing off and false
attribution of authorship. Clark won damages and the newspaper was
banned from continuing to publish the diary without making clear
that Clark was not the author.
"Some might say that English courts showed a sense of humour
failure in the Clark judgment," said Connor. "But our intellectual
property laws don't yet recognise a right of parody. So over here,
to do as Taco Bell has done would be something of a gamble."
The 50 Cent suit explains that the rapper is careful about what
products he does endorse, and claims that he has turned down many
millions of dollars' worth of endorsement opportunities.
"To prevent any diminution of the public's perception of him,
Jackson has limited his endorsement activities to products of the
highest quality," it said. The suit claims that Taco Bell's actions
have "caused confusion in the marketplace among consumers and
potential endorsement partners of Jackson, all of whom are likely
to believe that the 79-89-99 Cent Ad Campaign and Taco Bell are
endorsed by Jackson."
"Defendant's publicity stunt not only 'stole' a multi-million
dollar endorsement, but it also cheapened Jackson's brand, thus
making his endorsement worth less to potential marketing partners,"
it said.
The suit demands at least $1 million in damages from Taco Bell
and an injunction against it using 50 Cent's name or trade marks
again.
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