Jay-Z approaches Court to wrap up 40/40 nightclub name dispute
24/05/2010

Popular rap artist Jay-Z and a business partner are suing Boston Red Sox star baseball player, David Ortiz, for naming his Santo Domingo nightclub Forty-Forty. According to Jay-Z, this name is likely to cause confusion with his own 40/40 chain of nightclubs.

Jay-Z is seeking over US$5 million in damages and for Ortiz to cease all use of the name Forty-Forty, including on his website.

Ortiz was apparently well aware of Jay-Z’s 40/40 club and allegedly opened the infringing Forty-Forty club to benefit from the fame of the rap star’s popular nightclub.

According to the papers filed on behalf of Jay-Z, Ortiz had been a patron at Jay-Z’s 40/40 club in Manhattan on several occasions before he opened his own Forty-Forty club in Santo Domingo.

Jay-Z named his nightclub chain 40/40 to honour the rare achievement among baseball players of hitting 40 home runs and stealing 40 bases in the same season. Ortiz, a famed baseball player, has hit over 40 home runs in one season three times in his career but has yet to steal 40 bases.

It remains to be seen whether Ortiz will steal Jay-Z’s base in the legal arena in the nightclub name dispute matter.

And what might have happened had Ortiz opened his Forty-Forty nightclub in South Africa? He may similarly have been faced with legal action by Jay-Z and his business partner.

Assuming Jay-Z had registered his 40/40 trade mark in South Africa, he would have a clear case of trade mark infringement against Ortiz in terms of Section 34(1)(a) of the Trade Marks Act. In such a case, Ortiz would have difficulty in successfully defending the proceedings against him as the marks 40/40 and Forty Forty are conceptually and phonetically identical and relate to the same services.

If Jay-Z had not registered his trade mark here, Ortiz may nevertheless find himself guilty of passing-off in terms of the common law if it can be shown that he misrepresented his services as those of Jay-Z, or as being associated with those of Jay-Z, and the public is likely to be confused into believing that his services are indeed those of Jay-Z or connected with them. To succeed with such a claim, Jay-Z would need to establish that he has a reputation in the name 40/40 in respect of nightclubs in South Africa.

It is not a far stretch of the imagination to think that a nightclub patron, being aware that Jay-Z’s famous nightclubs are called 40/40, would mistakenly visit Ortiz’s Forty-Forty nightclub thinking that he was in fact at one of Jay-Z’s clubs. Star-struck patrons may even do so simply with the hope of seeing their rap idol or being in a place endorsed by him.





Jay-Z would also probably be able to rely on Section 35 of the Trade Marks Act, whether the 40/40 trade mark is registered or not, which protects well-known trade marks against reproduction, imitation or translation by unauthorized third parties. To succeed with a claim of trade mark infringement under this section, Jay-Z will have to prove that 40/40 is a well-known trade mark in South Africa. He could do so by showing that due to, for example, spill over advertising, the relevant sector of the public is familiar with his 40/40 nightclub chain. According to case law, “well-known” means that the mark in question is known to a substantial number of persons who are interested in the relevant goods or services.

With 40/40 nightclubs open in Manhattan, Las Vegas and Atlantic City, and references to the club in Jay-Z’s hit rap songs like “Dirt Off Your Shoulder”, it is entirely possible that Jay-Z would succeed in proving that the 40/40 nightclub chain is indeed well-known.

It seems that in South Africa, and probably also in the US, there is every possibility that Jay-Z would hit Ortiz right out of the park on the 40/40 name dispute issue.
Kelly Thompson
Partner
kelly-t@adamsadams.co.za
Nicole Smit
Candidate Attorney
nicole-s@adamsadams.co.za