The issue in trademark infringement is not the alleged misappropriation of creative expression, but rather, the likelihood of confusion in the marketplace as to the source of goods or services. But the First Amendment limits the application of trademark law with respect to an expressive work. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); see also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (adopting the Rogers test); E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (expanding the Rogers test from the use of a trademark in a title to the body of the expressive work).

Under the Rogers test, a trademark owner does not have an actionable claim unless the use of the trademark is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work. VIP Prods. LLC v. Jack Daniel's Props., Inc., 953 F.3d 1170, 1174 (9th Cir. 2020); Gordon v. Drape Creative, Inc., 909 F.3d 257, 269 (9th Cir. 2018); Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013).

Fake Vogue Promotion

In a promotional stunt for their new album, rappers Drake and 21 Savage created fake Vogue magazine covers to promote their new music album.

The Southern District of New York issued a temporary restraining order (“TRO”) two days after Advance Magazine Publishers Inc., doing business as Condé Nast, filed their complaint; finding that Condé Nast has a likelihood of success on its claims for federal and common law trademark infringement. Advance Magazine Publishers Inc. v. Drake, No. 22-cv-09517 (S.D.N.Y. Nov. 9, 2022).

Drake and 21 Savage also uploaded posts on their social media accounts that featured the counterfeit Vogue cover. For example, Drake captioned the photo on his Instagram page: “Me and my brother on newsstands tomorrow!! Thanks @voguemagazine and Anna Wintour for the love and support on this historic moment. ‘Her Loss' Nov. 4th.”

In the complaint, Conde Nast seeks statutory damages of up to $4 million, or the defendants' profits and plaintiffs' damages.

According to Mark P. McKenna, a UCLA law professor, if a parody defense is asserted and “if the parody is clear, then there's not going to be any confusion because people will understand that it's a parody.” Because this generates attention to the album's release, McKenna said, “There was a sort of calculated risk being made here. I mean, even if the court orders them to stop doing this, like they've already done it, they've gotten the attention. I think that's why Vogue is trying to seek money: to make it painful enough for people so that they won't do it.”

The Court set a November 22, 2022 hearing to show cause why a preliminary injunction should not issue. In the meantime, Condé Nast would have to post a $10,000 bond for the TRO and injunction by November 14, 2022.

UPDATE: On November 17, 2022, Drake and 21 Savage stipulated to a preliminary injunction without conceding any wrongdoing.