He’s got 99 problems and a diamond IS one
By Jennifer Williams
Reviewed by Cynthia Amis
It is not uncommon to read about Jay Z’s success, he recently beat Elvis Presley for the most number one records by a solo artist. His success is furthered by his many investments, including a basketball team, record labels and Roc Nation Entertainment Company. Worth approximately 450 million dollars, it seems a bit odd that Jay Z would be the center of a lawsuit concerning a diamond. One would assume that he could buy a diamond everyday for a year and not feel it in his wallet, and yet Volcom is suing the hip hop mogul for the use of his diamond logo to brand his Roc Nation Entertainment Company. While it seems he can pay for as many diamonds as his heart desires, his money seems of no consequence to Volcom and their inverted diamond trademark.
In the current lawsuit, Volcom seeks an injunction against Roc Nation, which would bar the further production of products using the inverted diamond logo. Volcom claims trademark infringement of its inverted diamond logo and in so doing must show that it has a valid mark that is entitled to protection and that Roc Nation’s actions are likely to cause confusion with its mark. To determine if a mark is entitled to protection certain factors are considered including how widely known the mark is, the amount, volume, and geographic extent of sales of goods or services offered under the mark, and the extent of actual recognition of the mark.
In an effort to show that its mark is entitled to protection, Volcom points out that the inverted diamond was distinct from any other logo used in the industry when it was created in 1991 and that it gained immediate popularity and recognition to the brand. Further, Volcom claims that through its marketing efforts and increasing sales, the inverted diamond mark has become well known to consumers of all types and is a famous mark. Volcom has been using the inverted diamond mark in the music and entertainment industry since at least 1993 in connection with ‘Stone Entertainment.’ Roc Nation began using its similarly inverted diamond logo in 2009, and Volcom claims that Roc Nation was notified that it was infringing on the mark but continued to use it which shows a willingness to infringe on the stone mark.
To assessing the likelihood of confusion the relevant factors to consider include: (1) the strength of the mark; (2) the proximity or relatedness of the goods; (3) the marks’ similarity in appearance, sound, and meaning; (4) evidence of actual confusion; (5) the degree to which the parties’ marketing channels converge; (6) the type of goods and the degree of care customers are likely to exercise in purchasing them; (7) evidence of defendants’ intention in selecting and using the allegedly infringing mark; and (8) the likelihood that the parties will expand their product lines.
Volcom points to Roc Nation’s sale of headphones to illustrate the likely confusion among consumers. The Roc Nation Aviator headphones include the inverted diamond logo in numerous locations including on the outer packaging. Volcom states that the mark on the outer packaging is the consumer’s first point of contact and is likely to lead to confusion because Volcom similarly sells headphones featuring the Volcom inverted diamond logo. ‘Consumers seeing the similar inverted diamond logo on other headphones are likely to mistakenly believe that such headphone originate from Volcom, or are sponsored or authorized by Volcom.’ For full official court document see Scribd.com. Further increasing the likelihood of confusion, Volcom and Roc Nation sell their headphones in many of the same channels.
There is no direct comment from Jay Z or Roc Nation representatives in response to the lawsuit brought by Volcom. However, it does seem telling that, as Volcom claims, efforts were made prior to a lawsuit to halt Roc Nation’s use of the inverted diamond mark and Roc Nation ignored the request. Jay Z has been sued before, in 2005, for his use of the inverted diamond hand gesture. His continued use of the inverted diamond despite multiple legal woes seems to be a definite sign that he is not going to let go of it or stop using it anytime soon.
It is undeniable that the two marks are very similar. Does it seem likely that it will cause confusion among consumers? That is a question to which I am uncertain of the answer. There are some distinctions in the two marks that, for me, would make it an unlikely cause for confusion. I can hardly imagine myself buying a Roc Nation product under the impression that it was actually a product of Volcom. However, to the uninformed or unsuspecting eye, there may be room for confusion.