Bad Rap for The Little Homie

The Little Homie Pty Ltd (The Little Homie) is an Australian company that sells children’s books and clothing featuring references to famous rappers, rap lyrics and motifs.

One of its successful products is the children’s book “A B to Jay-Z” (the Book).
 
The Book takes the reader through the alphabet, referencing famous rappers along the way. For example, “Ss” refers to Snoop Dogg “sipping orange juice” (no gin this time).
 
The Book drew the attention of Mr Shawn Carter, better known as the world famous rapper “Jay-Z”.
 
Jay-Z took issue with the Book’s use of:

• his name;
• his likeness; and
• words adapted from his song “99 Problems”, being ““if you’re having alphabet problems I feel bad for you son, I got 99 problems but my ABCs ain’t one”.

Jay-Z owns the registered trade mark “JAY-Z” in Australia, in relation to music records, clothing and apparel.

He also filed a further trade mark application in July 2019 for “JAY-Z” in relation to (unsurprisingly) “books”. This application has been accepted, but is awaiting registration.
 
Jay-Z commenced proceedings against The Little Homie out of the Federal Court of Australia, alleging that The Little Homie had engaged in:

• trade mark infringement, in relation to use of the word “JAY-Z”;
• copyright infringement, for the adaptation of his lyrics; and
• misleading and deceptive conduct.

The Little Homie has stated that it will defend Jay-Z’s action.
 
If Jay-Z succeeds, he will likely seek the following relief:

• an injunction, preventing The Little Homie from continuing to use his name, likeness and lyrics;
• damages or an account of The Little Homie’s profits; and
• additional damages, as a result of the flagrancy of the alleged infringement.

Lavan comment

Although this case has only just commenced, it provides a valuable lesson for businesses to ensure that they consider whether their products infringe on another’s intellectual property.

The legal costs The Little Homie will incur in defending the proceedings (against a well-resourced Jay-Z) are likely to be significant.

Even if The Little Homie is successful, it is unlikely to recover the majority of its legal costs.

This situation could have been avoided by:

• seeking Jay-Z’s consent to use his name, lyrics and likeness;
• paying Jay-Z a licence fee to use his name, lyrics and likeness; or
• amending the contents of the Book, to mitigate the risk of infringement.

If you require advice or assistance in relation to intellectual property, do not hesitate to contact Iain Freeman or Andrew Sutton.