State Champ Radio trademarks
Condé Nast has reached a settlement to end a lawsuit against Drake and 21 Savage over their use of a fake Vogue magazine cover to promote their album Her Loss, Billboard has confirmed.
The agreement, first reported by the news site Semafor, includes a permanent injunction barring any further use of Condé Nast’s Vogue trademarks, as well as an undisclosed monetary payment from Drake and 21.
In an internal email independently obtained by Billboard, Condé Nast general counsel William Bowes said the company was “glad to put this matter behind us” but explained why the publishing giant had felt the need to file the lawsuit against the two rappers.
“As a creative company, we of course understand our brands may from time to time be referenced in other creative works,” Bowes wrote in the note. “In this instance, however, it was clear to us that Drake and 21 Savage leveraged Vogue’s reputation for their own commercial purposes and, in the process, confused audiences who trust Vogue as the authoritative voice on fashion and culture.”
Representatives for Drake, 21 Savage and Condé Nast all declined to comment.
The fake Vogue cover was part of a broader phony media blitz from the two stars, aimed at promoting the November launch of their album Her Loss. They also released a fake Saturday Night Live performance, teased a similar fake appearance on NPR’s Tiny Desk series and created an elaborate deepfake interview with Howard Stern.
NPR and Stern both publicly embraced the joke, but Condé Nast wasn’t laughing about the fake Vogue cover.
In a lawsuit filed Nov. 7 in Manhattan federal court, the publisher called the stunt a “flagrant infringement” of the company’s trademark rights, aimed at exploiting the “tremendous value that a cover feature in Vogue magazine carries” without actually securing that honor. Condé specifically pointed to Drake’s Instagram post teasing the fake cover story, in which he personally thanked famed Vogue editor Anna Wintour.
“Vogue magazine and its Editor-in-Chief Anna Wintour have had no involvement in Her Loss or its promotion, and have not endorsed it in any way,” the company’s lawyers wrote at the time. “Nor did Condé Nast authorize, much less support, the creation and widespread dissemination of a counterfeit issue of Vogue, or a counterfeit version of perhaps one of the most carefully curated covers in all of the publication business.”
Just days later, a federal judge largely agreed with Condé Nast, issuing a preliminary injunction forcing the stars to pull down all references to the fake Vogue cover. The judge said the faux cover likely violated the publisher’s trademarks by “misleading consumers” and “deceiving the public.”
In the internal letter announcing the settlement, Bowes said Condé Nast had repeatedly attempted to resolve the dispute without resorting to litigation but had been “left with no other option” after the superstars ignored their requests to stop.
“We have a fundamental duty to protect our IP when it’s clear that it’s being used without permission for something other than serving our audience,” Bowes wrote in the letter.
A formal notice of settlement has not yet been filed in the federal court overseeing the lawsuit.
For Machine Gun Kelly and Fox, the devil might be in the details.
Citing the name of Kelly’s 2019 album Hotel Diablo, lawyers for the superstar last week quietly launched a legal battle to block the television network from securing a trademark on the term “Diablo” — the name of a character on Fox’s animated sitcom HouseBroken.
Fox Media LLC applied to register the term as a trademark for selling a wide range of goods “in connection with an animated, dog-like character.” That was clearly a reference to “Diablo,” an anthropomorphic terrier voiced by Tony Hale on the hit animated show, which rolled out its second season earlier this month.
But in a case filed on Tuesday (Dec. 13) at the federal trademark office, lawyers for Kelly’s company Lace Up LLC argued that Fox’s trademark was “confusingly similar in overall commercial” to the term “Hotel Diablo,” meaning consumers might be duped into thinking that Kelly was somehow involved in the Fox merch.
Kelly’s lawyers appear to have filed the case because their own application, seeking to register “Hotel Diablo” as a trademark, was suspended earlier this year due to the existence of the Fox “Diablo” application.
Released on July 5, 2019, Hotel Diablo wasn’t as big a hit as Kelly’s more recent chart-topping albums Tickets To My Downfall and Mainstream Sellout, but it still reached No. 5 on the Billboard 200 and eventually spent 20 weeks on the chart.
In December 2020, Kelly’s Lace Up LLC applied at the U.S. Patent and Trademark Office to secure a trademark registration on the album name — a maneuver commonly used by major artists that makes it easier to sue over fake merch, online scammers and other brand infringements. Kelly’s company already owns such a registration for his “MGK” logo, and is currently seeking similar protection for “Machine Gun Kelly” itself as well as the name of his famous “Rap Devil” diss track and many other terms he claims as trademarks.
But in February, the USPTO suspended Lace Up’s application on the grounds that it might be confusingly similar to Fox “Diablo” application, which had been filed six months earlier in June 2020.
So last week, Kelly’s lawyers filed the current case at the Trademark Trial and Appeal Board, a court-like body within the USPTO where rival trademark owners can battle over who has better rights to a disputed name. They say the star has “priority of use” and that Fox’s application must be denied.
“Because of the similarity between the DIABLO Mark and the HOTEL DIABLO Mark, and because the goods covered under the DIABLO Application are related to the goods sold under the HOTEL DIABLO Mark, consumers are likely to be confused, mistaken, or deceived into believing that Applicant’s goods originate with Opposer or are in some way associated with or connected, sponsored, or authorized by Opposer,” Kelly’s lawyers wrote.
The filing of the case will initiate a lawsuit-like proceeding, in which Fox will have a chance to respond to defend its “Diablo” trademark and the board will ultimately issue a ruling. But many such disputes end with settlements, including with a simple agreement that the two brands can co-exist peacefully without confusing consumers.
An attorney for Kelly’s company and a rep for Fox did not immediately return a request for comment.
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