Originally published on April 18, 2010 on EntertainmentLitigation.com
It’s the New York Yankees versus the Boston Red Sox, by proxy. Jay-Z’s 40/40 Club filed suit in the Southern District of New York against Boston Red Sox slugger David Ortiz, claiming that Ortiz’s use of “Forty Forty” to name a nightclub in the Dominican Republic violates the Lanham Act, the Trademark Dilution Act, the Anticybersquatting Consumer Protection Act, and various New York state laws. The case was filed by The Name, LLC, a Delaware company that owns the 40/40 trademark, against Ortiz and his company, D. Ortiz C. por A, an entity organized under the laws of the Dominican Republic. (The third defendant is Albania Ortiz, David’s sister).
The threshold question in this case will be whether US trademark laws may be applied extraterritorially to enjoin the conduct of foreign nationals occurring foreign soil and online. To answer that question, the district court will have to consider the three factors set forth in Vanity Fair Mills, Inc. v. T. Eaton Co.: whether (i) the defendants are American citizens; (ii) there is a substantial effect on US commerce; and (iii) there is a conflict between US law and the law of the Dominican Republic. See 234 F.2d 633 (2d Cir. 1956). If the plaintiff cannot establish at least two of these three factors in its favor, Ortiz and company would likely prevail. See Totalplan Corp. of America v. Colborne, 14 F.3d 824, 831 (2d Cir. 1994).
The defendants are citizens of the Dominican Republic, so the first factor won’t be in dispute. The Dominican Republic’s National Office of Industrial Property indicates that the defendants obtained a commercial name registration for FORTY FORTY on April 5, 2010. If the Ortiz’s can establish rights to the mark under Dominican law (and I have no idea if they can), it seems to me they’d have a fairly good shot at prevailing in Manhattan. Vanity Fair, 234 F.2d at 643 (“the remedies provided by the Lanham Act…should not be given extraterritorial application against foreign citizens acting under presumably valid trademarks in a foreign country.”). But the most hotly contested point is likely to be whether Big Papi’s use of FORTY FORTY to identify a nightclub in Santo Domingo has a “substantial” effect on US commerce.