Not Hap-YE: Kanye West issues cease and desist to small Melbourne business

Kanye not rapt

College Dropout Burgers, a burger restaurant and takeaway business in the north-eastern suburbs of Melbourne, has undergone a branding revamp after receiving a cease and desist letter from Kanye West’s legal team. In early June, College Dropout Burgers posted on its Instagram page to announce, “…the removal of all references to Ye (fka Kanye West), following the instructions and concerns from Ye, Mascotte Holdings Inc. along with his legal representatives”.

College Dropout Burgers, which opened in mid-2021, had centred its brand around the famous rapper with menu items named after his most famous songs (e.g. the ‘Gold Digger’ burger), a crowned bear logo inspired by the ‘Dropout Bear’ featured in several Kanye album covers and a mural of the rapper himself inside the premises. The business name itself is identical to the name of Kanye’s debut studio album which skyrocketed Kanye to fame.

According to The Age, the owner of College Dropout Burgers, Mark Elkhouri, had noticed that Kanye had been viewing the business’ Instagram stories which had Mr Elkhouri “…believe he was a fan of us”. Then the cease and desist letter arrived.

Where is the line between inspiration and infringement?

Another burger business, Down-N-Out (owned by Hashtag Burgers Pty Ltd), was involved in an intellectual property dispute with In-N-Out, which went all the way to the Federal Court of Australia (In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd [2020] FCA 193). In-N-Out initiated proceedings against Down-N-Out because ‘the inescapable inference is that the Down-N-Out name and logos were deliberately chosen in order to obtain the benefit of market recognition of the In-N-Out name, trade marks, and branding’ (para [123]). In response, Down-N-Out argued that it did not deliberately adopt the Down-N-Out trade mark to benefit from In-N-Out’s reputation, instead, it was ‘merely inspired’ by In-N-Out.

Justice Katzmann agreed with In-N-Out, that Down-N-Out had infringed on In-N-Out’s trade mark, its conduct was misleading and deceptive and it had passed off as In-N-Out’s to capitalise on its strong customer recognition in the takeaway burger market.

In coming to the decision, the Court considered the following key points:

• the ‘N-Out’ component of the business name was a distinctive feature of the ‘In-N-Out’ trade mark and was likely to mislead customers to believe that the two businesses were associated with one another;
• evidence that Down-N-Out deliberately tried to align its brand with In-N-Out to benefit from In-N-Out’s strong reputation. Down-N-Out gave instructions to a graphic designer to create a logo for its pop-up ‘Funk-N-Burgers’ event that looked like the ‘In-N-Out’ logo’;

• Down-N-Out repeatedly mentioned In-N-Out Burgers in its promotional material, for example, “… to kick off the new year we are bringing back the MOST POPULAR burger from last year … the In-N-Ou..*cough* I mean … Down-N-Out Burger – served ANIMAL STYLE…”;
• Down-N-Out’s menu was similar to In-N-Out’s menu and referenced In-N-Out’s famous ‘secret menu’ and ‘Animal Style’ and ‘Protein Style’ burgers;
• Down-N-Out took no action to dispel the possibility of confusion. It did not correct customers who commented on social media posts to question whether Down-N-Out was associated with In-N-Out; and
• it was not necessary for In-N-Out to operate a business in Australia. His Honour found that it was sufficient that In-N-Out had a reputation amongst consumers in Australia and this made it possible for Down-N-Out’s conduct to deceive consumers and damage In-N-Out’s reputation.

Take-away

Business owners considering taking inspiration from another business, brand or person should tread carefully and seek legal advice from the outset. Mr Elkhouri’s run in with Kanye, and Down-N-Out’s dispute with In-N-Out, are examples of celebrities and brands who will vigorously protect their reputation from being capitalised on by others. And it does not matter how small your business is – one burger store in the suburbs of Melbourne was noticed by a superstar rapper in America.

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This article in no way constitutes legal advice. It is general in nature and is the opinion of the authors only. You should seek legal advice tailored to your individual circumstances before acting on anything related to this article.