On December 2, 2005, wrestler Diamond Dallas Page (DDP) filed a Complaint, based largely on trademark infringement, against hip-hop mogul Jay-Z over Jay-Z’s use of the Dynasty hand gesture, which closely resembles DDP’s Diamond Cutter hand gesture. So we examine—does DDP have a winning case for trademark infringement against Jay-Z?
Is the Diamond Cutter A Valid Trademark?
First, we must look at the subject of DDP’s claims, his Diamond Cutter hand gesture, to see if it is a valid trademark. It is, first, important to note that even if DDP has not registered the Diamond Cutter as a trademark, the sign may still garner trademark protection if certain conditions are met.
In trademark law, the Diamond Cutter can be classified as a symbol that uses a geometric shape, a diamond, in an attempt to commercially market and identify its source, DDP. Traditionally, ordinary geometric shapes such as circles, ovals, and squares are considered non-distinctive; they are protectable only upon a showing by DDP of secondary meaning. However, uncommon or unusual shapes or symbols can be regarded as inherently distinctive and, thus, protectable.
Here, the diamond cutter symbol is based on the formation of a diamond shape using one’s thumbs and index fingers. Although the diamond cutter gesture does feature one’s remaining fingers in a spread out fashion, it is questionable at best whether this slight difference would bring the gesture out of the realm of common shape or symbol into that of an uncommon shape.
Furthermore, similar symbols, such as national sorority Delta Sigma Theta’s Greek letter “delta” hand gesture, existed in the public domain long before DDP’s Diamond Cutter. These above factors indicate that the Diamond Cutter’s shape is likely too common to be inherently distinctive.
Secondary Meaning
Having determined that the Diamond Cutter would most likely be found to be a common shape or symbol, we move on to the matter of secondary meaning. There is no steadfast standard to establish secondary meaning. However, secondary meaning has often been classified in the following manner:
It contemplates that a word, phrase, or symbol originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market . . . might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trademark.
G. & C. Merriam Co. v. Saalfield, 198 F. 369 (6th Cir. 1912).
A plaintiff can rely on both direct evidence—such as expert consumer surveys, testimony of buyer’s state of mind, and evidence of copying—and circumstantial evidence—such as the amount and nature of advertising of the mark, the length of time the mark has been in use, and sales under the mark—to prove secondary meaning. Traditionally, the strongest and most effective form of evidence available to a plaintiff is an expert consumer survey. However, circumstantial evidence alone may suffice to show secondary meaning in limited circumstances.
In the case at issue, the Diamond Cutter is fairly common: so, the evidentiary burden on DDP to show secondary meaning is high, but not insurmountable.
In his complaint, DDP claims, regarding the Diamond Cutter, that (1) in every wrestling match, he flashed it immediately prior to executing his signature move, much to the delight of fans, who then acted in kind by mimicking the sign with their hands; (2) he used it in appearances broadcast to millions of viewers worldwide; (3) athletes and celebrities in the entertainment industry used the sign to pay homage to DDP (e.g., Karl Malone in game 6 of the 1998 NBA finals, Herschel Walker after scoring a touchdown, and Jay Leno in a public appearance); and (4) use of the sign has since expanded its application to DDP’s acting, inspirational speaking, health and fitness instructing, and authorship.
It appears likely that amongst the professional wrestling fan base, the Diamond Cutter hand gesture is predominantly recognizable as DDP’s identifier. However, in other demographics, most notably the hip-hop community, buyers might recognize the sign as that of Jay-Z, Delta Sigma Theta, or perhaps another source.
Therefore, although DDP has evidenced a few specific instances as to the notoriety of his sign, he would be well served to conduct and present an expert survey showing that a substantial number of prospective buyers associate the mark with only DDP.
Additionally, DDP can present circumstantial evidence, such as actual sales of books, services, and other merchandise associated with the Diamond Cutter, as well as the symbol’s length of use, related promotional and advertising costs, and wide exposure, as have been briefly hinted at in the complaint.
If a survey had been conducted in the mid to late 1990s, in light of the crossover popularity of professional wrestling into mainstream entertainment at that time, DDP and his Diamond Cutter most likely would have shown that his move thoroughly saturated the consumer market so as to acquire secondary meaning in the eyes of the general public.
However, due to his and wrestling’s decline in popularity over the past several years, a survey may not produce results in DDP’s favor. In which case, DDP would have to rely heavily on circumstantial evidence to prove secondary meaning. Establishing secondary meaning might not be impossible, but one would think DDP would have to come up with more specific and recent instances of notoriety than were mentioned in the complaint.
Perhaps, though, DDP’s recently published instructional guide entitled, Yoga For Regular Guys, which features the Diamond Cutter as one of the exercises, would suffice. Also helpful would be evidence that Jay-Z intentionally copied the Diamond Cutter sign.
Does DDP Have Priority In the Mark?
Assuming arguendo, the fact finders are wrestling fans and the Diamond Cutter is found to have secondary meaning, does DDP have priority in the mark?
The answer to this question is likely yes. Even though the Diamond Cutter is similar to the Delta Sigma Theta sign, which dates back to 1913, it has sufficiently different shape—diamond v. triangle—and finger positioning—three fingers spread v. all fingers connected—so as to be considered distinct. A fortiori, Sigma Delta Theta is a non-profit organization, and use in commerce is essential to trademark protection.
Has DDP’s Mark Been Infringed?
The next issue is infringement. If the Diamond Cutter is in fact a valid trademark, did Jay-Z infringe his mark? For an infringement action to succeed, there must be use of the trademark in commerce and a likelihood of confusion caused by the defendant.
Commercial Use
First, before addressing likelihood of confusion, Jay-Z’s use of his Dynasty symbol, has definitely been used in commerce, given its use on various projects over his career including music videos such as “Encore” and “Diamonds,” the cover of “The Dynasty Roc La Familia 2000,” the movie poster for “Jay-Z: Fade to Black,” numerous magazine photographs, and other promotion related materials.
Likelihood of Confusion
Turning to likelihood of confusion, we consider the Ninth Circuit multi-factor test. This test, as have other similar federal circuit tests, evolved from the 1938 Restatement of Torts §731, which set out nine foundational factors to be considered in determining likelihood of confusion.
The 9th Circuit test addresses 8 factors, all of which carry equal value and are to be balanced in arriving at a final determination: (1) strength of the mark, (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care exercised by purchaser; (7) defendant’s intent in selecting mark; and (8) likelihood of expansion of the product lines.
The first factor is strength of the mark. Because the Diamond Cutter is a simple geometric shape without significant variation, and its distinctiveness is undoubtedly in question, it is a very weak mark at best.
Second, we look at the proximity of the goods. Professional Wrestling and Hip-Hop music are both forms of entertainment. DDP’s consumer base is made, largely, up of professional wrestling fans, mostly white males between the ages of 15-40. Jay-Z’s base is made up of hip-hop consumers, mostly males between the ages of 15-40. With the recent mainstream embrace of hip-hop culture, Jay-Z’s consumer base likely carries over into DDP’s wrestling base. Because an argument can be made that the goods are proximate via entertainment and the average consumer, DDP may have a slight edge on this factor.
The third factor is the similarity of the marks. The Diamond Cutter is a diamond shape made with the thumb and index fingers, coupled by a spreading-out of the remaining fingers. Jay-Z’s Dynasty symbol, however, forms a wider, almost triangular, diamond with his thumbs and index fingers. Furthermore, remaining fingers are not spread out and are configured in a distinctive, tighter manner unlike that of the Diamond Cutter. (see photo). Granted, the marks are similar; but there are noticeable differences. This factor would weigh slightly in DDP’s favor.
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Fourth, is there actual confusion between the marks? DDP has presented some anecdotal evidence as to specific situations of confusion but would be best served by conducting a consumer survey. Although I do not believe a survey will show an overwhelming confusion with DDP, there may be enough confusion amongst the wrestling population to show actual confusion. This factor is likely a wash, pending the results of a consumer survey.
Fifth, what is the degree of purchaser care associated with the consumption of the two items? Here, both wrestling fans and hip-hop fans are knowledgeable and particular when it comes to purchasing merchandise, and the two entertainment realms are rather disjunctive. There is most likely a high degree of care, and it would be relatively difficult to confuse the purchaser.
Furthermore, there is the issue of intent. Jay-Z is a brilliant musical artist and entrepreneur, having accumulated significant goodwill in the music and entertainment industry over the past decade. It seems to counter his persona’s best interest to intend to take the sign of a retired professional wrestler in attempt to free ride on DDP’s comparatively weaker goodwill.
Therefore, this factor favors Jay-Z. Finally, marketing channels and the likelihood of expansion favor DDP in that Jay-Z will undoubtedly continue to use his symbol and may well expand its promotion through similar marketing channels as that of DDP, including television, magazines, print, word-of-mouth, etc.
Looking at the above factors, the very weak strength of DDP’s Diamond Cutter outweighs any slight favoritism the other factors may give to DDP such as the similarities between the marks and the proximity of the goods. Furthermore, there is a general lack of evidence showing intent on the part of Jay-Z, and actual confusion will be difficult to prove. Thus, it seems the multi-factor balancing test would weigh in favor of Jay-Z.
Initial Interest Confusion
If DDP does fail to prove a likelihood of confusion exists via the multi-factor test, DDP may want to pursue an initial interest confusion action—that consumers are initially confused by the Jay-Z mark upon first glance, even though they are able to distinguish it from the Diamond Cutter prior to purchase. This doctrine has been applied by a few courts, but is not an argument upon which DDP should rely unless compelled to do so.
Trademark Dilution
Trademark dilution is another claim that DDP can pursue. In the event the Diamond Cutter is proven to be famous and distinctive (via secondary meaning), the dilution analysis will hinge on whether Jay-Z’s use of his symbol has blurred or tarnished DDP’s mark.
In the past, DDP would have to show actual dilution of his mark to assert a winning claim—a tall order indeed. Currently, there is a question as to whether actual dilution is necessary to prove dilution. In any event, if DDP is unable to prove infringement, there is little chance he would be able to convince a court that his mark has been blurred or tarnished by a man, like Jay-Z, who already possesses an immeasurable amount of good will.
Jay-Z’s Possible Defenses
In the narrow chance DDP proves that Jay-Z has infringed his mark, without further information as to the facts of the case, defenses available to Jay-Z such as nominative or descriptive fair use, or functionality, do not seem helpful. Jay-Z could argue the Diamond Cutter is generic or that he has a license to use it, but those arguments also seem lacking, assuming that secondary meaning is proven and DDP has not licensed it and he has taken care of his mark.
In Conclusion
For these reasons, Jay-Z will most likely not be found guilty of trademark infringement because DDP’s Diamond Cutter is a very weak trademark at best. Further, even though Jay-Z has used his somewhat similar Dynasty symbol in commerce, a court would most likely find that there is insufficient evidence to show a likelihood of confusion.
