Last week, the New York Times filed a lawsuit against Contessa Bourbon for causing substantial damage and injury to the paper’s business, goodwill and reputation. Despite having never worked for the Times, Contessa has been representing herself as one of their reporters – both in person, and on social media.
According to the lawsuit, Bourbon pretends to be a NYT reporter to gain access to press events: she recently interviewed US Education Secretary Betsy DeVos and the Turkish Ambassador under such pretenses. Despite receiving cease and desist letters from the Times previously, Bourbon continues her charade. She tweets about articles she claims to have written for the paper, and her profiles on Facebook, LinkedIn, and Instagram state that she is a NYT reporter.
However, with the exception of impersonating police officers or medical doctors (and in England, solicitors), simply pretending to be someone you’re not isn’t technically illegal. The problem impersonators and poseurs face is when they (almost inevitably) break laws concerning privacy matters, defamation, criminal fraud – or, in the NYT’s case – intellectual property.
Considered a “newspaper of record” by many, the New York Times relies on its global reputation. With 122 Pulitzer Prizes for journalism, it has more than any other newspaper. The paper claims that Contessa has harmed their impressive reputation, because her unprofessional conduct is inaccurately attributed to the NYT (known as “tarnishment”), and her presence creates confusion regarding genuine press coverage. The paper has therefore sued Contessa on the grounds of trade mark dilution.
A trade mark or ™ (“trademark” in American English) is a form of property right which serves to exclusively identify a product or service with a specific company. When put together, the words “The New York Times” (the registered trade mark) allow the public to distinguish the paper’s identity from any competitors. The first trade mark legislation was passed here in England in 1266, and required all bakers to use a distinctive mark (the “trade mark”) for their bread. In this way, breads made by the various bakers – each competing with each other – could be clearly differentiated.
But unlike ordinary trade mark law, trade mark dilution extends to uses of a particular trademark that does not confuse people in regards to who owns or made a product. After all, Bourbon is not claiming that a paper other than the Times is publishing her articles, nor is she acting in “competition” to the paper. Nevertheless, the Times considers that her behaviour is threatening the association the public may have with their established and officially registered trademark.
The nearest English equivalent to the American concept of trade mark dilution is “passing off.” To successfully prove passing off has occurred, the claimant’s goods or services must have a reputation or goodwill associated with them. Secondly, the defendant must have misrepresented (lied) in a way that is likely to lead the public to believe that the goods or services in question belong to the claimant. Thirdly, the claimant must demonstrate that the public’s erroneous belief brought about by the defendant’s misrepresentation has caused damage (see Reckitt & Colman Products Ltd v Borden UKHL 1990).
“A man is not to sell his own goods under the pretence that they are the goods of another man” (Perry v Truefitt (1842).
The Trade Mark Act 1994 also addresses taking undue advantage of reputable trade marks, or otherwise damaging someone else’s commercial magnetism. Additionally, at European Union level, the Trade Mark Directive (2008/95/EC) states, inter alia, that a Member State may in their domestic legislation entitle the owner of a trade mark to prevent others from using their trade mark in a way that “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
The paper has asked the court for a permanent injunction to be granted against Bourbon, plus a payment of their legal fees for pursuing the action. From a practical perspective, I feel this is an appropriate request. Reading Bourbon’s twitter feed, I can’t help but to question if mental health issues might be part of the picture: in the last few hours she’s tweeted several times that Angelina Jolie and 20th Century Fox are co-producing a “Queen Contessa Bourbon Memior Movie,” which will also be made into a Broadway Musical. She’s refusing to answer any questions about the law suit, dismissing the story as – you guessed it – fake news. Her emotional stability aside, one thing is clear: for the New Times, imitation in this instance is not the sort of flattery they want.