Source : Perth Now news
An Australian beach lifestyle brand Swim Shady has won a trademark battle against US rapper Eminem despite his opposition.
US rapper Eminem, or Marshall Mathers, challenged the business to stop using the brand name Swim Shady claiming it was too similar to his alter ego, Slim Shady.
The beach lifestyle brand was launched by co-founders Jeremy Scott and Elizabeth Afrakoff in 2024.
They filed their trademark Swim Shady in 2024, but it was opposed by Eminem months later who registered the trademarks Shady and Shady Limited in Australia 12 years earlier.
Eminem’s lawyers argued that the rapper, who has sold more than 200 million albums since 1996, used the word “Shady” to promote his music, fashion labels and Nike shoes called “Shady Air.”
But the Delegate of the Registrar of Trade Marks Benjamin Goldsworthy found Eminem’s reputation as a performer, and his alter ego “Slim Shady” was higher than the trademarks registered to clothing and footwear.
He pared back Eminem’s use of Shady and Shady Limited from clothing, umbrellas and merchandise and found the term “Slim Shady” was mostly used in song titles, album names, art or lyrics as a persona of Eminem rather than for goods.
“I accept that ‘Shady’ has been used to refer to the Opponent as a performer,” he said.
“The extent of use of signs containing the word ‘Shady’ in relation to the Registered Goods is relatively low.”
Mr Goldworthy ruled that the Shady and Shady Limited trademark be limited to exclude certain goods.
Eminem was ordered to pay costs.
Mr Scott and Ms Afrakoff welcomed the outcome and said they were delighted with the decision.
“We’re grateful for the careful consideration the Delegate has given to the evidence and are extremely pleased with the outcome,” Mr Scott said.
“While this is an important milestone for Swim Shady, it is one step in the broader trade mark proceedings, and we recognise there are still matters to be resolved.”
It’s not the first time Mathers has brought proceedings to protect his brand and music catalogue.
In 2017, he successfully sued the New Zealand National Party for copyright infringement over an election advertisement.
The New Zealand High Court found that the National Party infringed the copyright in Eminem’s 2003 Oscar-winning hit ‘Lose Yourself” through its use of a musical work tellingly-titled Eminem Esque, that played in the background of the ad.
The court ordered the party to pay $600,000 in damages.
