Will the real Slim Shady please stand up for their IP rights?

On December 15, 2023, Grammy Award-winning rapper Eminem filed a protective order opposing a request by ‘Real Housewives of Potomac’ stars Gizelle Bryant and Robyn Dixon to be deposed. This is only the latest development in a dispute that has spanned almost a year.

The protective order comes following Eminem’s February 2023 Opposition to the reality stars’ trademark application for REASONABLY SHADY. Bryant and Dixon have used this name for their podcast since its launch in May 2021.

Eminem has held the SHADY trademark registrations since July 10, 2001, for various goods and services, including entertainment services. He also holds several related trademark registrations, including but not limited to, SLIM SHADY, SHADY RECORDS, and SHADY LIMITED.

After the dispute entered the discovery phase, Bryant and Dixon filed a motion to compel Eminem’s deposition. He, in turn, filed the aforementioned protective order, relying on two primary arguments. First, he argued a deposition would be “unduly burdensome” given the rapper’s lack of involvement in trademark matters and busy schedule. He stated that his longtime personal manager, Paul Rosenberg, has at least equal and almost certainly superior knowledge of the relevant issues. Eminem also argued that he was never served with a notice of deposition, a procedural hurdle before the Board might consider a motion to compel. 

While Eminem surely has a tight schedule, he is unlikely to garner sympathy from the Trademark Trial and Appeal Board (TTAB). The TTAB is likely to side with Bryant and Dixon, who argue that nothing suggests Eminem’s manager was present in the substantive discussions or is aware of paperwork filings concerning his client’s trademark registration. They note in their filing that Eminem’s deposition would reveal “critical evidence related to [Eminem’s] marks including…image, mindset, and intentions” that Rosenberg alone could not provide. They add that Rosenberg “did not sign the registrations at issue and claim under oath that he is the exclusive owner of the registrations at issue.” The protective order has not yet been ruled on but has the potential to sway the odds and affect the outcome of the opposition if granted. 

Eminem’s opposition arises from his claim that REASONABLY SHADY is confusingly similar to his marks and that they are dilutive of them. Bryant and Dixon use shady in a more lighthearted way, connoting the sharing of gossip and encountering unpleasant circumstances. They “dive into [listeners’’] Reasonable or Shady emails and questions” so they might provide helpful advice. Eminem, on the other hand, uses Shady as a monicker to embody the persona that made his music famous. Bryant and Dixon will likely point to the numerous unassociated entities using that word for commercial purposes, like SHADY SOLES for shoes and SHADY SIDE for entertainment services. There is likely insufficient overlap to warrant a finding of consumer confusion. 

For his dilution claim, Eminem must demonstrate that his SHADY mark is not only famous but also that Bryant and Dixon’s use of REASONABLY SHADY dilutes the distinctiveness of his mark. Fame is a subjective question but is argued by the extent of advertising and recognition among consumers. Eminem is a household name, regardless of one’s music preferences. This, along with his 15 Grammys and countless other awards, makes him famous. But are his goods and services similarly famous? Has the Real Housewives’ fame surpassed his?

How’s that for shade?

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