iWho was “Jack the Rapper”? Answering that question requires a glimpse into a part of Atlanta’s history. Recent use of that name precipitated a trademark lawsuit and a motion for a temporary restraining order (“TRO”). However, the lawsuit may be short-lived, as an early exchange of settlement terms prompted withdrawal of that TRO motion.
Historical Backdrop
In 1949, now-defunct Atlanta radio station WERD “became the first radio station in America to be owned by an African American,” according to Georgiaencyclopedia.com. That source states that veteran disc jockey Jack Gibson was hired and became “a popular on-air personality, perhaps the city’s leading disc jockey at the time.” A February 14, 1993 article in the Orlando Sentinel states: “Gibson spun rhythm and blues by [R&B] artists such as Big Joe Turner and the Drifters.” That article referred to Gibson as “radio pioneer and one of the black entertainment industry[’]s national treasures.”
In the early 1960’s, further explains the Orlando Sentinel, “Gibson joined Motown Records and helped launch the careers of the Supremes, the Temptations, Marvin Gaye, Stevie Wonder and the Jackson 5. In 1976, Gibson started Jack the Rapper, a weekly magazine dedicated to radio, records and rap.”[1]
A February 2000 post on the site daveyd.com titled “Jack the Rapper: the Father of Black Radio” discussed more of Gibson’s work: “Jack The Rapper within modern day Hip Hop is best known for his music convention. It was considered to be the first music convention and it was soon the template for the numerous others that followed. Everyone who was anyone went to Jack The Rapper during the early 90s.” That piece was a retrospective, as Gibson had passed away shortly before its publication.[2]
That convention brings us to the subject of a new trademark case filed in the U.S. District Court for the Northern District of Georgia.
The Estate's Complaint and Surrounding Facts
A complaint filed on February 6, 2013 by Elise H. Gibson, as administrator of Mr. Gibson’s estate (“the Estate”), further characterizes that convention: “Gibson started the internationally renowned Jack the Rapper music convention in 1977, and, by the early 1990’s, it had become the preeminent conference for music business executives and artists in the hip hop genre.”
The complaint asserts that “Jack the Rapper’s name and associated trademarks, trade name, trade dress, [and] slogans, have tremendous commercial value, particularly in the music and radio industry,” and indicates that the Estate applied for federal and state trademark registrations. However, at the time of this writing, the only federal application found online was Serial No. 85787701 (“the ’701 Application”) for the mark THE NEW JACK THE RAPPER CONVENTION, filed on November 27, 2012 by Mr. Darren Foster, identified in that application as an individual with an Atlanta address. The ’701 Application recites a date of first use in commerce of May 1, 2012. The application also recites the website “www.thenewjacktherapperconvention.com”; however, the site presently functioning is http://thenewjacktherapper.eventbrite.com/. The home page of that site lists event dates from February 13-17, 2013 and bears the official logo for the 2013 NBA All-Star Game played in Houston, Texas on February 17.
Also identified in that web page is the Twitter handle “@newjackdarapper” that, when searched on Twitter, leads one to the Twitter page https://twitter.com/newjackdarapper. Thus, the organizers of the new convention have substituted “da” for “the” in the Twitter name. Notably, that Twitter page refers not only to the Houston events, but also to a “New York City Edition,” referred to as “Pt. 3,” reciting the dates of April 19-23, 2013.
The Estate charges Mr. Foster, along with Steve Riley and Rimm Global Media Corporation (collectively, “Defendants”) with willful trademark, trade name, and trade dress infringement (Lanham Act § 43(a)), alleging that their usages of Jack the Rapper marks were without the Estate’s permission and “with knowledge of Plaintiff’s prior right to and use of Plaintiff’s trademarks, and with the willful intent to trade on Jack the Rapper’s goodwill and reputation.”
The Houston event apparently was not the first one touting the “New Jack the Rapper Convention” mark; the first one using that name was apparently held here in Atlanta, as stated in the complaint: “Plaintiff has recently learned that Defendants created, marketed, hosted and held a conference called ‘The New Jack The Rapper Conventionon’ December 6 through December 8, 2012 in Atlanta, Georgia.” (Complaint at ¶ 21). The site conferencehound.com contains an entry that states, in part:
B.B.A ENTERTAINMENT PRESENTS THE MUSIC, FASHION, LIFESTYLE & FILM CONFERENCE 2012 AKA “THE NEW JACK THE RAPPER CONVENTION” AT THE ATLANTA CONVENTION CENTER IN ATLANTA, GEORGIA. DEC 6,7,8TH 2012 Ladies and Gentlemen Greetings, Those of you who remembers [sic] “The Original Jack The Rapper Convention” and what it meant to the Urban Entertainment Industries, then you fully understand the need for reigniting that spark and establishing our place within the Urban music, Fashion, & Film Marketplace. . . . . We would like to see that the Lifeline of our Urban Entertainment Industries remain intact by requesting your support in sponsoring this major event. With your help we can ensure that we position ourselves as an organization that will help uplift our Urban Brands and Businesses.A concentrated effort provided by an event such as this will prove success towards the positive shift of the Urban Entertainment Industry. Please see the Sponsorship Packages Attached: Thank you for your support. For more information, please contact “Steve Riley”- Conference Director [reciting contact data].
Other counts in the complaint comprise dilution (Lanham Act § 43(c)), common law trademark infringement, unfair competition, and violation of the right of publicity under Georgia law.[3] The complaint requests injunctive and monetary relief, including attorneys’ fees.
Stipulation of Settlement: Case Still Alive But Perhaps Not for Much Longer
A TRO motion accompanied the filing of the complaint. Just two days later, on February 8, 2013, the parties agreed to certain terms of settlement, which prompted the Estate to withdraw the TRO motion without prejudice.
In a handwritten Stipulation of Settlement, the parties set forth several terms of agreement, including but not limited to the following:
- Defendants shall deliver a certified check for the sum of $1,000 payable to Jill Gibson Bell, c/o the Estate’s litigation counsel on February 11, 2013.
- Defendants shall hand-deliver of certified check for the sum of $5,000 to Ms. Bell, or to her designee, in Houston, Texas, on or before 5:00 p.m. on February 16, 2013.
- Defendant shall reimburse a designee of the Estate, who will represent the Estate at the Houston event, for air fare and hotel accommodations in connection with that event, in an amount not to exceed $1,000.
- Defendant shall provide the Estate “unrestricted access to all of their books and records with respect to the Houston, TX event to provide for accounting due diligence, transparency, and full disclosure.”
- Regarding the Houston event, Defendants will pay the Estate, as a license fee, 10% “of the gross registration fees and sponsorship requests paid to the Defendants and/or their corporate affiliates.”
- The parties will agree to “discuss in good faith the terms for a licensing agreement pursuant to which Plaintiffs will grant to Defendants or their designee the right to use the mark Jack The Rapper for events.”
- Defendants will withdraw the ’701 Application upon execution of the licensing agreement.
It therefore appears that the parties are in the midst of negotiating details of a trademark licensing agreement, and that finalization of such an agreement would result in a settlement of all issues in the case.
The case is Elise H. Gibson, as administrator of the Estate Of Jack Gibson v. Steve Riley, Billy Darren Foster, and Rimm Global Media Corporation, No. 1:13-cv-0405, filed 02/06/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Thomas W. Thrash, Jr.
[1] The complaint filed in this litigation refers to the magazine more specifically as “Jack the Rapper Mello Yello.”
[2] More background information concerning Jack the Rapper appears on this PowerPoint presentation uploaded to SlideShare.net.
[3] Regarding the last cause of action, a federal court in Georgia recently stated: “[R]ight of publicity claims under state law are uniquely grounded in an individual's right to privacy and/or an individual's property right to control third-party use of their persona.” Bogart, LLC v. Ashley Furniture Indus., Inc., No. 3:10-cv-39 (CDL), 2012 U.S. Dist. LEXIS 121787, at *36-*37 (M.D. Ga. Aug. 28, 2012). “Notably, the Eleventh Circuit has permitted such state law claims to proceed simultaneously with claims under the Lanham Act for trademark infringement.” Id. at *37 (citing Tana v. Dantanna's, 611 F.3d 767, 772 & 783 (11th Cir. 2010)).
