Judge Cracks Down on Misuse of Late DJ's Name
ATLANTA (CN) - An event organizer cannot trademark an event that exploits the "Jack the Rapper" alias of a late radio personality famous in Atlanta's radio and music industry.
Jack Gibson, who died in 2000, developed the "Jack the Rapper" radio personality alias in the late 1940s. In addition to founding the National Association of Radio Announcers for Black Radio DJs, Gibson was the first national director of promotions and public relations for Motown Records, and he opened the first African-American-owned and -operated radio station in the United States.
Beginning in 1977, Gibson hosted an annual event for radio and music artists called "Jack the Rapper's Family Affairs Convention."
His representatives objected when they learned about plans for a series of unauthorized events in late 2012 called "The New Jack the Rapper Convention."
Billy Foster, the organizer of this convention, proceeded with his events and filed a trademark application for the title.
When Gibson's representatives sought a temporary restraining order, the parties reached a settlement in February 2013 that required Foster to pay the plaintiffs several thousand dollars and cancel the trademark application, among other things. After making the first $1,000 payment and covering some other expenses required under the settlement, Foster allegedly ignored his remaining obligations and held another "New Jack the Rapper Convention" event in New York City.
Gibson's representatives asserted claims for trademark infringement, unfair competition and infringement of the right to publicity, and then moved for summary judgment.
Foster did not respond, and U.S. District Judge Thomas Thrash granted the plaintiffs some relief Monday.
"'The New Jack the Rapper Convention' was likely to mislead consumers into believing that it was endorsed by those with the right to the mark 'Jack the Rapper,'" Thrash wrote. "Six out of the seven factors support finding a likelihood of confusion."
Although Thrash believes damages are appropriate, he declined to set the amounts requested by plaintiff because there is no evidence or record showing exact financial losses.
"The court will limit the injunction to the specified infringing acts," Thrash wrote. "Thus, the injunction should bar Foster from using the 'Jack the Rapper' mark, or causing the 'Jack the Rapper' mark to be used in connection with conventions catering to the radio and music industries as well as associated services and merchandise. Foster should also be required to withdraw the application he filed with the U.S. Patent and Trademark Office to register the mark, 'The New Jack the Rapper Convention.'"