Bell v. Foster, No. 1:13–CV–405–TWT, 2013 WL 6229174 (N.D. Ga. Dec. 2, 2013).
A Georgia district court granted summary judgment to the plaintiff, estate of Jack Gibson, in a trademark infringement action, holding that the defendant is permanently enjoined from using the mark JACK THE RAPPER.
Jack Gibson was well known as the radio personality “Jack the Rapper” from the late 1940s until his death in 2000. Gibson founded the National Association of Radio Announcers for Black Radio DJs and was the first National Director of Promotions and Public Relations for Motown Records. After his death, Gibson’s heirs and licensees have continued to promote his “Jack the Rapper” alias.
The present conflict relates to an event called “Jack the Rapper’s Family Affairs Convention” which Gibson hosted annually for radio and music artists during the last 20 years of his life.
The defendant Billy Foster emailed a representative of the Gibson estate expressing his interest in doing a tribute to Jack Gibson and using Gibson’s alias “Jack the Rapper” in the event’s title. The plaintiff objected to the defendant’s plans and did not give the defendant permission to move forward with the tribute.
Despite the plaintiff’s objections, the defendant Foster, in concert with the other defendants in this action, hosted a series of events in different cities under the name “The New Jack the Rapper Convention.” These events also targeted radio and music artists. Additionally, after hosting the first convention the defendant filed a federal trademark application for THE NEW JACK THE RAPPER CONVENTION.
Before the defendant hosted the second convention, the plaintiff filed suit asserting several claims including trademark infringement, dilution, and violation of Gibson’s right of publicity. The plaintiff also sought a temporary restraining order to enjoin the convention. Shortly thereafter, the parties entered into a settlement agreement that included the plaintiff giving the defendant permission to host the second convention provided that the defendant agree to withdraw the federal trademark application and enter into a licensing agreement with the plaintiff. However, the defendant did not comply with these terms and continued to host the third convention without the plaintiff’s permission.
On the plaintiff’s motion for summary judgment, the Georgia district court held that the plaintiff had a proprietary right in the mark JACK THE RAPPER, the mark is distinctive and entitled to trademark protection, and the plaintiff had established a likelihood of confusion. The court issued an injunction against further infringing uses of the mark by the defendant and ordered the defendant to cancel his application for registration of the mark THE NEW JACK THE RAPPER CONVENTION. The court also awarded the plaintiff attorney’s fees in light of the defendant’s deliberate infringement. Additionally, the plaintiff won on their other claims of trademark dilution and violation of Gibson’s right of publicity, making this decision music to the plaintiff’s ears.