Judge Thrash issued a ruling granting in part and denying in part the motion for summary judgment of plaintiffs (Jill Gibson Bell, et. al., hereinafter “Gibson Family”) against Billy Darren Foster (“Foster”) for trade mark infringement, trademark dilution, violation of rights of publicity and related claims.
Jack Gibson built a following as a DJ on WERD Radio in Atlanta under the name “Jack the Rapper.” He became the first National Director of Promotions and Public Relations for Motown Records, opened and operated the first Black radio station in the United States, and founded in 1977 and hosted until his death in 2000 an annual event for radio and music artists known as “Jack the Rapper’s Family Affairs Convention.”
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Foster contacted the Gibson Family in 2012 regarding a tribute to Jack Gibson. Once the Gibson Family learned that the events title would include their trademark “Jack the Rapper,” permission was refused. Despite objection, Foster held “The New Jack the Rapper Convention” in Atlanta from December 6, 2012 through December 8, 2012. Foster filed a trademark application for that name and advertised his next convention by the same name for Houston, Texas, in February 2013. Shortly before that convention, the Gibson Family filed for a temporary restraining order, which was settled for specified compensation and the withdrawal of the trademark application.
Foster failed to make all the payments required by the settlement, failed to withdraw the trademark registration application, and proceeded with another unauthorized use of the trademark for a convention in New York in April 2013. The Gibson Family filed suit, served requests for admissions (to which no response was made), and then filed a motion for summary judgment. Foster failed to respond to the motion for summary judgment. Judge Thrash noted that “The Court ‘cannot base the entry of summary judgment on the mere fact that the motion was unopposed, but, rather, must consider the merits of the motion,” quoting United States v. One Piece of Real Prop. Located at 5800 SW 74th Ave., Miami, Fla., 363 F.3d 1099, 1109 (11th Cir. 2004). The Court observed that the same standard governed trademark infringement and unfair competition under Georgia law as under the Lanham Act, Section 1125(a). Judge Thrash found that of the four categories of trademark distinctiveness (generic, descriptive, suggestive, and arbitrary or fanciful), the “Jack the Rapper” mark was at least suggestive. He further reviewed the seven factors used to evaluate infringement: (1) strength of mark; (2) similarity of marks; (3) similarity of goods and services; (4) similarities between sales methods; (5) similarity of advertising methods; (6) intent; and (7) actual confusion. Welding Services, Inc. v. Forman, 509 F.3d 1351, 1361 (11th Cir. 2007). The Court found all factors favored the Gibson Family except actual confusion which was not evidenced. The Court had more trouble with the damage claims, which were extrapolated the Houston convention or consisted of unsupported opinion. Although the attorney fees requested were granted, Judge Thrash pointed out the request for punitive damages was without statutory support. The Count found that the injunctive relief requested by the Gibson Family was too broad, but he crafted a less-broad easy to understand prohibition into the order. On the issue of dilution, the Court found the mark to be a distinctive famous mark even though it was not registered, that Foster began use of the mark after it became famous, and Foster’s use was likely to case “dilution by blurring” or “dilution by tarnishment.”
Finally, the Court found as a matter of law that Foster had violated the Gibson Family’s right of publicity under Georgia law, citing Martin Luther King, Jr. Ctr. For Soc. Change v. American Heritage Products, Inc., 250 Ga. 135, 143 (1982) (misappropriation of name and likeness without consent for financial gain);Id. at 145 (right of publicity is inheritable).
The case is Jill Gibson Bell v. Billy Darren Foster, Docket no. 42, decided December 2, 2013, in 1:13-cv-00405-TWT, in the United States District Court for the Northern District of Georgia, Atlanta Division, assigned to Judge Thomas W. Thrash.