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14 November 2019TrademarksSaman Javed

Jay-Z settles with Iconix Brand Group over ‘Roc Nation’ TM

Jay-Z has settled a long-running trademark dispute with clothing licencing company Iconix Brand Group related to transactions between the parties dating back to 2007.

In a filing yesterday, November 13, at the US District Court for the Southern District of New York, Iconix said the agreement settled all disputes between the parties, with neither side admitting wrongdoing.

Iconix has also agreed to sell some of its IP assets to Jay-Z’s entertainment agency, Roc Nation, for $15 million.

The dispute dates to 2017, when Iconix sued Jay-Z for infringing the ‘Roc Nation’ trademark. Iconix allegedly purchased the trademark from the rapper’s Rocawear clothing brand in 2007 for $204 million.

But Jay-Z’s Roc Nation Apparel company said that Iconix had “wrongfully” presumed that it owned the mark, which the rapper claimed was only created a year after the 2007 purchase.

In 2015, a settlement agreement was reached which stipulated that future disputes would be resolved by arbitration.

Nonetheless, Iconix sued for trademark infringement in 2017, claiming that the rapper’s Roc Nation line of baseball caps infringed its IP.

The settlement also resolves a private arbitration related to that sale.

In October 2018, Iconix commenced arbitration proceedings against Jay-Z, claiming that Jay-Z had breached certain obligations under the 2015 settlement agreement.

The rapper responded with a petition to stay the litigation with the Manhattan Supreme Court, saying that the lack of racial diversity on the American Arbitration Association (AAA) panel was discriminatory under New York’s State Constitution and New York City human rights law.

Jay-Z said that upon reviewing arbitrators on the AAA’s search platform, he was “confronted with a stark reality” that he couldn’t identify a single African-American arbitrator that had the background and experience to preside over the arbitration, said the petition.

The rapper claimed that the AAA’s failure to provide a selection of arbitrators that includes more than a “token number” of African-Americans renders the arbitration provision void as it is against public policy.

This was later resolved after the AAA “indicated an openness” to alter its selection process to allow for better consideration of African-American arbitrators.

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Trademarks
11 December 2018   US rapper Jay-Z has withdrawn his motion to stay IP arbitration with Iconix Brand Group after the American Arbitration Association agreed to increase its diversity.