31 October 2017Trademarks

Jay-Z responds to IP lawsuit over baseball hats

US rapper Jay-Z and his companies including Roc Nation have reacted to a trademark infringement complaint filed earlier this year by countersuing for breach of licence.

WIPR  reported in May 2017 that brand management company Iconix Brand Group accused Jay-Z and his companies of “undermining” a deal made in 2007 by the sale of a range of hats.

The case was filed at the US District Court for the Southern District of New York.

Iconix claimed that in 2007 it acquired the ‘Roc Nation’ mark in class 25 as part of a deal in 2004 to acquire some of the IP rights from Rocawear Licensing, one of Jay-Z’s companies, for $204 million.

Iconix went on to say that a line of hats made by Jay-Z using the ‘Roc Nation’ mark infringed this.

On Friday, October 27, the Roc Nation Apparel Group replied and stated that Iconix had “wrongfully” presumed that it held the rights to the mark.

“The Roc Nation mark did not come into existence until a year after the asset purchase agreement (APA),” the complaint stated.

“Plaintiffs wrongfully took the position that the APA had conveyed to them the right to sell apparel under the Roc Nation mark.”

Roc Nation Apparel Group further claimed that the lawsuit was an attempt to damage business relations and that unlawful use of the ‘Roc Nation’ mark was wilful and therefore a breach of the 2004 licence.

It also counter-sued for damages for reputational harm, attorneys’ fees and lost goodwill.

Through his lawyer, Jay-Z also asked to be dismissed from the case, stating that “despite its length, the complaint lacks any allegations that describe Mr Carter’s purported involvement in the alleged infringement”.

Jay-Z’s real name is Shawn Carter.

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