Atlanta, recently dubbed hip-hop’s “center of gravity,” is now also the epicenter of a trademark lawsuit involving rights to the mark Playaz Circle®. On defense are not only Island Def Jam Music Group (“Def Jam”), but also Disturbing Tha Peace Recordings, Inc., the record label co-founded by rapper Christopher “Ludacris” Bridges and based in East Point, Georgia.
On August 30, 2012, plaintiff Torrey Cook filed an action against Def Jam and Distrubing Tha Peace for trademark infringement and trademark dilution, among other counts. The complaint, filed in the Atlanta Division of the U.S. District Court for the Northern District of Georgia, also recites related Georgia law counts against those defendants and requests attorneys’ fees, among other relief.
The complaint identifies U.S. Trademark Registration No. 3,040,763, for the trademark Playaz Circle® for “musical sound recordings [and] pre-recorded CD’s featuring music.” That registration, which issued on January 10, 2006, recites a filing date of September 23, 2004 and a first use date in commerce of March 1999. Current USPTO records name Mr. Cook as the owner of that registration.
Mr. Cook asserts that he used the trademark for “distributions of compilations” and for providing agent services for musical artists since 1995. In or around 2004, according to the complaint, Mr. Cook worked with Tauheed Epps and Earl Conyers and “allowed them to be part of one of his compilations,” but specified “that the name Playaz Circle was trademarked and that it belonged exclusively to him.”
According to the complaint, Def Jam and Disturbing Tha Peace released recordings of a group called Playaz Circle in October 2007 and September 2009, that group including Messrs. Epps and Conyers. One of the 2007 recordings was an album titled “Supply & Demand,” and the 2009 recording was an album titled “Flight 360: The Takeoff
.” Mr. Epps is now a Def Jam solo rap artist known as “2Chainz
.” The complaint further alleges that following contact by Mr. Cook’s former counsel, the defendants indicated in June 2008 that they would accept a licensing arrangement proposed by Mr. Cook, but that they never executed the licensing agreement, and that multiple follow-up attempts to reach defendants went unanswered. The complaint alleges that both Mr. Cook and defendants continue to use the trademark.
Mr. Cook’s complaint asserts counts against defendants for trademark infringement under the Lanham Act and common law, trademark dilution-by-blurring, violation of the Georgia Uniform Deceptive Trade Practices Act, and litigation expenses, including attorneys’ fees under both federal and Georgia laws. The complaint also seeks an award of defendants’ profits and actual damages, as well as injunctive relief, and requests that the monetary award be tripled under the Lanham Act due to alleged willful infringement.
Trademark dilution-by-blurring “occurs when consumers form new and different associations with the plaintiff’s mark.” “For example, Tylenol snowboards, Netscape sex shops and Harry Potter dry cleaners would all weaken the ‘commercial magnetism’ of these marks and diminish their ability to evoke their original associations.”
Under the Lanham Act, a dilution action may be maintained only for “famous” trademarks.
To illustrate, the Northern District of Georgia denied a motion for preliminary injunction based on a dilution action where, the court observed, “Plaintiff’s mark certainly does not rise to the level of marks such as Exxon, Kodak, and Coca-Cola which have been found to be generally famous.”
Mr. Cook’s claim for litigation expenses under Georgia law is governed by § 13-6-11 of the Official Code of Georgia. The purpose of this statute is to punish a party who has acted in bad faith. “Generally, only plaintiffs may recover under this statute, and such recovery is available only upon a showing that the defendant’s bad faith conduct forced the plaintiff into prosecuting the suit.” However, the statute also authorizes recovery for stubborn litigiousness where there is “no bona fide controversy or dispute regarding the underlying cause of action.” Mr. Cook alleges that the defendants “have acted in bad faith, been stubbornly litigious, and caused [him] unnecessary expense.”
The case is Torrey Cook v. The Island Def Jam Music Group, a Division of Universal Music Group, Inc., and Disturbing Tha Peace Recordings, Inc., No. 1:12-cv-3026, U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Charles A. Pannell, Jr.
Golden Bear Int’l, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 749 (N.D. Ga. 1996).
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