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.

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 74^th Ave., Miami, Fla., 363 F.3d 1099, 1109 (11^th 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 (11^th 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.”

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.