Roc-Nation Fires Back Against Licensing Lawsuit
By Ryan Velez
Most people are thinking of the World Series when it comes to MLB baseball at the moment, but The Hollywood Reporter says that Jay-Z and his Roc Nation brand likely have something else in mind, as they are counter-suing in a lawsuit over special edition baseball caps.
Iconix Brand Group sued Roc Nation, Shawn Carter (aka Jay-Z), New Era, Major League Baseball Properties and others in May, claiming in 2007 it paid $204 million for certain Roc Nation intellectual property and a specialty line of hats undermines that deal. On Friday, Roc Nation Apparel Group took another step, not only denying wrongdoing and leveraging over half a dozen affirmative defenses, but also counter-suing Iconix for breach of implied licensing.
RNAG attorney Andrew Bart points out that this may stem from some confusion in the past. Rocawear Licensing sold the Rocawear business to Iconix in 2007. However, Roc Nation wasn’t founded until the following year, putting in question whether or not it is included in the asset purchase agreement.
"[I]n 2013 Plaintiffs wrongfully took the position that the APA had conveyed to them the right to sell apparel under the ROC NATION mark," writes Bart, adding that a 2013 consent agreement gave plaintiffs the ability to use and register the mark for "limited categories of goods including apparel subject to Roc Nation’s control over the quality of the goods produced under the ROC NATION mark as well as other conditions and limitations."
According to Bart, another 2013 allows RNAG an exclusive license to use its mark for “licensed products” ranging from apparel to footwear and headwear.
"Since RNAG does not own or operate manufacturing facilities directly, Section 10(i) of the License expressly authorized RNAG to seek out and engage third-party manufacturers to produce Licensed Products, provided that such third-party manufacturers signed a Manufacturer’s Agreement," writes Bart. When that license expired, he argues, the parties were actively discussing the terms of a new deal and RNAG continued operations under an implied license "to ensure that ROC NATION-branded apparel remained available to the existing customer base pending the parties’ restructuring of their business relationship."
Jay-Z, born Shawn Carter, has been asked to be dismissed from the lawsuit. "Despite its length, the Complaint lacks any allegations that describe Mr. Carter’s purported involvement in the alleged infringement and anticompetitive behavior," writes attorney Jordan Siev. "[U]nder well-established New York law, a person’s mere status as an owner, officer, or director of a company, without more, is an insufficient basis to hold him individually liable for actions taken by the company. Plaintiffs’ attempt to use Mr. Carter and his celebrity status to advance their claims is improper and should not be tolerated."