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While the Los Angeles Dodgers are battling to win the World Series, Jay-Z’s Roc Nation is swinging for the fences 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.
In a Friday filing, Roc Nation Apparel Group isn’t just denying any wrongdoing and asserting half a dozen affirmative defenses, it is countersuing Iconix for breach of implied license.
RNAG attorney Andrew Bart argues that while Rocaware Licensing sold the Rocaware business to Iconix in 2007, Roc Nation wasn’t founded until the next year and therefore was not 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.”
Bart argues another 2013 agreement granted RNAG an exclusive license to use the mark for “licensed products” including apparel, 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.”
RNAG claims Iconix was fully aware of the ongoing exploitation of the mark and breached that implied license by filing the lawsuit in an effort to destroy the company’s business relationships.
Roc Nation Apparel Group is seeking dismissal of Iconix’s complaint, damages for reputational harm, lost goodwill and future lost profits and also attorneys’ fees. (Read the full filing here.)
Meanwhile, Carter on Friday asked the court to dismiss him 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.”
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