Iconix Brand Group fired first in April of last year by filing a lawsuit that accused Roc Nation of undermining a $204 million licensing deal by releasing a line of New Era caps in partnership with Major League Baseball without consulting the brand manager. Jay-Z’s company in October countersued for breach of implied license, arguing that the company’s 2007 agreement covers Rocawear but not Roc Nation. Roc Nation was only brought into the mix when the parties reached a licensing deal in 2013.
Now, the Roc defendants are asserting more counterclaims. The company claims Iconix is attempting to “rewrite carefully negotiated agreements” and usurp its rights. RNLLC on Monday asked the court for a declaration that limits Iconix’s rights in the Roc Nation mark and is seeking cancellation of its subsidiary’s trademark registration for Roc Nation. (Read it in full here.)
A similar motion was filed Tuesday by Roc Nation Apparel Group, which begins by denying the claims and alleging Iconix’s 300-plus pages of proceedings violate the federal mandate of a short and plain statement of a claim.
“Whether they were submitted for publicity purposes or simply to harass the Defendants and impose needless cost, RNAG respectfully reserves its right to seek recovery of the fees incurred responding to such patently improper pleadings,” writes attorney Andrew Bart.
RNAG also claims that Iconix was fully aware of its dealings with New Era and, at the time the products were shipping, the companies were operating under an implied license because their 2013 deal had expired during negotiations for a revised business deal. The parties were actively negotiating in late March 2017 and RNAG was blindsided by the April lawsuit, according to the filing.
RNAG is asking the court to dismiss Iconix’s complaint and award damages including lost profits, lost goodwill and reputational harm, plus attorneys’ fees. (Read the motion here.)
Jay-Z, also known as Shawn Carter, on Monday asked the court to dismiss several claims against him as an individual, arguing that the case is merely a trademark dispute between companies.
“In addition to seeking trademark liability against Carter for the alleged infringement of the ROC Defendants, Plaintiffs tack on four claims alleging unjust enrichment, violations of New York General Business Law, and tortious interference with contract and prospective relations,” writes attorney Alex Spiro in the motion, which is posted in full below. “For all his celebrity wattage, Carter does not belong in this case. While that is better demonstrated at summary judgment, the four catchall claims should be dismissed now because they are either duplicative of the trademark claims or fall well short of alleging the pleading elements necessary to be sustained at this stage.”