So, this is one of those stories that I can’t quite wrap my brain around. You know how Harlem-born Kareem Abdul-Jabbar talks about the Harlem Rens in his book, On the Shoulders of Giants? Well, apparently a company called Black Fives has decided to sue him for trademark infringement. Maybe I’m missing something here but it would seem that this company would instead try to work with Kareem to take advantage of the free publicity, brand recognition and celebrity endorsement of a product that few people had previously heard of. Sounds to me like these folks are scratching for crumbs and probably hope that Kareem will settle out of court.
In the press release announcing the suit the suit alleges:
Abdul-Jabbar is using Black Fives intellectual property associated with the famous New York Renaissance all-black basketball team that won the first World Professional Basketball Tournament in 1939 on his website, in online marketing, and in nationally televised ads, including spots that run during N.B.A. Playoffs and Finals games.
“The Black Fives owned trademarks being used without Black Fives’ permission, that we know of so far, are New York Renaissance Big R Five and Rens,” said Kimberly Reddick of the law firm Bell Boyd & Lloyd LLP, which represents Black Fives, Inc. in intellectual property matters.
The company is up in arms by Kareem’s use of the logos because they supposedly have contracts with companies like Nike and Converse and they feel that by Abdul-Jabbar using the logo it constitutes “unfair competition” and “false association”:
“We have a contractual obligation to our existing and potential licensees and sponsors to vigilantly protect our trademarks,” said Black Fives, Inc. founder and president Claude Johnson. “We also have a broader social and cultural responsibility to protect and preserve the value of these logos and the history they represent by ensuring their proper use.”
Did he really say that he questions the proper use of these logos by Kareem? I also wonder how these guys obtained the legal rights to these logos in the first place. How solid is that? In any event, it seems that Kareem has gone back to work (perhaps to cover his legal expenses?) In the end, at least the history of these old leagues is getting some national attention.
Read the full press release after the jump.
Black Fives, Inc. today sent a cease and desist letter demanding that Kareem Abdul-Jabbar stop using its trademarked logos without permission to promote his “On The Shoulders Of Giants” products. According to the letter, Abdul-Jabbar’s actions constitute, among other things, federal and common law trademark infringement, unfair competition, and false association.
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Rens logo owned by Black Fives, Inc. being used in Abdul-Jabbar’s nationally televised ad without Black Fives’ permission.Abdul-Jabbar is using Black Fives intellectual property associated with the famous New York Renaissance all-black basketball team that won the first World Professional Basketball Tournament in 1939 on his website, in online marketing, and in nationally televised ads, including spots that run during N.B.A. Playoffs and Finals games.
“The Black Fives owned trademarks being used without Black Fives’ permission, that we know of so far, are New York Renaissance Big R Five and Rens,” said Kimberly Reddick of the law firm Bell Boyd & Lloyd LLP, which represents Black Fives, Inc. in intellectual property matters.
Black Fives, Inc. has license agreements with several companies including Nike and Converse. Neither Abdul-Jabbar nor the company that markets his products, Union/OSG LLC, have been licensed or otherwise authorized to use these trademarks.
The letter was also sent to Abdul-Jabbar’s marketing, production, and public relations partner, Deborah Morales.
“We have a contractual obligation to our existing and potential licensees and sponsors to vigilantly protect our trademarks,” said Black Fives, Inc. founder and president Claude Johnson. “We also have a broader social and cultural responsibility to protect and preserve the value of these logos and the history they represent by ensuring their proper use.”
The New York Renaissance, also known as the “Rens” or “Harlem Rens,” were enshrined as a team into the Naismith Memorial Basketball Hall of Fame in 1963.
“To this day, I have never seen a team play better team basketball,” said legendary U.C.L.A. coach and Hall of Fame member John Wooden – who faced the Rens often during the mid-1930s while a player with the Indianapolis Kautskys – in a USA Today interview in 2000. Wooden coached Abdul-Jabbar at U.C.L.A., where the legendary coach created his famous Pyramid of Success. Wooden’s popular success model includes as its first lesson that “Good Values Attract Good People.”
Claude Johnson
June 9, 2008
Dear D. Bell,
OK, maybe I went over the top as far as my “trash-talking” but I think you can handle it. I doubt your confidence about your intelligence is shaken one bit. No insult was intended. But if you’re gonna put your opinion out there, complete with insinuations and accusations, without back up or homework, you do leave yourself open to criticism. And you did that. But that still doesn’t justify any insults, so I’m sorry for my approach. Since you were willing to talk sh**, I thought you could handle it on the rebound!
Meanwhile, if you or your readers want to get a sample of how the “public” feels, please see the sampling of about 50 comments and opinions here:
http://blackfivesblog.com/?p=435
Thank you.
D. Bell
June 8, 2008
My main question still wasn’t answered in the “rebuttal” above but at least Mr. Johnson was willing to give readers further insight into his reasons for the suit. I posted this topic to see how the public feels about the issue so please feel free to add your questions and comments to the discussion. Although Mr. Johnson took the approach of insulting my intelligence (which of course does nothing to sway me to his side of the issue) he has again received additional publicity (if you will) for his brand. As they say in the marketing industry, “All publicity is good publicity except your own obituary.”
Claude Johnson
June 8, 2008
Dear D. Bell,
Thanks for putting this info up on your blog.
But … yes, you really are “missing something.”
There seems to be a misunderstanding about how trademarks work. Just to clarify, when someone uses someone else’s trademark without permission, it constitutes trademark infringement.
It doesn’t matter how big or small or famous or celebrated the company is.
So, when you put the TM on “Uptown Flavor” in your banner above, you did it for a reason, right? What was the reason? Probably because be “up in arms” if someone else used your name without permission. Right?
If you didn’t object to someone else’s unauthorized use, then it would mean that you believe your TM is worthless. You’d be signaling that anyone could use it, with no consequences.
Not only that but it’s your responsibility as a trademark owner; you are required to defend your mark against unauthorized use otherwise your right to claim the trademark as yours — and all the legal and governmental protections that go with that — could be taken away by the United States Patent & Trademark Office.
Therefore, being the astute trademark user that you seem to be, I doubt you’d simply say, “Oh, that’s free publicity for my blog.”
Similarly, if you decided to use someone else’s trademarked logos to promote your blog in an advertisement, you’d be vulnerable to legal action by them.
“… it would seem that this company would instead try to work with Kareem to take advantage of the free publicity, brand recognition and celebrity endorsement …”
This really seems like a foolish and naive view, and I hope you don’t really believe that … because it would mean that you’re OK with big, famous companies or celebrities coming into our communities to steamroll over small companies, small entrepreneurs, small blogs, and pilfer their cultural work to co-opt it for their own use. Haven’t we had enough of that over the hundreds of year of our cultural output?
It’s incumbent upon the one without rights to seek permission from the rights holder, no matter how small or insignificant the smaller or less visible company may seem. That’s why those trademark laws are in place, to protect people like you and me. And also to protect big companies like Nike, Converse, the NBA, etc.
So, actually, I completely disagree with your statement. We look at it the other way around.
Kareem Abdul-Jabbar and his company don’t have permission to use our logos. He and his people are well aware of Black Fives’ trademark rights because they’ve corresponded repeatedly with us requesting a potential business relationship.
So, it would seem to me that they would want to do the right thing, act within the law, follow proper legal protocol, seek permission, offer to pay royalties, or figure out some other way of “working with” Black Fives, Inc.
But they didn’t.
Instead, they’re using our trademarked logos on their website, as well as in a nationally televised advertisement (that’s all we know of so far). These uses are easy to find on Kareem Abdul-Jabbar’s website as well as from anyone who TIVO’d one of the Playoff games, for example.
“Sounds to me like these folks are scratching for crumbs and probably hope that Kareem will settle out of court.”
This isn’t about Kareem Abdul-Jabbar or his company or his people or his “crumbs” as you call it. It’s about protecting intellectual property as described above so that potential future licensees and sponsors and business partners of Black Fives, Inc. can feel confident and assured that the assets they want to use haven’t been diluted or rendered worthless because we didn’t protect them, letting anyone use them without permission and with no consequences.
Think of an analogy. In a restaurant, do you want a plate of food that you know one or two other patrons got to eat off the plate before it got to you, without your permission? If so, then you at least want to pay less, right?
We wouldn’t have a license with Nike, for example, or anyone, for that matter, if we had not protected these marks in the first place.
But, this history doesn’t belong exclusively to Black Fives, or to anyone. It’s all of ours. Yours, and mine. This isn’t about keeping our history down. It’s the exact opposite.
As a result of the efforts of Black Fives, Inc., Nike, Converse, and other licensees, sponsors, and business partners, hundreds of thousands and maybe millions of new people around the world — and in Harlem — now know more about the New York Rens and the teams and history of the Black Fives Era. This benefits all of us.
If we allow unauthorized use from anyone, then it implies we allow it from everyone.
What kind of a message would that send to our community? Wouldn’t we be saying that we don’t value our own history and culture enough to protect it?
Soon we’d have what typically happens … our culture and history get got. Co-opted. Distorted. Fed back to us, at a cost. Once again!
So, finishing up here, it’s easy for people to complain about shit. But it’s much harder for one of us to actually take action to do something to fix it. And even harder when someone like you, who apparently hasn’t done their homework, comes out with what seems like a smallish minded opinion questioning the situation, instead of thinking about it for a minute or two to understand what you’re really saying in the bigger picture. You ought to be saying, “I ain’t havin’ it!”
One other thing, if we let this unauthorized usage go then the existing licensees Nike and Converse and others would think that our company did some kind of side deal with someone else behind their back, outside of what we agreed in our contract. What would that say about us? Worse, what would that do to the chances of the next small, black-owned company that wants to do business with the Nike’s of the world? You ought to be saying, “I ain’t havin’ that, either!”
Thanks for the dialog on this; it’s always good to have discussion.
For more on this, please visit our blog here:
http://blackfivesblog.com/?p=435