Rapper files suit over trademark; Wal-Mart among retailers targeted by Run-DMC founder

Joseph “Run” Simmons (left) and Darryl “DMC” McDaniels perform in 2012 in Philadelphia. McDaniels says in his lawsuit that the rap act’s brand is “extremely valuable.”
Joseph “Run” Simmons (left) and Darryl “DMC” McDaniels perform in 2012 in Philadelphia. McDaniels says in his lawsuit that the rap act’s brand is “extremely valuable.”

One of the founding members of Run-DMC filed a lawsuit against Wal-Mart Stores Inc., Jet.com, Amazon.com and other retailers Thursday, claiming the companies are selling products bearing the rap group's name without permission.

The lawsuit was filed in the U.S. Southern District Court of New York by Darryl "DMC" McDaniels, one of the founding members of the group and owner of the Run-DMC brand. The complaint accuses the companies of trademark dilution by "advertising, selling, manufacturing, promoting and distributing multiple products claiming to be Run-DMC styled products," while other items being sold directly infringe on a trademark registered in 2007.

The lawsuit said the products are too numerous to list, but include glasses, hats, T-shirts, patches and wallets.

"It looks like they're attacking everybody all at once," said Martin Thoma, a principal at Little Rock brand leadership firm Thoma Thoma and author of Branding Like the Big Boys. "They want to force Amazon and Wal-Mart and any of these other e-retailers to strip any nonauthorized logo wear or products out of their website."

Run-DMC was founded by McDaniels, Joseph "Run" Simmons and Jason "Jam Master Jay" Mizell in New York City in 1981. The influential group produced hits like It's Tricky and My Adidas. In 2009, Run-DMC became the second rap act inducted into the Rock and Roll Hall of Fame.

McDaniels said in the complaint the Run-DMC brand is "extremely valuable," producing more than $100 million in revenue based on music sales, publishing, concerts, merchandise and endorsement deals since the 1980s. Run-DMC has entered several licensing agreements for use of the trademark, including a $1.6 million endorsement deal with Adidas.

The lawsuit claims the actions of the defendants have confused consumers into believing the group has endorsed their products and it also accuses the companies of diluting the Run-DMC brand. Mark Henry, a registered patent attorney with the Henry Law Firm in Fayetteville, said establishing that a mark is famous is key to qualifying for anti-dilution damages.

"They're showing how famous it is, how distinctive it is, how it's recognizable and how it has value," Henry said after looking through the lawsuit. "They're meeting all the elements."

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The lawsuit claims the retailers are "trading on the goodwill" of the group and have profited on the trademark for at least three years. Run-DMC will "suffer immediate and irreparable injury, loss or damage" if the companies do not stop selling the products because they're infringing on a trademark, causing confusion and continuing to utilize the mark in bad faith.

In addition to Wal-Mart, Jet.com and Amazon, McDaniels identifies Vision World, Infinity Fashion and SW Global. The lawsuit said all three are Amazon business partners. Twenty additional companies are simply referred to as "John Does."

McDaniels provided 13 pages of exhibits showing Run-DMC-labeled products being sold on Amazon.com, Walmart.com and Jet.com in the complaint. Wal-Mart purchased Jet.com this year.

The items listed on Walmart.com include a Run-DMC soccer T-shirt, hooded sweatshirt and logo T-shirt sold and shipped by Minnesota's Rockabilia. Other products that appear on Walmart.com and are included in the lawsuit's exhibits are shipped and sold by Old Glory and Gravity Trading Inc.

Wal-Mart did not return a message seeking comment about the lawsuit Friday. Neither did Christopher Brown, a Boston attorney who filed the complaint.

Thoma said it's no surprise to see McDaniels take legal action against the companies.

"The position of Run-DMC has to be to defend its trademark," Thoma said. "Anybody who registers a trademark does it because they understand the value of that intellectual property. A lot of times the only way to defend it is in the courts."

Business on 12/31/2016

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