December 30, 2016

It's Like That: RUN-D.M.C. Sues Amazon and Wal-Mart for Trademark Infringement

by Stites & Harbison, PLLC

It was December 29th in NYC in the court

When I see a complaint filed because defendants purport

To be selling lots of products and using remarks

That are infringing, oh my God, the RUN-D.M.C. trademark.

If you grew up in the '80s, your favorite Christmas song just might be Christmas in Hollis. This year, Run-D.M.C. made a holiday appearance for a reason other than just on the radio. Run-D.M.C. filed a lawsuit, alleging that Amazon and Wal-Mart, among others, sold clothing and accessories bearing the mark RUN-D.M.C. without authorization. The complaint alleges that the defendants are advertising, selling, manufacturing, promoting and distributing products claiming to be "RUN-DMC styled products," and are also selling products that directly infringe the rap group's allegedly famous mark. Specifically, Run-D.M.C. takes issue with the use of its mark in advertising titles, as shown below:

Run Dmc Glasses

Run-D.M.C. also objects to use of its mark directly on products, such as on this shirt:

Yyhu Run Dmc

The complaint claims that these uses of the RUN-D.M.C. mark constitute trademark infringement, dilution, and unfair competition. Will the claims stick? It's tricky. For starters, Run-D.M.C. relied on the Federal Trademark Dilution Act for its dilution claims, which was replaced in 2006 by the Trademark Dilution Revision Act. Additionally, Run-D.M.C. claims that it has suffered $50,000,000 in harm as a result of the infringement and dilution. Run-D.M.C. might have hard times proving that the actions of the defendants resulted in $50,000,000 in damages. However, Run-DMC claims its trademark products have earned the artists over $100 million throughout the years, including a $1.6 million endorsement deal with Adidas. Thus far, Amazon and Wal-Mart have declined to comment and have yet to file a responsive pleading. It will be interesting to see how the defendants respond to Run-D.M.C. raising hell through their trademark infringement and dilution allegations.