LL Cool J is poised to reclaim trademark rights to his song “Rock the Bells” despite not objecting to the promoter of a prominent concert series using the name for nine years.
The hip hop artist and actor filed a trademark infringement suit under his legal name, James Todd Smith, against now-defunct Guerilla Union Inc. targeting its Rock the Bells Twitter handle, Facebook page and web domain.
Intellectual property attorneys told Bloomberg Law that because the promoter does not appear to be operating—much less fighting for its trademark rights—Smith seems destined for an uncontested victory. But they also said if the promoter did fight, Smith’s inaction could’ve proven costly as he gobbles up intellectual property protections for his new “Rock the Bells” station on Sirius XM.
Smith claims Guerilla Union used his song’s title to promote the music festivals without his knowledge or permission. But even if that was the case, Smith still had a “duty to police” the mark from 2004 to 2013—the years the concerts were held, Jonathan Steinsapir, an entertainment and IP lawyer for Kinsella Weitzman Iser Kump & Aldisert in Santa Monica, Calif., said.
“If you see others use it, you need to do something about it. I’d want to know what his excuse was for not knowing,” Steinsapir said, noting that the concert series series featured well-known performing artists, including Wu-Tang Clan, Nas, Mos Def, and Rage Against the Machine.
“I think he got lucky that the other party doesn’t seem to want these rights,” Steinsapir said. “These people could have put up a fight, cost him money and possibly shaken him down.”
Trademark registration helps registrants enforce trademarks but isn’t necessary to establish rights if a mark is used as a source-identifier of some sort of goods or services. In his Nov. 27 complaint, Smith cited the success and ubiquity of the song, his fame, and his New York corporation, Rock the Bells Entertainment, Inc., founded in 1998, to show “distinctiveness and significant secondary meaning” needed for trademark rights.
Smith’s focus on various web platforms is an effort to defend his Sirius station, which launched in March, according to Margaret A. Esquenet, an intellectual property attorney for Washington, D.C.-based Finnegan Henderson Farabow Garrett & Dunner LLP. Esquenet said criticism of Smith’s policing of the mark may be a bit of “Monday morning quarterbacking,” but said artists should consider the long-term value of their intellectual property.
“Artists really need to think about when and if they outgrow, or want to go past, their initial art form,” Esquenet said. “What kinds of intellectual property rights do you want to get squared away so you can take yourself and your brand to a different artistic space?”
‘Going on the Offensive’
If Guerrilla Union had kept using “Rock the Bells” in some form, IP attorneys said, it could have had a strong case to retain trademark rights, depending on what litigation revealed about the parties’ trademark use and enforcement efforts.
Smith had asked for a “Rock the Bells” trademark registration on music reproductions in 2001, but didn’t complete the application process. Guerilla Union registered its word mark for live performances in 2006, and later registered a logo. Guerilla Union could not be reached for comment.
According to Smith, the company’s corporate registration has been suspended and it failed to renew the logo’s trademark registration in 2015. Smith had the word mark knocked out in 2017 at the U.S. Patent and Trademark Office when Guerilla Union didn’t show up to defend itself against his challenge.
Smith currently has several registration applications pending on “Rock the Bells.”
Monica McCabe, an entertainment and IP attorney at Phillips Nizer LLP in New York, saw parallels between Smith’s claims on rights to the song title to the frequent clashes between musicians and politicians who use their work while campaigning. Song titles themselves aren’t copyrightable. But McCabe said artists could establish trademark rights if they show a strong association between artist and title, and that use of the title or song confuses consumers into thinking the artist is involved.
The case shows the music industry is “going on the offensive” to secure and enforce IP rights amid growing revenue, Aaron B. Swerdlow, an entertainment attorney at Glaser Weil Fink Howard Avchen & Shapiro LLP in Century City, Calif., said. He sees Smith’s suit as a final blow to weakened if not nonexistent opposition.
“What LL’s legal team is doing is going in for the kill: Let’s settle this for once and for all,” he said.