June 17, 2013 -- Rocker Joan Jett's label, Blackheart Records Group, is suing teen retailer Hot Topic for trademark infringement and false advertising over the chain's Blackheart Clothing Co. brand.
Joan Jett and performer and music writer Kenneth Laguna formed the band, "Joan Jett and the Blackhearts." The name was coined by the two for its symbol and its meaning, which is "loner" in "Jamaican nautical lingo," the complaint filed last week states. They started their own recording company and called it "Blackheart Records," and applied to register the label's name with the U.S. Patent and Trademark Office in 1984. The office granted the registration the next year. In 2005, Jett and Laguna registered "Blackheart Records Group" with the patent and trademark office.
The label is suing Hot Topic Inc., based in City of Industry, Calif., for trademark infringement, dilution, unfair competition, and false advertising in the U.S. District Court for the Southern District of New York.
Hot Topic, established in 1988 as a "music-inspired accessory destination" that later expanded into apparel, describes itself as "the loudest store in the mall".
A spokeswoman for Hot Topic Inc. released a statement to ABC News saying it "takes the rights of artists very seriously, and has in fact compensated Ms. Jett over many years in keeping with mutually agreed-upon license agreements for the sale of tee shirts featuring her image."
"This lawsuit is a surprise to us, and we are confident in our rights to use the Blackheart brand name," Hot Topic said.
Hot Topic said it has 11 different registered trademarks with the U.S. Patent & Trademark Office for the use of the Blackheart brand for "retail stores, apparel, lingerie, accessories, cosmetics and more, with some uses going back a decade to 2003."
"In contrast, Blackheart Records has for years abandoned trademark filings for the use of the Blackheart name on apparel and accessories, and when we contacted them a year ago about acquiring the Blackheart URL, they never indicated a problem with our use," Hot Topic said.
According to the complaint, Hot Topic distributed music and music-related apparel that it bought from Blackheart or its business partners throughout the 1990s.
Around February 2010, Hot Topic approached Black Heart to design and distribute merchandise featuring the "Blackheart Family of Marks."
These include "stylized marks, including certain design elements—notably a heart, which is either solid black, black with a white outline, or white with a black outline," the complaint states.
"After experimenting with legitimate and illegitimate items that use and/or are sold under the Blackheart Family of Marks, [Hot Topic] commenced their own line of clothing under their own new 'Blackheart' brand," which the complaint describes as the "infringing brand."
Blackheart's complaint says Hot Topic's tagline, "Lingerie for Girls Who Rock & Roll," infringes on the Blackheart brand by invoking the image or persona of Joan Jett, who they say is referred to as "The Queen of Rock N' Roll" and whose best known recording is "I Love Rock N' Roll."
The complaint states that the public has been confused Hot Topic's brand with a company affiliated or sponsored by Jett or Blackheart Records.
The 26-page lawsuit details Jett's accomplishments, such as being one of two women guitarists on Rolling Stone's list of the top 100 guitarists of all time. The lawsuit points out "I Love Rock N' Roll" was ranked by Billboard Magazine as the 56th most popular song of all time.
Monica Riva Talley, an attorney who specializes in trademark law with Sterne, Kessler, Goldstein & Fox and who is not involved in this lawsuit, said the case illustrates the necessity of ensuring that trademark license agreements are carefully drafted and routinely reviewed.
"While these type of licensing arrangements are often a boon to the businesses of both licensor and licensee, to work best all parties need to be on the same page as to what constitutes authorized activities," she said.