Black Fives Takes Action Against Trademark Infringement by Kareem Abdul-Jabbar

On June 5, 2008, in Basic, Business, NBA, Press Release, by Black Fives

Black Fives, Inc. demands that Abdul-Jabbar stop using its logos without permission to promote his “On The Shoulders Of Giants” products.

Black Fives, Inc., owners of a well-known series of trademarked logos commemorating vintage African American basketball teams, demands Abdul-Jabbar stop using them without permission to promote his “On The Shoulders Of Giants” products. Abdul-Jabbar’s unauthorized uses include online marketing and nationally televised ad spots during N.B.A. Playoffs and Finals games.

(Greenwich, Connecticut) June 5, 2008 – 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.

New York Rens logo

Rens logo owned by Black Fives, Inc. being used in Abdul-Jabbar's nationally televised ad without the owners' 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 K&L Gates 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.”

The marks Black Fives, New York Renaissance, New York Rens, Harlem Rens, and Rens are trademarks of Black Fives, Inc., all rights reserved.

This press release is also available via PRWeb.com.

About Black Fives, Inc.:
Black Fives, Inc. combines pre-NBA African American basketball history with elements of modern pop culture to produce meaningful motivation, inspiration, and enlightenment people can use today, with the slogan “Make history now!”

About K&L Gates LLP:
K&L Gates LLP is a multidisciplinary law firm that works with businesses of all sizes in a variety of industries, with service firms, with government bodies, with tax-exempt organizations, and with individuals.

Contacts:

Claude Johnson
Black Fives, Inc.
203-493-8600 

http://www.blackfives.com

Kimberly Reddick
K&L Gates LLP
202-466-6300
http://www.klgates.com

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14 Responses to “Black Fives Takes Action Against Trademark Infringement by Kareem Abdul-Jabbar”

  1. Richard Coreno says:

    Utterly amazing and also very sad. The arrogance of a few can direct the positive focus on a history which should be celebrated into legal drama. Good luck in loudly proclaiming that star-quality does not mean theft.

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  2. Way to go Claude. Take a stand and don’t let the big boys throw their weight around. Besides, who needs B-on-B crime here. Karim should step up, give you your props and get permission, or make license agreement, so the compensation for intellectual property is rightly distributed, then everybody’s happy.

    Brian G. Jones

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  3. bill tosheff says:

    Claude…I knew this was coming. On several occasions I told Deborah, that I saw a problem with usage of other peoples domain. As you know she is very quick to move on things and as a result doesn’t stop and think of possible ramifications. I have helped her on many occasions; yet, she persists in pushing. I don’t think Kareem has a good control of her actions….and maybe this is a wake up call for him too. Have you ever talked to Kareem relative this matter?……bill

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  4. JA LEGACY SPORTSWEAR says:

    As i look at this, I’ve asked myself, “Why are we fighting?”

    On one hand is the “RIGHT$” to promote history. Do we own history? Do we put a $ sign on the front door of educational enlightenment.

    Can we give everyone the opportunity learn our sports legacy?

    I live in So. Cal, and lot of our people have not even heard of “BLACK FIVES”.

    With all respect to Black Fives and Claude Johnson, what I see is the opportunity to spread the word. I pray that this matter gets resolved, as to allow our children and our children’s children to have access to our long and storied history.

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  5. Lawrence says:

    Anthony Oliver, it sounds to me that as the owner of JA LEGACY SPORTSWEAR, you are out of touch and completely missed the point of the cease and desist letter to the former Lou Alcindor and his camp for federal and common law trademark infringement, unfair competition, and false association. Black Fives, Inc. is already providing to our children and our children’s children access to our long and storied history. Perhaps you may be interested in providing a free piggy-back ride for Abdul-Jabbar and the company that markets his products. Uhh…, what is it that you are selling again in the retail industry…, in SO-CAL; knock-offs in the LA area…?

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  6. sam black says:

    I support you and the Black Fives in this and any other matter.

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  7. dreamleague says:

    fyi, the average citizen does not know that if you own a trademark, you must by law defend it otherwise you can lose it. so Black Fives MUST protect itself here. disappointing that Kareem and his people are ignorant of this. I surely hope it is unintentional, so to speak.

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  8. Keith Ellis says:

    Like my fellow Hoosier Tosh, I’ve been seeing this conflict coming. My impression after speaking w/ Deborah is that she sees sports history as a “business” to be “pitched.” Respect for the complete historical record of the 1930s Rens upon whom the Jabbar campaign is focusing is secondary to marketing.

    Over time such conflicts can spread from NY-oriented historical subjects such as the Rens to other classic clubs like the Chicago Crusaders. Millions of NYers & Chicagoans of course are proud of their city histories & have lots of money to spend (& can attract buyers from other regions, too). Who owns history? Ultimately, we all do, & not even a hoops legend like Kareem can cash in w/out recognizing these teams’ rights to their logos.

    In a related vein the NBA which tried so hard to destroy the ABA & downplay proud ABA veterans’ records should not rightfully ‘own’ the Memphis Pros & other intellectual property that it never appreciated until ‘retro’ came back in style.

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  9. Sad keep fighting Claude let me know if there is anything I can do. It’s sad that the hard work and sweat of what you have done with the black fives is being disrespected by Kareem Abdul-Jabar. Funny thing is he should know better It was just a few years when he sued a former NFL player for say his name was too similar.

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  10. Zachary C. Husser, Sr. says:

    Brother Claude, stay firm on this fight to protect Blackfives and all the work that you have done. I support your efforts and whatever I can do to help, give me a holler. In the interest of integrity, Brother Zach.

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  11. rashid says:

    Funny, the history of Black Fives has been around for almost 100 years. Bro. Claude had enough respect for our heritage to research and chronicle a period in African American history that was neglected, discarded, and viewed as having no value. From a business perspective, he did not get caught in nostaglic reminiscing. NO! He did the smart thing and had it trademarked in order to protect “our culture” from the corporate vultures. Now, does Bro. Claude have a right to make money on Black Fives–Absolutely! He did the research and had the smarts to turn it into a business opportunity as well. As a business man should he protect his investment? Only a fool would neglect to do so! Plus, Bro. Claude cares about the history; unlike the corportrate vultures who only want to make a buck selling you back your culture.

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  12. Claude says:

    Thank you very much for your comments, support, and encouragement.

    I also got so many reader comments via email that I decided to share some of them, raw and uncut, without bias (first names only):

    I SAW THIS ON TV AND THOUGHT THIS IS SOMETHING YOU DID…I SEE NOT, BUT GOOD LUCK WITH THIS AND OBVIOUSLY YOU’RE ON TO SOMETHING OR ELSE THEY WOULDN’T BE USING….NICE JOB – Brandon

    I hope matter is resolved. We as a people must stop this socially engineered division. As a fan of sports in general, and B-Ball especially, I’m rooting for the KNICKS. However since they are not here, I’ll take Boston in 6. – Oliver

    The Lakers, of course. – Jean

    If you need me to kick Jabbar in the knee for you, just say the word!! Once a Laker…always a Laker. Seriously though, one would think that he would know better. Celt’s in 6!!!! — Cecil

    I guess that’s what he meant by ‘On The Shoulders Of Giants’ LOL. – Ram

    lakers! but my sons want the celtics!!! – Ana

    Thanks for the email about Kareem. That’s outrageous! I’m sure you’ll prevail here, after all you successfully took on the NBA. I wonder if the guy has some kind of superstar mentality, and figures this is just another freebie. — Steve

    Claude, you go get that big bald sky-hook goober. — George

    Go kick some ass, Claude! – Cheryl

    Never been a Laker fan. Hope you win your suit against him – Barney

    I hadn’t heard anything about this until your email. I’m quite surprised that someone of Kareem’s stature wouldn’t avoid situations like this by being diligent about the legalities. I’ll definitely keep my eyes on this as it progresses. Hope all is well! – Kevin

    Nice catch!!!! I look forward to this being discussed as the lakers whup the Celtics!!! – Bill

    Claude– We noticed this, but thought you were getting paid on it. You should sue the pants off him. You should be getting royalties. I think the Lakers will win but don’t care because I like them both. – Greg

    Whoa! So what’s the latest? Are HIS lawyers talking to YOUR lawyers? – G

    Wow thats crazy – Tim

    My man Claude, I actually caught the promo for this piece that Kareem is doing on ESPN classic early this morning and I was looking for your name or any reference to Blackfives. Needless to say I am disappointed, but I understand you have to do what you have to do to protect your life work and dedication to preserving the history. Celtics in six. As always much success to you. Peace. – Tyrone

    This is ironic to say the least – and I hope can be resolved amicably. Turning to a lighter subject, hope the Lakers can take it in 6 games! I rooted for them in the Johnson, Worthy, Scott, Abdul-Jabbar years & admittedly lost track somewhat @ the time of the Jones, Van Exel, & Ceballos rosters. – Ray

    Thanks for the heads up. That is an unfortunate matter. I hope Kareem obeys your request. – O

    Man that’s a messed up situation. You’ve got my support for what ever that is worth haha. I’ve got to be honest I was wondering when I saw the commercials, but then I never saw anything on the blog. So I was thinking something was up. I am pulling for the Celtics, just can’t bring myself to cheer for Kobe since he already has 3 rings. Keep up the great and important work – James

    I’ve never liked or thought the Celtics were interesting before Kevin and Ray Allen showed up. I think they will win it all. Some of us follow the athlete and not the team. – Howard

    Lakers in 6…..like him or not, Kobe’s just too good. Good luck with the legal issues….never fun, even when you’re right. – John

    I’m a Lakers Man, but I totally agree with Black Fives position! If you need any help, I’m still your Philly Lawyer! Lakers 08!
    OBAMA 08! – Will

    It is unfortunate that the proper channels were not taken to obtain copyright licensing. Considering he is talking about the History of Basketball, one would think his efforts would be a natural union with Black Fives. Hopefully it will all work our for the best. I am a Celtics Fan and a Lakers fan – but I want the Celtics to win. Kobe & Odom are kicking ass, but we’ll see if the rest of the team can step it up. – Dan

    When I saw the ad, i wasn’t sure whether you had the rights but I wondered. Good luck. I’m picking the KNICKS:) I have no love or support for no other team. – Peter

    That seems like a head ache! Nevertheless, your doing what you need and should do. I hope it all gets worked out. I haven’t seen any of the ads on T.V. yet. Thanks for the heads up. I am a Lakers fan despite current and past issues. I got the Lakers in 6 – Chris

    I am disappointed with Kareem….I am glad Black Fives took action! – Gail

    Dear Claude , I hope you win this. What a terrible thing. Imean it. All your research and careful attention to every detail. – Rosemary

    I am certain that Jabbar’s people will claim ignorance, even though that is not the case. I just dislike how people feel some sort of privilege to do whatever is convenient. I have seen the commercials; makes me cringe. – Matthew

    Hey Claude, sorry it has come to this. . . he should know better! Do what you have to do, you put a lot of hard work (and money) into making this dream something that would be beneficial on a large scale basis. . . – Nicki

    Good for you, Claude. I started to call you when I first saw Kareem’s ads. I thought maybe you were working with him on the project. Obviously not. – Dick

    Seems like he would have just done this as a joint venture and benefitted both parties alike… – Perry

    This is some irony. I know he’s always sending out letter to people who use his likeness or name … he knows these arguments well! Good luck. – Hank

    I’ve never liked or thought the Celtics were interesting before Kevin and Ray Allen showed up. I think they will win it all. Some of us follow the athlete and not the team. – Howard

    Claude, I just had the opportunity to view and applaud you for being on top of things. You have my support. And if you need me for anything on this subject just let me know. – A

    i’ve been a laker since ’84 so i’m lakers all day. however i’m sad to hear that “captain” kareem abdul jabbar is involved in this, i pray this can be resolved amicably. by support your decision for the cease and desist letter and it’s purpose to stop this unauthorized use of any and all of Black Fives Inc, Logos. All the best Brother – Marty

    Thought about you when I heard the ad — will be interested to see how this turns out. – Michael

    Great points with regard to John Wooden. Stay the battle. – Rick

    Hello Claude. Hope this all works out for you and Black Fives. – Floyd

    I do not know Kareem personally but we are from the same area and generation. It is my hope and thoughts that instead of lawyers doing the talking that you and Kareem could resolve this situation. Have you spoken to him? Is he receptive for a win-win resolution? If he is not talking or is not receptive, then a man is got to do what he has to do. – Will

    Totally uncool and so unprofessional!! I’m sure Black Fives will shine in the end – as it has been!! – Sheena

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  13. Karen Wells says:

    Claude,
    Keep fighting and we are all behind you. I will never forget the day I discovered
    Black Fives. It has opened a door in the Orange New Jersey community that we did not even know was there. We will support you in any way possible. How dare Kareem. He certainly knows better.

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  14. Jasper says:

    Claude,

    I’m probably the last person to comment about this, but I wanted to say I saw the ads during the Finals, and it never crossed my mind there might be some copyright infringement involved. In fact, I had planned to check out the website because I thought they were advertising a DVD. Nevertheless, I’m surprised, just like some of the other folks who’ve commented apparently are, that Kareem and his people wouldn’t know better. If they didn’t, I’m sure they know now!

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“Barclays Center is a crossroads for Brooklyn, and honoring the Black Fives is a great way to bring sports, Brooklyn’s history, and our community together in a meaningful way.”
-- Bruce Ratner, Barclays Center developer and majority owner, 2013

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