Protecting Fraternal Trademarks: Delta Sigma Theta Settles
By Tamera H. BennettJune 23, 2007
Sorority Delta Sigma Theta settled their trademark litigation against Derek & Jamar Productions, LLC this week that was pending in DC federal district court.
Derek & Jamar are producers of the movie Black Sorority Project. The "documentary" film portrays the history of Delta Sigma Theta and its founding members.
In addition to claiming trademark infringement, Delta Sigma Theta also included causes of action for injurious falsehood, defamation and theft of trade secrets. According to the complaint, Delta Sigma Theta's membership roster is highly guarded and treated as trade secret.
Derek & Jamar did contact Delta Sigma Theta in 2003 to discuss the film project. Based upon information in the pleadings, Delta Sigma Theta showed initial interest, but in 2004 the parties reached an impasse on how the project should progress and Delta Sigma Theta stopped working with Derek & Jamar. Additionally, Derek & Jamar applied for a vendor's license to use the sorority’s trademarks in conjunction with merchandise, and such license was denied.
In the settlement, the sorority secured most of the relief it requested in the pleadings. Without admitting liability, Derek & Jamar agreed to remove some information from its website, post an apology, clarify the sorority is not supporting the film, and repackage the DVD to remove any reference to the sorority from the DVD cover. Further, in the promotion of the film, there can be no use of the sorority name or logos.
Delta Sigma Theta claims first use of their trademarks in 1913 and own four registrations for the Delta Sigma Theta marks. It is interesting to note the sorority did not file any trademark applications until 1997.
You may ask, "why didn't the sorority sue to stop the project all together if they did not like the project?" The short answer: facts are not protected by copyright or trademark law. It is a simple fact when the sorority was formed and the founding members.
The complaint is available on PACER: U.S. District Court, District of Columbia (Washington, DC) CIVIL DOCKET FOR CASE #: 1:06-cv-01993-RMC
