By Christina Carrega
Hollis native and hip hop legend LL Cool J is taking a concert promoter to civil court for repurposing one of his many hit songs for more than a decade to advertise and monetize their events.
In 1985, LL Cool J, whose real name is James Todd Smith, landed on the music scene with his gold and platinum selling debut album “Radio.” The third single from that record was “Rock the Bells,” co-written Rick Rubin.
Smith’s fame did not end 33 years ago, nor did the popularity of “Rock the Bells.” Yet, in 2004, Chang Weisberg, the president and founder of Guerilla Union, Inc., held the first Rock the Bells concert and erroneously filed documents in California to obtain ownership of the song.
Problem is, Smith has no affiliation with Guerilla Union, Inc. — which was suspended for unpaid corporate taxes — according to a civil lawsuit filed in the United States District Court District of California Western Division on Tuesday.
Smith, 50, is seeking an unspecified amount for trademark infringement; false designation of origin, affiliation or association; cyberpiracy and unfair competition.
In 1998, Smith formed Rock the Bells Entertainment, Inc. in New York and trademarked several versions of “Rock the Bells.”
Nonetheless, the annual Rock the Bells concerts and tours were promoted, websites were created, social media handles were obtained and merchandise was sold by Guerilla Union without Smith’s consent. Over the years, several hip hop legends like Common, Biz Markie and Nas have performed.
Before Smith filed the lawsuit, his legal team Jill M. Pietrini and Paul A. Bost of the Sheppard, Mullin, Richter & Hampton LLP filed a complaint with the U.S. Trademark Trial and Appeal Board.
The exhibits filed with the court include 43 documents that break down Smith’s career since 1985 including the fact that “Rock the Bells” has been featured in various video game soundtracks and was named one of the “The 50 Greatest Hip-Hop Songs of All Time” by Rolling Stone magazine.
In February, a default judgement was ordered in Smith’s favor to cancel the trademark of The Guerilla Union Inc.’s use of the song title. The Guerilla Union Inc. did not appeal the decision.
With The Guerilla Union Inc. out of the way, Smith launched an exclusive radio channel on Sirius/XM in March called Rock The Bells Radio dedicated to classic hip hop music.
Smith’s lawyers sent a letter in June and July to request Weisberg turn over all social media handles and website domains linked to “Rock the Bells,” but Weisberg did not comply with the demand.
“Without Mr. Smith’s consent, GUI continues to use the ROCK THE BELLS name and trademark on the Social Media Websites, or has allowed those Websites to be abandoned but still present online,” Pietrini wrote in the letter. “As a result, Mr. Smith is unable to obtain the social media handles directly related to his trademark ROCK THE BELLS and song of the same name. GUI’s continued use of ROCK THE BELLS on the Social Media Websites or allowing them to continue to be present constitutes trademark infringement, unfair competition, passing off, and false designation of origin and/or association.”
Requests by the Eagle for comment from Chang Weisberg, the president and founder of Guerilla Union Inc. through phone and email were unsuccessful.
United States District Court Central District of California Judge Christina A. Snyder is assigned to the case.