Kenyatta v. Sean Combs and Bad Boy Entertainment

Background

Charles Kenyatta, Jr. alleged that Sean Combs and Bad Boy Entertainment, LLC infringed and misappropriated his “ACT BAD” and “ACT BAD ENTERTAINMENT” trademarks. He asserted four claims under the federal Lanham Act: trademark infringement, unfair competition, trademark dilution, and counterfeiting. He also asserted New York claims for breach of contract, unjust enrichment, conversion, voidable contracts, and void contracts.

Kenyatta alleged that Combs released a song titled “Act Bad” in spring 2023 and that the defendants later sold merchandise and promoted the song using “ACT BAD.” The parties’ representatives negotiated a proposed contract, but key terms remained unresolved and Kenyatta never signed it. The United States Patent and Trademark Office registered Kenyatta’s two marks on September 26, 2023, and February 20, 2024.

The defendants moved to dismiss the amended complaint for failure to state a claim. Kenyatta separately moved for partial summary judgment on his contract claim and for a preliminary injunction freezing the defendants’ assets.

Trademark claims

The court dismissed the trademark-infringement claim under Section 32 of the Lanham Act without prejudice. That provision protects registered trademarks, but Kenyatta did not allege when or how the defendants used the marks or that they used them after registration. The court rejected his unsupported assertion that the use continued after registration.

The court dismissed the unfair-competition claim under Section 43(a) without prejudice. Although the court assumed without deciding that Kenyatta had a protected mark, it found that he had not pleaded enough facts showing a likelihood that consumers would be confused. The complaint did not describe the parties’ merchandise or explain how the products might confuse consumers. Allegations that consumers contacted Kenyatta believing Combs owned or was affiliated with the brand did not show that the confusion affected purchasing decisions or caused commercial injury.

The court dismissed the federal trademark-dilution claim without prejudice. Kenyatta alleged only that his marks were well known in their markets. The court held that this did not plausibly show the broad public fame required for federal dilution protection and noted that the complaint lacked facts about matters such as advertising spending, sales, or comparisons with marks previously found famous.

The court dismissed the counterfeiting claim without prejudice. Kenyatta did not allege facts showing that the defendants’ marks were fake or nearly identical to his registered marks. The complaint also did not describe the marks, provide images for comparison, or allege that the products were similar.

State-law claims

The court dismissed the breach-of-contract claim with prejudice because amendment would be futile. The draft contract attached to the complaint stated that it would become effective only after signing. The complaint also alleged that important terms remained unresolved, that Kenyatta never signed the agreement, and that the defendants had not partially performed. Applying the factors used to determine whether parties intended to be bound without a signed agreement, the court concluded that no contract existed.

The court dismissed the unjust-enrichment claim without prejudice. Kenyatta based that claim on the same alleged unauthorized use of “ACT BAD” that supported his Lanham Act, contract, and conversion claims. He did not adequately explain how the unjust-enrichment claim differed from those other claims.

The court dismissed the conversion claim with prejudice. It held that New York law does not recognize a claim for converting a trademark and that a New York case involving conversion of electronic records did not extend conversion claims to trademarks.

The court dismissed the claims labeled voidable contracts and void contracts with prejudice. It held that voidness and voidability are defenses to contract claims, not independent causes of action, and that the defects could not be fixed through amendment.

Other motions

The court denied Kenyatta’s motion for partial summary judgment without prejudice. It found that he had failed to state a breach-of-contract claim and that factual questions remained about what, if anything, the parties agreed to. The court also held that the motion was premature because the defendants had not filed a responsive pleading or had an opportunity to conduct discovery.

The court denied Kenyatta’s motion for a preliminary injunction. He sought to prevent the defendants from transferring assets during the litigation. The court found that he had not shown a likelihood of success, irreparable harm, a favorable balance of equities, or that the injunction would serve the public interest. It also found that his delay in seeking the injunction weakened his claim of urgency and that freezing the defendants’ assets would impose an inequitable burden.

Disposition

The court granted the defendants’ motion to dismiss the amended complaint. Counts I, II, III, V, and IX were dismissed without prejudice. Counts IV, VI, VII, and VIII were dismissed with prejudice. Kenyatta’s motions for partial summary judgment and a preliminary injunction were denied. Judge John G. Koeltl directed the Clerk to close the docket entries for those motions.