BGC Inc. v. Robinson

Background

BGC Inc. alleged that Rauhmel Fox Robinson and Black Girls Code, Inc. infringed BGC’s trademark rights in “Black Girls Code” by using the mark on a website and social-media posts in connection with services similar to those BGC provides. The litigation included motions concerning a temporary restraining order, dismissal, and a preliminary injunction. Defendants also filed a counterclaim seeking cancellation of BGC’s trademark and declaratory relief.

In late January 2023, the parties reached a written settlement. Robinson agreed at a hearing that he signed the agreement for himself and Black Girls Code, Inc. on February 2, 2023. BGC’s representative signed on BGC’s behalf, and BGC’s board adopted a resolution approving the agreement.

Settlement Terms and Dispute

The settlement required defendants to stop all use of “BLACK GIRLS CODE” and confusingly similar designations in specified business, charitable, educational, and related goods and services. It also required defendants to stop using and remove content from the website at www.blackgirlscode.org, allow its domain registration to expire without renewing or assigning it, and either dissolve Black Girls Code, Inc. or rename it without using “BLACK GIRLS CODE” or a confusingly similar term.

The agreement also addressed certain allegations about Robinson’s personal conduct, required the parties to file a stipulated dismissal containing specified language, and provided that the prevailing party in a proceeding to enforce or address a violation of the agreement could recover reasonable attorneys’ fees and costs.

Analysis

The court explained that it could enforce a settlement of a case pending before it. To do so, it had to determine that the agreement was complete, meaning that the parties agreed on all material terms, and that the parties or their authorized representatives actually agreed to those terms. An evidentiary hearing would have been required if material facts about the agreement’s existence or terms were disputed.

The court found that no evidentiary hearing was necessary. The agreement was written and signed by Robinson for himself and Black Girls Code, Inc. Although evidence showed that Robinson had asked counsel to withdraw, the record showed that he continued discussing the settlement and agreed that he signed it. The court also found that Robinson had not provided enough evidence to support his coercion argument. It rejected his challenge to BGC’s representative’s authority because BGC’s board had approved the agreement.

The court concluded that the settlement was complete and that the parties had agreed to its terms. It also found that defendants had not complied with the requirements in paragraphs 1 through 3.

Disposition

The court granted BGC’s motion to enforce the settlement and required defendants to comply with paragraphs 1 through 3 by July 24, 2023. The court identified allegations that BGC had withdrawn under paragraph 5 of the settlement.

Because BGC was the prevailing party, the court granted its request for attorneys’ fees. BGC was ordered to submit a declaration and supporting documentation concerning fees and costs incurred to enforce the agreement by July 24, 2023. Defendants could oppose the amount by July 31, 2023, but could not use that opposition to reargue matters already presented in connection with the enforcement motion.

The court denied BGC’s motion for monetary sanctions. It dismissed the case in its entirety, while retaining jurisdiction for six months for the limited purposes of enforcing the settlement and addressing BGC’s attorneys’ fees. The clerk was directed to close the file.