In 2010, I discussed the historic filing of a lawsuit by Hollywood Jeweler Chris Aire (of Nigerian heritage), someone who has been featured on Ladybrille in the past as Man of the Month and who I have had the opportunity to work with on certain fashion related projects, against some prominent fashion luxury brands. Aire was suing Louis Vuitton, Rolex, Swatch et al. for Trademark Infringement. Aire did not get too far through the door when the defendants filed a dismissal of the suit which was granted on the lower level (trial court). Not willing to back down, Aire took the case up on appeal. A decision has now come down from The United States Court of Appeals for the Ninth Circuit saying Aire’s suit should not have been dismissed. An excerpt of the story follows below by writer Helen Christophi for Law360.com.
For the review and analysis of the initial case, basic trademark law and the significance i.e. a litigant of African heritage taking the fight to the equally big names, please click here.
An excerpt of why Aire says he sued from his Ladybrille feature in 2011 follows:
“Our company developed, trademarked and made famous the Red Gold® brand and after spending a lot of resources in making the brand famous, these other companies decided they wanted to exploit the brand without our consent. It is akin to me deciding to open a store on Rodeo Drive and call it Louis Vuitton, selling everything Louis Vuitton sells, I guarantee you that they would not sit idle and watch that happen. These brands frequently file similar lawsuits to protect their trademarks. Just like they all do frequently, we too must protect our trademark. The lawsuit is simply our way of policing and protecting our brand.”
“Law360, Los Angeles (March 19, 2013, 8:51 PM ET) — The Ninth Circuit on Tuesday reversed a lower court’s dismissal of a suit by jewelry designer Solid 21 Inc. accusing competitor Breitling USA Inc. of infringing its trademark on the term “red gold,” saying the judge had erred in ruling that the mark was generic and not protectable.
The appeals panel reversed and remanded to California federal court a ruling by U.S. District Judge Gary A. Feess dismissing Solid 21’s suit for failing to state a claim, saying the company’s submission of evidence that the mark was valid entitled it to a “strong presumption” that the mark isn’t generic.
“Solid 21 has alleged in its complaint and submitted supporting documentation indicating that its “red gold” mark is registered in accordance with the Lanham Act,” the panel said in its opinion. “Solid 21’s federal registration of its trademark constitutes prima facie evidence of the mark’s validity.”
The panel on Tuesday also denied the parties’ requests for judicial notice on appeal.
Solid 21 earlier in March asked the Ninth Circuit to revive its suit, arguing that Judge Feess had acted prematurely in finding that the mark involving the amber-hued alloy of gold and copper it has branded as “red gold” was generic and therefore not protectable. Breitling has used the term in the names of several of its luxury watches.
But Breitling maintained that there is no absolute rule barring courts from dismissing trademark suits at the motion to dismiss stage on the basis that something is generic and that Judge Feess properly considered Breitling’s dictionary evidence that “red gold” is used to describe a type of gold that is alloyed with copper to produce a reddish hue.
In throwing out the Breitling case, Judge Feess said courts can consider judicially noticeable facts when resolving a motion to dismiss a trademark infringement claim, and that Breitling had rebutted the presumption of trademark validity by marshaling evidence that “red gold” is a generic term.
But Solid 21 told the Ninth Circuit that a registered trademark “cannot be held generic at the motion to dismiss stage unless it is converted into a motion for summary judgment because it is a factual inquiry.”
Breitling countered that Solid 21 couldn’t claim protection for a term that refers to the “constituent metal” of its products.
The appeals panel on Tuesday said, however, that it is difficult to defeat the presumption of validity and that it was up to Breitling to establish “by a preponderance of evidence” that the mark isn’t protectable.
The panel also ruled that Breitling couldn’t argue that the “red gold” mark is generic, saying that in resolving a dismissal motion, a court must consider, in addition to judicially noticeable facts, the adequacy of the pleadings, rather than the adequacy of the evidence. . .” –Helen Christophi
Ms. Uduak is best known as an advocate who uses the tools of media and the law to help creatives and businesses clearly articulate their true brand identities, and communicate it to the world through their products and services, to maximize profits. She is a lawyer, speaker, author, journalist, and recognized thought leader, and trailblazer for her work on Africa’s emerging global fashion and entertainment markets, and the niche practice of fashion law in the United States. She is also the founder and publisher of Ladybrille® Magazine, and an Attorney and Partner at Ebitu Law Group, P.C, where her practice focuses on Fashion, Business, & Entertainment Law and Trials. For more information about her, visit www.msuduak.com.