A federal judge in the Northern District of Illinois has granted Reebok International’s motion for summary judgment against another apparel and athletic shoemaker, which claimed that Reebok violated its trademark.
Plaintiff SB Designs had claimed that Reebok was liable for the alleged infringement by Crossover Promotions and various other websites, which it claimed were related to Reebok. However, the court found little evidence to prove such a relationship, under either contributory or vicarious theories of liability.
By way of background, SB Designs registered the CROSSOVER KING trademark on February 24, 1998. The image portrayed a basketball player in the action of a crossover dribble with a moving ball image and the trade name “CROSSOVER KING” underscoring the logo.
At approximately the same time, SB Designs began approaching Reebok with an offer to sell the rights to the concept. The company even shared some of the art ideas with Reebok, which never quite embraced the idea of purchasing the idea.
However, in March of 1999, SB Designs allegedly discovered various internet sites that promoted basketball star Alan Iverson, Reebok and the I3 Apparel line using its trademark. It also found Iverson’s Crossover Promotions website, which it claimed was sponsored by Reebok.
SB Designs sued, claiming that Reebok violated the Lanham Act, 15 U.S.C. §§ 1114 and 1125. Reebok moved separately to dismiss the instant complaint, and the court converted the motion to a motion for summary judgment.
The court summarized Reebok’s arguments as: “(1) plaintiffs fail to allege that Reebok itself used plaintiffs’ putative trademarks; and (2) plaintiffs fail to produce evidence that Reebok is secondarily liable for the allegedly infringing actions of Crossover Promotions or the third-party websites.”
In its review, the court promptly agreed with Reebok, as the plaintiff conceded that there was no direct infringement by Reebok. Turning to Reebok’s alleged secondary liability for the alleged infringement by third-parties Crossover Promotions and various other websites, the court conducted a more exhaustive review.
“A party that does not directly infringe on another’s mark may be found secondarily liable for the infringement, under either a contributory or vicarious theory of liability. Hard Rock Cafe Licensing Corp. v. Concession Services Inc., 955 F.2d 1143 (7th Cir. 1992),” wrote the court.
Regarding vicarious liability, the court found that the plaintiffs “fail to raise a genuine issue of material fact as to the existence of a relationship between Crossover Promotions and Reebok”
The court next turned to the question of contributory liability, which comes into play when “the defendant either intentionally induces a third party to infringe the plaintiff’s mark or supplies a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 853-54, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982); Hard Rock Cafe, 955 F.2d at 1150 (applying the Inwood Laboratories standard).
“Plaintiffs’ argument that Reebok is contributorily liable for the content of other third-party websites is less developed than its arguments regarding Crossover Promotions’ conduct, and therefore even less persuasive. Several of the websites cited by plaintiffs contain fan messages and postings that refer to Iverson and other basketball players as a ‘crossover king,’ or otherwise use the phrase ‘crossover king.’ One of the websites also offers Reebok sneakers and apparel for sale. Another displays the text ‘Allen Iverson – Crossover King’ and images of a Reebok logo and an unidentified basketball player performing a crossover dribble. Plaintiffs do not explain how these websites infringe their mark. More significantly, plaintiffs present no evidence that Reebok sponsored or was in any way associated with any of the websites attached as exhibits. Plaintiffs also present no evidence that Reebok provided any products sold or displayed on any of the websites.”
Thus, the court granted Reebok’s motion for summary judgment. SB Designs et al. v. Reebok et al.; N.D. Ill.; No. 03 C 3672; 3/1/04
Attorneys of Record: (for plaintiffs) Christopher V. Langone, Jeffrey Naffziger, Craig Rein Frisch, Langone Law Firm, Chicago, IL. (for defendants) Charles A. Laff, Brian J. Lum, Michael Best & Fredrich LLC, Chicago, IL.; Camille M. Miller, Cozen & O’Connor, Philadephia, PA. Lori S. Nugent, Cozen O’Connor, Chicago, IL. Theodore William Pannkoke, Cozen & O’Conner, Chicago, IL.