The above lawsuit filed September 22nd, 2010 in Federal Court in Los Angeles was brought to my attention today and I immediately got excited for four key reasons. First, as a trial lawyer of African heritage, it is not often I see African litigants in the courtroom. The African culture tends to favor letting things be and not ruffling feathers; so much so Africans in the USA have their legal rights trampled upon but do nothing about it. I love that Chris Aire bucks the trend and essentially says, “you infringe on my trademark rights, guess what, I will see you in court!” He then of course has the audacity to slap 17 of the world’s major brands with a lawsuit. Like seriously? This is where I along with my fellow trial lawyer colleagues reading this have a good laugh. Gotta love it! It is what courtroom drama is made of.
Second, I love that the Plaintiff firm, the firm representing Chris Aire is also co-owned by an African, Attorney George E. Akwo. When lawsuits lof this magnitude are filed, the usual names on the complaint are those associated with traditionally white owned large firms. It is indeed nice to see an African Plaintiff take his business to an African owned law firm.
Third, this case is war! Have you seen the named defendants in this case? Louis Vuitton, Swatch? Sweet! Finally, and the fourth reason I am excited about this case is, for our purposes, I think the case allows me to delve into other aspects of Trademark infringement suits and the tremendous costs associated with it, a nice follow up for my article on the T.I Akoo Infringement suit.
Let’s get into it, shall we.
Plaintiff: Solid 21 Inc., is the parent company for the Chris Aire brand. It is a Nevada incorporated company of which Chris Aire serves as President.
Defendants: ROLEX; LVMH on behalf of HUBLOT and LOUIS VUITTON; BREITLING; RICHEMONT INTERNATIONAL SA on behalf of BAUME & MERCIER, INTERNATIONAL WATCH COMPANY, MONTBLANC; ULYSSE NARDIN, INC.; MONTRES CORUM SARL; THE SWATCH GROUP on behalf of: BLANCKPAIN, OMEGA SA; FRANCK MULLER; CHOPARD; MAKUR DESIGN, INC.; GRAHAM-LONDON; KOBOLD WATCH COMPANY LLC, PIERE KUNZ USA INC; EBEL; BULGARI on behalf of GERALD GENTA and DOES 1-200.
Chris Aire is suing for trademark infringement, unfair competition, false description, and injunctive and declaratory relief.
The Key Facts that Creates the Infringement Suit
“SOLID 21 is the owner of the registered and incontestable trademark RED GOLD for, inter alia, fine jewelry and watches made from a special alloying of gold with a distinct color made into fine jewelry in connection with the manufacture, marketing and advertising of watches, necklaces, bracelets, rings, anklets, cuff links, ornamental hair pins, belt buckles of precious metal, tie clips and pegs and earrings known as “RED GOLD.” The trademark is capsulated in the following trademark information and in the trademark certificate set forth below:
Solid 21 Incorporated and its President and renowned jeweler, Chris Aire currently holds the U.S. Trademark Registration No. 2,793,987; Mark: RED GOLD; Registered: December 16, 2003; and has the official trademark certificate.”
If you said “huh?” to the above, here is what it means in English. It means Chris Aire was the first person to use his mark RED GOLD and as of December 16th, 2003, registered it AND now you have 17 other brands using the same or similar RED GOLD mark which is causing or is likely to cause customer confusion with the Chris Aire RED GOLD mark.
Damages i.e. What Chris Aire Wants
Aire wants the court to stop further infringement of his trademark. This is known as injunctive relief. He also wants equitable relief (what the court deems fair), compensation and monetary damages, costs and disbursements.
What Law Governs?
With trademarks, there are three key laws that govern. Federal law aka as the Lanham Act; b) State statutes (law); and c) common law that deals with trademark and unfair competition. Essentially, this means the law here is developed on a case-by-case basis.
How does this all Shake Out with the Chris Aire Suit?
The law says if Chris Aire is the first business to use RED GOLD in the marketplace, then he owns RED GOLD and his rights are superior to that of other subsequent users.
“Customer Confusion” is at the Heart of Trademark Infringement Suits
Whether customers are likely to be confused is one of the central issues in a Trademark infringement suit. Courts will look at whether the subsequent aka Junior user to Chris Aire has similar goods. They will look at the territories that the alleged infringer markets and the intent of the alleged infringer. Courts pay attention to who used the mark first.
How Does the Court Determine What Qualifies as a Trademark?
I’ve gone through the analysis in the past but even more succinctly in this scenario, the court needs to determine:
- Does the Chris Aire RED GOLD mark have an inherent distinctiveness in the marketplace? OR
- Has Chris Aire been using the mark for a while now so that it has acquired distinctiveness where if the public sees it, they say, “Aha, that is a Chris Aire brand?”
Typical Remedies in Infringement Suits
Chris Aire is asking for Injunctive relief, among other damages. This is a common remedy and is costly. Imagine Rolex or Louis Vuitton having to pull millions of units of their products off the shelves if the court found there is indeed an infringement of the Chris Aire RED LOGO mark?
If the Court finds that these 17brands deliberately copied Aire’s RED GOLD, guess what, the court can order they pay a large amount in damages. How do you prove the intentional copying element? You look to see if RED GOLD was listed on the Federal Trademark Principal Register at the time the 17brands allegedly copied it.
With such big names named in this suit, I expect and legally your attorney if you have a legal suit of this nature should and can anticipate the defendants to argue that they can own the same mark, among other arguments.
Can Other Brands Own the same or similar RED GOLD mark?
Yes. The key thing is to show that it does not create customer confusion. In Chris Aire’s situation, it might be tough for the defendants because: 1) They have the same underlying products; 2) they appear to distribute and market in the same channel and countries. So arguably, there is a higher probability of customer confusion. Even if the defendants could make such argument, on Chris Aire’s part, an argument on the role of the internet which all of the brands use to advertise could potentially render the defense weak.
Majority of suits filed do not necessarily go to trial but are negotiated and resolved through settlements. Trademark infringement suits are no exception. Chris Aire filing a suit puts others on notice not to infringe on the brand’s RED GOLD trademark. Further, with the presumption that the Hollywood brand has the money to fight the big dogs, then there is a higher likelihood given the seeming favorable case to Aire that the case will resolve i.e. settle.
That is it from me, for now. It will definitely be a case I will be watching closely.
Read about the case here.