An independent New York-based fashion brand Faded Royalty is suing Nike and Michael Jordan for a whopping $30 million for allegedly hijacking its unique star-shaped logo and using it in a Jordan brand collaboration collection tied to the 2020 NBA All-Star Game. According to the complaint that it filed in a New York federal court on Monday, Faded Royalty claims that Nike, Michael Jordan, himself, and artist Cody Hudson, among others, are on the hook for copyright and trademark infringement for “intentionally and willfully creating apparel and other promotional goods using its ‘6 point’ star logo.”
In the newly-filed complaint, Faded Royalty and its founder Rocco Giordano claim that “beginning in the year 2000, they created and began using their ‘6 point star’ logo on all of [the brand’s] apparel, whether it be on the tags, embroidered into the apparel, or printed right on the clothing itself,” which they claim to have used consistently and “without interruption” in the 20 years since then. Against that background, Giordano asserts that Nike – and in particular, its Jordan brand – began using a copycat logo in connection with a collaboration with Chicago-based artist Cody Hudson without ever seeking or receiving his authorization to do so.
Neither Faded Royalty nor Giordano claim that they ever consented to the use of the logo by Nike or Hudson in connection with the Jordan Chicago Collaborators’ Collection, which goes beyond the apparel items to “sculptures, coffee cups, [and] books,” and they argue that such unauthorized use has “caused confusion in the marketplace as to who truly created the six-point logo, and is negatively affecting their business.” This is particularly true, according to the plaintiffs, as Nike has “publicly and falsely claimed,” including in its own press release, “that the collaboration, including the star logo is Cody Hudson’s own exclusive work of creativity.”
In terms of the trademark infringement claim, that is a common law (as opposed to federal) one, as while Giordano maintained a registration with the U.S. Patent and Trademark for a number of years beginning in 2012, the registration was cancelled in 2019 “due to not filing a maintenance statement.” Giordano asserts that despite the cancellation of the registration, “The mark has not been abandoned, and has been used since the year 2000, without interruption,” meaning that he and his company still enjoy rights in the mark for use on garments and accessories regardless of the status of the registration. (And that is true, as trademark rights in the U.S. are generally dependent upon actual use of the trademark at issue and not on the ownership of a registration).
In addition to trademark and copyright infringement causes of acton, the plaintiffs assert claims of false designation of origin, unfair competition, unjust enrichment, and deceptive practices under New York’s General Business Law, and claim damages of $10 million – trebled, for a total of $30 million. They are also seeking injunctive relief to permanently bar the defendants from further infringing the star logo on its products, which are currently available for purchase on its website.
The case is Giordano, and Faded Royalty, Inc., v. Nike, Inc., Cody Hudson, Michael Jordan, et al., 1:20-cv-04975 (SDNY).
Source: https://www.thefashionlaw.com/