“Copycat brand” Autry cannot escape a trademark lawsuit waged against it by Reebok. In an order on October 2, Judge Richard G. Stearns of the U.S. District Court for the District of Massachusetts shot down Autry International, S.r.l and Autry USA, LLC’s motion to dismiss the complaint that Reebok lodged against it this spring for lack of personal jurisdiction or, alternatively, for failure to state a claim, determining that the court has jurisdiction over Autry since Florence-headquartered brandoffered up footwear via a Massachusetts-based retailer on more than one occasion. Beyond that, the court further sided with Reebok on the basis that it has sufficiently defined its trademark rights and pled its unfair competition and false advertising claims at this stage.
Some Background: Reebok filed suit against Autry International, S.r.l and Autry USA, LLC (collectively, “Autry”) in May, alleging that the rival footwear-maker has “outright copi[ed]” its trademarks – “with full knowledge of [its] decades-old rights and the tremendous value and goodwill embodied in [those] marks” – in an effort to confuse consumers as to the source of its footwear. In fact, Reebok claims that Autry’s infringement scheme is so rampant that “every single shoe that Autry offers [on its website] bears, without permission, Reebok’s Window Box Mark in order to trade off consumer recognition and goodwill in that nearly forty-year-old trademark.” And that the company goes so far as to include its own name and American flag logo on the allegedly infringing footwear in place is the REEBOK Union Jack mark, which “is often (but not always) inside the Window Box mark on Reebok shoes.”
In a brief order on Friday, Judge Stearns held that as to Autry’s Rule 12(b)(2) motion for lack of jurisdiction, “Autry USA admits that it sold shoes to a Massachusetts-based retailer on two separate occasions.” While it “now attempts to minimize the magnitude of each sale and its participation in negotiating the relevant purchase orders, it cannot escape that fact that, at the end of the day, it knowingly supplied allegedly infringing product to a physical store in Massachusetts which also carried the competing Reebok line,” according to the court. Refusing to grant Autry’s motion on lack-of-jurisdiction grounds, the court deaminated that “these sales suffice to establish relatedness, purposeful availment, and reasonableness.”
Turning to Rule 12(b)(6), failure to state a claim upon which relief can be granted, the Judge stated that this motion “fares no better.” In terms of the false advertising portions of Reebok’s federal unfair competition and false advertising, and Massachusetts deceptive and unfair trade practices causes of action, the court stated that Autry “imposes too high a burden” at the pleading stage.
“It is enough, for present purposes, that Reebok alleges that (1) Autry includes the American flag in its logo to ‘mislead consumers into believing that the shoes they are purchasing are made in the U.S.,’ even though the shoes are manufactured abroad, and (2) Autry’s actions have ‘undermine[d] Reebok’s competitive position’ in the market and lost it ‘goodwill’ and ‘current and prospective customers,’ because consumers may choose to purchase Autry’s shoes, which display an American flag, over Reebok’s similar shoes, which display a Union Jack flag, under the false impression that Autry’s shoes were made in America.”
As for Reebok’s common law trademark infringement and unfair competition cause of action, Judge Stearns states that “contrary to Autry’s assertion otherwise,” Reebok “expressly defines (with both words and images) the relevant marks,” despite Autry’s argument to the contrary.
With the foregoing in mind, the court sided with Reebok and has paved the way for the case to move forward without any early dismissals.
The case is Reebok International LTD., LLC v. Autry USA LLC, 1:23-cv-10966 (D. Mass.).
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