Image: Nike

An independent New York-based fashion brand 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. 

Giordano asserts that he first learned about the Nike collab “in or around February, 2020 [when] multiple individuals … congratulated [him] for making a deal with Nike and the Jordan Brand.” Initially confused as to the meaning of the messages, the Faded Royalty founder claims that after an investigation, he came across the Jordan Chicago Collaborators’ Collection, including Hudson’s capsule, and was “flabbergasted to learn that the fruits of his labor were being used without his consent for profits by one of the largest apparel companies in the world.”

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.” 

Faded Royalty’s star logo (left) & Nike/Hudson’s star logo (right)

“The defendants [have] profited off of their illegal and infringing use” of Giordano and Faded Royalty’s logo, the plaintiffs assert, thereby, giving rise to claims of trademark infringement, as well as copyright infringement, as in addition to serving as an indicator of the source of products upon which it appears (i.e., the logo acts as a trademark), Giordano maintains a copyright registration for the original star graphic, which he claims is infringed by Nike and Hudson’s “creation and use and publication of an unauthorized replica and or derivative work of [his] ‘6 point’ star logo.”

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.

A representative for Nike told TFL that the company does “not comment on pending litigation.” A rep for Hudson was not immediately available for comment. 

UPDATED (September 11, 2020): In a filing, dated September 11, counsel for Giordano moved to dismiss the claims “without prejudice and without costs,” albeit only to an extent. While Nike and Cody Hudson remain defendants in the suit, Michael Jordan has been voluntarily dismissed from the case by the plaintiff (potentially as a result of a settlement), as has Mike Pokutylowicz, whose e-commerce site sold some of the allegedly infringing products.

*The case is Giordano, and Faded Royalty, Inc., v. Nike, Inc., Cody Hudson, Michael Jordan, et al., 1:20-cv-04975 (SDNY).