Ralph Lauren has settled the lawsuit that was waged against it early this year over its allegedly unauthorized use of NBA hall-of-famer George Gervin’s name in connection with a Polo brand sneaker. Gervin filed suit against the Ralph Lauren in February, arguing that the New York-based brand violated his right of publicity and engaged in trademark infringement and false designation of origin by offering up a high-top sneaker that not only bears the “Gervin” style name but that mirrors the shoe he debuted in connection with a partnership with Nike back in 1973. In doing so, Gervin argued that Ralph Lauren “willfully and without authorization” used his name, likeness, and persona for commercial purposes, and “subverted [his] exclusive ownership right to control the licensing of his name, image, likeness, and persona in the market.”
In an order on June 6, as first reported by TFL, Judge Gregory Woods of the US. District Court for the Southern District of New York conditionally discontinued the case without prejudice for 30 days while the parties work to submit their Stipulation of Settlement and Dismissal to the court. In the event that their settlement is not consummated and a stipulation is not filed with the court, Judge Woods held that counsel for Gervin “may apply by letter for restoration of the action to the active calendar of this court.”
The Background: In furtherance of his right of publicity, trademark infringement, and false designation of origin lawsuit, Gervin argued that Ralph Lauren used his “name, image, likeness, and persona for commercial purposes” by way of the “Gervin Mid” sneaker; made “false or misleading representations of fact to falsely imply the endorsement of [its] business and products” by Gervin; and infringed the “Gervin” trademark, which the former basketball star claims that he has common law rights in for use “in connection with the promotion of products and services in the sportswear industry.”
While the bulk of Gervin’s claims center on Ralph Lauren’s allegedly authorized use of his name, which he claimed was likely to confuse consumers as to the source/nature of the footwear, Gervin pointed to the lookalike nature of the sneakers, themselves, as further proof that the fashion brand was looking to trade on his likeness to sell its footwear. (Since Nike is the owner of the Blazer sneaker design and the rights holder, Gervin does not make any design-centric infringement claims.) “There can be no doubt … given the unique history of Mr. Gervin’s association with the high-top shoe and the Nike’s Blazer’s popularity, that Ralph Lauren was exploiting [his] unique and commercially valuable identity, name, and likeness to sell its products,” Gervin asserted. He further argued that the “similarity” between the Nike Blazers that he wore during his career, Nike’s Blazer Mid ’77 Vintage sneakers (which were inspired by those worn by Gervin), and Ralph Lauren’s Gervin Mid sneakers is “obvious.”
A Note on Resale … In an interesting point in his complaint, Gervin argued that his counsel attempted to resolve the matter with Ralph Lauren before filing suit, resulting in Ralph Lauren “changing the name of its line of sneaker (in part).” However, this was not enough, according to Gervin, because the damage was already done. “Due to the pervasive and permanent nature of the internet, the digital footprint damage had already been done and the Ralph Lauren Mid is forever algorithmically linked to Gervin’s name.”
More interestingly (in my opinion) is Gervin’s reference to the resale market in connection with his right of publicity/trademark claims. The former basketball star argued that despite Ralph Lauren’s move to change the name of the sneaker, “as of the date of this filing, secondary sellers [were] continu[ing] to sell the Gervin Mid” under the original name. It is worth noting, of course, that the resale market – which generally muted compared to years prior – plays a particularly relevant role when it comes to footwear, especially compared to other types of products.
Motion to Dismiss: Ralph Lauren responded to Gervin’s lawsuit with a partial motion to dismiss last month, in which it argued that Gervin failed to state a right of publicity claim under New York law because he has never been domiciled in New York, and “New York law requires that a plaintiff is domiciled in New York in order to sustain a private cause of action under New York’s right of publicity laws.” The fashion brand also maintained that Gervin failed to state a trademark infringement claim since he “has not properly pled that he owns valid and protectable trademark rights in the Gervin mark.” In particular, Ralph Lauren stated that Gervin’s complaint “does not allege: (i) the date when Nike ceased to market the Nike Blazer style shoes in partnership with [Gervin]; (ii) that [Gervin] has ever used or licensed use of the mark GERVIN as a brand name to identify the source of any sneakers or other products in any geographic location; or (iii) that [Gervin] has made any commercial endorsements of any products since the strategic partnership with Nike in the 1970s.”
Ralph Lauren also asserted in its dismissal bid that “contrary to the allegations in the complaint, the style name “Gervin-mid” was not chosen in an attempt to exploit [Gervin’s] name or identity, or to otherwise imply that [he] endorsed the POLO branded shoes.” In fact, Ralph Lauren argued that “other brands have also used the name Gervin as part of a style name for a shoe, such as Adrienne Vittadini and Skechers,” and that it “did not utilize any image or likeness of [Gervin] in connection with its promotion or sale of the shoes, and the shoes were not the subject of any media or promotional campaign by [Polo].”
Still yet, in an effort to chip away at Gervin’s trademark claims, the company said that it “never received any reports that consumers believed that its shoes were associated with, sponsored by, or endorsed by [Gervin].”
We never got a substantive response from the court to Ralph Lauren’s motion to dismiss, as on June 6, the magistrate judge assigned to this matter “informed the court that this case has settled,” prompting the court’s dismissal order.
The case is Gervin v. Ralph Lauren Corporation, 1:23-cv-01284 (SDNY).