Appeals Court Reinstates Black Fraternities and Sororities Case against
Converse For Immediate Release Monday, April 17, 2006
Contact Information
The Pittman Law Firm, Dallas
Aubrey "Nick" Pittman, 214-459-3454
Email:
pittman@thepittmanlawfirm.com
(BPRW) (BW) (TX-THE-PITTMAN-LAW-FIRM) Appeals Court Reinstates Black
Fraternities and Sororities Case against Converse
(BLACK PR WIRE) DALLAS- (BUSINESS WIRE)--April 17, 2006--In a major
victory for the NPHC's African-American Fraternities and Sororities, the
Fifth Circuit Court of Appeals panel agreed unanimously to reinstate a
landmark trademark infringement and trademark dilution lawsuit filed by
The Pittman Law Firm, P.C. and Davis and Kendall, P.C. on behalf of
Alpha Kappa Alpha and Delta Sigma Theta Sororities and Alpha Phi Alpha,
Kappa Alpha Psi, Omega Psi Phi, and Phi Beta Sigma Fraternities.
The original case arose out of a complaint filed on December 11, 2003,
in the United States District Court for the Northern District of Texas,
Dallas Division, on behalf of six predominantly African- American
fraternities and sororities against Converse, a manufacturer of sneakers
and basketball shoes, alleging federal and state claims of trademark and
trade dress infringement, as well as unfair competition.
The sororities and fraternities own a series of trademarks and trade
dress, some of which contain the founding year(s), colors and
identification of the plaintiffs. According to the complaint, Converse
produced and marketed a line of athletic shoes called the GREEKPAK
Weapon basketball shoe that features a two-color Combination associated
with one of the organizations and a small embroidered
date near the heal of the shoe that corresponds to the founding year of
that same organization. The district court granted Converse's motion to
dismiss on January 12, 2005.
However, in an opinion just written by the Chief and Presiding Justice
of Fifth Circuit Court of Appeals, the Court, citing to the "detailed
description of the claimed marks or dress in the plaintiff's complaint,"
ruled that "the district court's conclusion (to dismiss the case) is
difficult to square with the excerpts from the complaint."
In finding that the petition clearly demonstrated the required elements
for trademark and trade dress infringement, trademark dilution and
unfair competition, the high court ruled that the case should not have
been dismissed and ordered that it be sent back immediately to the
District Court. Converse was also ordered to pay the court costs and
filing fees for losing the appeal.
Aubrey "Nick" Pittman, one of the counsel for the Fraternities and
Sororities, said, "This represents a major victory for these
organizations. Converse flagrantly infringed these trademarks and tried
to use its corporate muscle to make money through unfair competition by
using the protected property of these groups.
Apparently, Converse assumed that it could take rights that did not
belong to it without ramifications. It underestimated the fight in these
organizations. The court's opinion essentially guarantees these
organizations that they will have an opportunity to present Converse's
brazen actions to a jury. This opinion will send a strong statement that
these groups will not allow anyone to infringe upon their rights and
this strong **** from the appeals court will positively change the
dynamics of protection of these organizations'
intellectual property rights."
Delta Sigma Theta National President, Dr. Louise Rice, who has followed
the lengthy appeal, said of the opinion, "This is a significant victory.
Since our founding in 1913, our trademarks have always been recognized
and have never been under attack in such a manner (as Converse did).
This will send a message to Converse and everyone else that we are
committed to undertaking whatever effort is necessary to ensure that our
marks are not infringed or diluted."
Samuel Hamilton, Chair of the NPHC Council of Presidents, who also
serves as President of Kappa Alpha Psi, said of the opinion, "This
opinion delivers a strong blow on our behalf. Perhaps Goliath
(Converse) will recognize that our sling shot and a stone, combined with
truth, can be lethal and will prevail. I hope Converse and others get
the message that we will leave no stone unturned to protect the valuable
rights that we have worked so hard to establish."
John S. Kendall, co-counsel for the organizations added, "We applaud our
clients for continuing this fight and having confidence in our opinion
that this case would be reinstated. It is amazing that Converse and its
lawyers would spend over two years and substantial money trying to
dismiss this action instead of admitting its infringement and working
with these groups to resolve this clear case of infringement."
After hearing from members across the country, many of the groups were
considering calling for a world-wide economic boycott of Converse and
its parent company, Nike, over what the groups perceived as a clear case
of a deliberate attack on the marks of these African-American
organizations. Pittman and Kendall added, "If Converse wants to spend
another two years fighting this, we are prepared to go full steam ahead.
On the other hand, if it is prepared to admit its wrongs and avoid the
calls for a boycott, our clients are open to discussing other ways of
protecting their rights."
The six plaintiffs are a part of the National Pan-Hellenic Council
(NPHC), which is comprised of nine (9) International Greek letter
Sororities and Fraternities: Alpha Kappa Alpha Sorority, Inc., Alpha Phi
Alpha Fraternity, Inc., Delta Sigma Theta Sorority, Inc., Zeta Phi Beta
Sorority, Inc., Iota Phi Theta Fraternity, Inc., Kappa Alpha Psi
Fraternity, Inc., Sigma Gamma Rho Sorority, Inc., Phi Beta Sigma
Fraternity, Inc. and Omega Psi Phi Fraternity, Inc.
Persons with questions concerning the opinion of the appeals court or
the on-going litigation may contact the attorneys for the groups --
Aubrey "Nick" Pittman, The Pittman Law Firm, P.C. 100 Crescent Court,
Suite 700, Dallas, TX 75201, 214-459-3454,
www.thepittmanlawfirm.com and
John S. Kendall, Davis & Kendall, P.C., 225 Washington St., Suite 2200,
Chicago, IL 60606, 312-857-1997.
