The Georgia IP Litigation Blog monitors patent, trademark, copyright, and trade secret cases pending in Georgia federal district courts and in the U.S. Court of Appeals for the 11th Circuit, based in Atlanta. The blog alerts readers to initiation of such cases in the district courts and summarizes relevant orders and opinions from each covered court.
On September 16, 2013, Emory Group, LLC of Spartanburg, South Carolina filed a complaint against Kobty & Keane Custom Apparel, Inc., Aziz Kobty, and Parker Keane, all of Arlington, Texas (collectively, “Kobty & Keane” or “Defendants”), alleging trademark infringement, unfair competition, false misrepresentation and designation of origin, and reverse passing off under Section 43(a) of the Lanham Act, statutory unfair competition and reverse passing off in violation of Georgia’s Uniform Deceptive Trade Practices Act and Georgia’s Fair Business Practices Act, and common law claims for unfair competition, copyright infringement, and unjust enrichment.
Emory Group is a web-based clothing apparel company that offers clothing and other merchandise for sale under a variety of brand names, including the brand names “Geneologie” and “Morgan Row” via its websites morganrow.com and geneologie.com. According to the complaint, Emory Group has used the trademark and brand name MORGAN ROW™ and the Morgan Row trademark logo (pictured right) since at least February 1, 2012 and has both a pending trademark application, USSN 85/577,521 and a pending trademark logo application USSN 85/577,536 for the marks.
Kobty & Keane Custom Apparel is also a web-based clothing apparel company that offers clothing for sale at kobtykeanecustom.com and at facebook.com/KeaneKobtyCustom. The logo used by Kobty & Keane for advertising their clothing apparel is pictured to the left.
The controversy in this case involves certain college and university Greek-letter themed clothing. In its complaint, Emory Group alleges that Kobty & Keane stole or copied certain college and university Greek-letter themed clothing designs and, in some instances, removed the MORGAN ROW™ brand name and trademark, replacing the marks with its own brand name and logo while leaving intact Emory Group’s copyrighted works.
On its website, Emory Group provides the customer with the opportunity to customize apparel by selecting the product style from a variety of shirt styles, selecting the logo design from either a customer provided image or from a number of available Morgan Row designs, and selecting whether to add text with a chosen font. Kobty & Keane also offers customized apparel. However, several of the designs that appear for sale on Kobty & Keane apparel are also available for sale on the Morgan Row web site. One such example is depicted below.
Left: Morgan Row’s website showing multiple design offerings Right: An advertisement from Kobty & Keane’s Facebook using a same design
Emory Group alleges the Defendants’ have copied copyrighted works without license, authorization, sponsorship, endorsement or approval. It further alleges that potential purchasers will be deceived, confused, and misled to believe Defendants’ services are in some manner authorized or otherwise associated with Emory Group and that Defendants are trying to pass off the clothing apparel offered on the Kobty & Keane websites as Morgan Row’s.
Emory Group seeks injunctive relief enjoining use of copyrighted works and passing off (or the reverse) of Defendants’ goods as Emory Group’s, damages to be trebled pursuant to 15 U.S.C. § 1117(a), costs and attorneys’ fees, and punitive damages to deter the alleged willful and intentional copying and deceptive and deceitful advertising pursuant to O.C.G.A. § 51-12-5.1.
The case is Emory Group LLC v. Kobty & Keane Custom Apparel Inc. et al, No. 1:13-cv-03088-WSD in United States District Court for the Northern District of Georgia, Atlanta Division and is assigned to Judge William S. Duffey, Jr.