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Coogi v. NBA

Author: Jordan Franklin

Contributing Editor: Blaire Farine

This is a tale of why permission, likely in the form of licensing, is often a good idea.

I remember seeing articles on twitter about the new limited edition jerseys the Brooklyn Nets would be wearing in the Fall 2018 season. As soon as I saw the pictures, I immediately drew the connection. The Notorious Big a.k.a. Biggie, is one of my favorite rappers of all time and a Coogi sweater was not only his fashion signature, the clothing line found its name in many of his song lyrics. Brooklyn, which also happens to be Biggie’s hometown, infused the famous sweater line on their jersey. Those jerseys were so nice I wanted one and I don’t even wear jerseys.

Fast forward to March of this year. News breaks that Coogi is suing the NBA and The Brooklyn Nets amongst other people. Now I’m confused. SURELY the NBA and The Nets got permission from Coogi prior to the making of the jerseys. But alas, they did not.

So, Coogi is now suing the NBA, The Brooklyn Nets, Nike—since they manufactured the uniforms—and others for Copyright infringement, trade dress infringement, false designation of origin, trademark dilution, unfair competition and injury to business reputation.

The famous multi-colored Coogi print/pattern in question is registered with the Library of Congress (they are the government entity that houses the Copyright Office) under the title “PEA SOUP.” The “PEA SOUP” registration dates back to 1990. Additionally, Coogi has a trade dress, which can be looked at as a sub category of trademarks, for the colorful and ornamental patterns of their sweaters.

A trade dress applies to essentially the look, aesthetic, and/or packaging. The most common examples I use for describing what a trade dress is, are: (1) No matter where you are in the country, every McDonalds or every Starbucks looks the same…that look/lay out is their trade dress. (2) a robin’s egg blue box and white satin ribbon…Tiffany and Co.’s trade dress. Coogi’s trade dress as been described as, “confetti colored,” “Distinctive curvey patterns,” “colorful asymmetrically designed,” and “eye blinding designs.”

Coogi, made increasing popular in the 90’s largely in part to Biggie (the best part of reading the initial complaint was reading the Biggie lyrics Coogi quoted) and hip hop culture as a whole and has acquired a trade dress and the protections that come with it as a result of that popularity.

That’s just a little background on the issue. Now here is my brief take on it. Coogi, who’s brand popularity has since decreased since the 90’s is not a brand that turns away collaboration opportunities. This was made evident by the collab between Coogi and Puma. This was the perfect opportunity for the NBA and The Nets to do this the right way. What do I mean by the right way? A collaboration agreement for either just that game or the entire season in case they wanted to wear it for more than one game and sell it the entire season. Within that agreement would have been some sort of non-exclusive license granting the NBA and The Nets use for that particular purpose of course for a fee. Even though there are fees associated with most licenses, especially for the use of intellectual property, that cost is less that the cost of a lawsuit.

The NBA claims the Nike manufactured jerseys were produced and sold as part of the leagues “City Edition” products. The jerseys were to “reflect certain historical and cultural elements related to a basketball team’s hometown.” They even named the print “Brooklyn Camo.” Here’s where this gets even worse for the defendants (i.e. Nike, The Nets and the NBA). The suit reveals a proposed collaboration between Coogi and Nike from 2016 that was never finalized. Within those negotiations, Nike became aware of the copyright Coogi had in the patters and the design/description of their trade dress and had access to such information and registrations.

Nike was aware of Coogi’s intellectual property rights, had actual access to those rights, but still used their work or infringing work, without permission. Willful infringement can cost a guilty party significantly more.

But, when massively successful conglomerates such as the NBA are involved, it is unlikely that these types of disputes even make it to a court room without a settlement. This is a prime example. In September 2019, an agreement was reached and the case was dismissed with prejudice and without costs to either party. The parties had 30 days to reopen the case, which did not occur.

Although this was an interesting dispute, when these type of cases actually reach a courtroom, the guilty party is usually left with a large bill and imminent rebranding.

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