Antitrust Law Daily Wrap Up, ADVERTISING—C.D. Cal.: Designer’s brother preliminarily enjoined from misappropriating ads, endorsements, (Jul 29, 2014)

By Greg Hammond, J.D.

Brian Lichtenberg—a clothing and accessory designer, who parodies designer brands—successfully obtained a preliminary injunction against his brother, restraining him from misappropriating ads and using false celebrity endorsements. The federal district court in Los Angeles determined that there was a high likelihood of success that Lichtenberg would prevail on his unfair competition claim, which accuses his brother of stealing his celebrity publicity photos, and using them to sell pirated products (Brian Lichtenberg, LLC v. Alex & Chloe, Inc., July 25, 2014, Pregerson, D.).

Background. According to the court, Lichtenberg’s designs frequently parody designer brands, such as Hermès and Gucci. In January 2012, he developed the design “Ballin” as a parody of luxury brand “Balmain.” His brother, Christopher Lichtenberg (CL), worked as a part-time contractor with Lichtenberg at that time, and assisted in graphic design and promotional work. CL allegedly: (1) copied and claimed ownership of the “Ballin” design; (2) ordered identical products from Lichtenberg’s manufacturer, under his own label—Alex & Chloe, Inc. (A&C); (3) used Lichtenberg’s confidential customer lists to sell A&C’s “Ballin” products; (4) listed the products for sale prior to Lichtenberg’s release; and (5) appropriated celebrity photographs wearing Lichtenberg’s products and claimed that they endorsed A&C. Lichtenberg filed suit, alleging—in part—unfair competition and false designation of origin, trade dress infringement, and trade dress dilution. Brian Lichtenberg moved for a preliminary injunction.

Misappropriated ads. According to the court, the Lanham Act “prohibits the use of false designations of origin, false descriptions, and false representations in the advertising [sic] and sale of goods and services,” including false endorsements. Brian Lichtenberg alleged that CL stole his press and publicity photos of celebrities wearing his products, such as Justin Bieber and Nina Garcia, and copied and pasted them to the A&C website, making it appear that the celebrities endorsed CL’s products. The court concluded that due to consumers’ confusion and displeasure, the harm to Brian Lichtenberg, and declarations from retailers whose customers demanded refunds, Brian Lichtenberg demonstrated a high likelihood of success on the merits of his unfair competition claim. Consequently, CL was restrained from using photos of celebrities wearing Lichtenberg’s products in any manner.

Trade dress. Lichtenberg’s trade dress dilution and infringement claims, however, were not found to have a likelihood of success on the merits. Specifically, the court determined that Lichtenberg failed to demonstrate that: (1) buyers mentally associate “Ballin” products with Lichtenberg or (2) the products’ trade dress are sufficiently known to the general public. Consequently, the court denied preliminary injunction for those two claims.

The case number is CV 13-06837 DDP (DJWx).

Attorneys: David Gregory Graziani (Law Offices of David Graziani PC) for Brian Lichtenberg LLC. William R. Bailey (Bailey Law Corp.) for Alex & Chloe Inc. and Marked Showroom LLC.

Companies: Brian Lichtenberg LLC; Alex & Chloe Inc.; Marked Showroom LLC

Cases: Advertising CaliforniaNews