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News article8 September 2021European Innovation Council and SMEs Executive Agency

Sony music suing Gymshark, Nike fighting Customizers, and Canada Goose Suing Goose Country

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Good morning everyone,

Hope you are all doing good. If you had the chance to enjoy some time off, we hope that you enjoyed it. Let’s start with a small recap of what happened in August.

 

Sony music sues Gymshark for copyright infringement

UK-born fitness apparel brand Gymshark is at the heart of a new copyright infringement lawsuit.

Sony Music claims that Gymshark “has achieved its success by infringing sound recordings and musical compositions belonging to a number of different content owners, including SME’s, on a massive scale”.

According to the filing, Gymshark has been promoting its products in videos posted to the likes of Instagram, TikTok, and Facebook, featuring popular sound recordings without authorisation and without paying for the use of these songs.

By using these songs in its Social Media advertising campaings, Gymshark has misappropriated hundreds of the most popular and valuable sound recordings on the market.

Many of the videos were created by Gymshark itself, while others were created by “influencers” that the company partnered with. The influencers post their videos on their own pages while at the same time providing them to Gymshark to repost on Gymshark’s social media pages.

While major labels have licensed Instagram to allow users to use music in their videos for personal use, the lawsuit points out that Instagram’s Terms of Use include Music Guidelines, which state: “Use of music for commercial or nonpersonal purposes in particular is prohibited unless you have obtained appropriate licenses”.

Although Gymshark already tried to negotiate a licence with Sony in the past, no agreement was reached and instead the UK-based company started using the sound recordings without authorisation and without compensating Sony Music.

 

Nike cannot allow “Customizers” to build their businesses off of its trademarks

Nike accuses Customs By Ilene, Inc. (Drip Creationz), of trademark infringement and dilution, and counterfeiting, for offering selling products purporting to be genuine Nike products, but that are, in fact, counterfeits. For example, the company sells “knockoff” Air Force 1-style shoes that it refers to as ‘D1’ shoes, which bear designs that allegedly infringe upon Nike’s trademarks. However, the D1s have crooked proportions, messy stitching, cheap details, and are taller than the real Air Force 1 shoes.

Not only does this company sells counterfeits, but it also sell unauthorised footwear that it markets as handmade “customizations” of Nike’s most iconic products. 

The problem, according to Nike, is that when customizing the shoes, Drip actually deconstructs Air Force 1 shoes and replaces and/or add material to those otherwise authentic shoes. In the process, Drip materially alters the shoes, in ways Nike has never approved or authorised. Specifically, the custom shoes now contain images, materials, stitching, and/or colorways that are not and have never been approved, authorised, or offered by Nike, including fake unauthorised Swoosh designs, as well as third party trademarks and protected images.

Nike considers that this is likely to cause confusion, mistake, and/or create an erroneous association regarding Drip and Nike. In addition, Nike considers that such customization activities interfere with its exclusive ability to choose who to collaborate with, which colorways it releases, and what message its designs convey, affecting Nike’s brand and image.

 

Canada Goose is Suing Goose Country

Canada Goose is suing a similarly-named outerwear company that it claims is intentionally mimicking the “look and feel” of its products and logos. Canada Goose claims trademark infringement, trademark dilution, unfair competition and false designation of origin for selling products that not only bear a similar brand name as Canada Goose but that make use of a lookalike design in an attempt to confuse consumers and benefit from the reputation of Canada Goose products. 

Not only Goose Country adopted a similar trademark but the company has gone one step further by, allegedly, adorning its jackets with a circular patch with a red perimeter on the shoulder of a jacket or coat, which mimics Canada Goose’s practice of featuring a “unique circular patch with a red perimeter” in the same position.  

In addition, Goose Country’s products compete directly with the ones from Canada Goose (both operate in the same market).  

Canada Goose is now asking for monetary damages and injunctive relief as well as an order to transfer ownership of its domain name www.originalgoosecountry.com, as well as any other domain name that incorporates the GOOSE COUNTRY marks and any other mark that is confusingly similar to or derived from the GOOSE COUNTRY marks, to Canada Goose.

 

This is all for this week.

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European Innovation Council and SMEs Executive Agency