A federal judge has ordered a former Oscar de la Renta Ltd. neckwear licensee to pay the company roughly $1 million for breaching a licensing agreement for the “O Oscar” trademark.
This story first appeared in the April 23, 2009 issue of WWD. Subscribe Today.
Judge Richard Sullivan awarded the damages in a ruling filed April 17 in U.S. District Court in Manhattan, after granting Oscar de la Renta’s motion for summary judgment on a breach of contract claim against Richmond, Calif.-based Mulberry Thai Silks Inc.
The designer brought the complaint against its former licensee, which did business as Mulberry Neckwear, in May 2008, shortly after Phillips-Van Heusen Corp. acquired the assets of the tie maker. In the suit, Oscar de la Renta said the sale violated the companies’ five-year licensing agreement, which had been slated to last through 2012, and that Mulberry missed making minimum royalty payments.
Because Mulberry violated the agreement, Oscar de la Renta argued the agreement entitled it to the sum of the minimum royalties, which would have been paid over the life of the contract, or a little more than $1 million.
Neither Mulberry chief executive officer Henry Jacobson nor attorneys representing the company returned calls seeking comment on the judgment.
The tie supplier had argued that Oscar de la Renta took “unfair advantage” of its sale to Phillips-Van Heusen when it terminated the agreement. It alleged the designer was attempting to double its fortunes by seeking a new licensee even as it sought damages from Mulberry.
A court can issue a summary judgment when a judge determines a full trial is not necessary to decide the matter before it.
Oscar de la Renta’s initial complaint also alleged trademark infringement and unfair competition. The two sides are currently trading evidence on those claims and are due before the court for a pretrial conference on July 14.
PVH acquired Mulberry Thai Silks’ assets one year ago. The deal gave it the neckwear rights to brands including Kenneth Cole New York, Kenneth Cole Reaction, Liz Claiborne and Sean John.