The veteran men’s wear designer is retaliating against JA Apparel with a countersuit that charges that latter misappropriated Abboud’s publicity rights and is interfering with the launch of his new men’s wear line, Jaz.
The suit, which names JA Apparel CEO Marty Staff as a co-defendant, seeks $93 million in royalties for unauthorized use of his Abboud’s reputation, endorsement and publicity rights. Specifically, the complaint—filed by Abboud’s attorneys, Arnold and Porter LLP—claims that since Abboud left the company in 2005, the latter has created a number of advertising campaigns that create the impression that Abboud still works for JA Apparel. The complaint cites as an example a slogan for an ad that read, “Do U Know Joe?” and the Web site www.DoYouKnowJoe.com.
Although JA Apparel owns the Joseph Abboud trademark, the counterclaim states the company has “unlawfully traded upon and commercially exploited Abboud’s individual reputation as a fashion designer, his publicity rights, and his personal celebrity status in the fashion world, for their own profit use and economic benefit.”
The countersuit also alleges that JA Apparel and specifically Marty Staff have impeded the launch of Abboud’s latest men’s wear line, Jaz, which was unveiled to DNR in early August. The complaint says Staff contacted one of Abboud’s new business partners and tried to dissuade him from continuing the relationship with Abboud.
The counterclaim charges Staff and JA Apparel with false endorsement, false advertising, violation of New York civil rights law, and unfair competition.
JA Apparel declined to comment but noted in a statement: “We believe Mr. Abboud’s counterclaim is without merit and it’s important to note that JA Apparel employees have always conducted themselves with the highest degree of professionalism with regard to Mr. Abboud’s return to the marketplace.”
Joseph Abboud could not be reached before press time.
The move is an aggressive response to the suit JA Apparel filed against Abboud on Sept. 4, which charged that the designer’s intention to use his name to promote his new line is an infringement of the Abboud trademark, which JA Apparel owns. The company is seeking a permanent injunction preventing Abboud from using his name in association with the marketing or promotion of his new line Jaz, as well as monetary damages.
Tensions have been rising between the two parties since Abboud launched his new men’s wear line last month. During that time, he told the press that he might use “A new composition from designer Joseph Abboud” as a tagline for Jaz.
JA Apparel, which is now owned by J.W. Childs Associates, shot up a warning signal, running ads in DNR that read, “The finest trademark lawyers in the world wear Joseph Abboud.”
A month later, JA Apparel’s lawyers Kaye Scholer LLP filed a complaint noting when Abboud sold his trademark in 2000, he gave up his rights to use the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud” or “anything similar thereto or derivative thereof.”
Abboud has maintained that he has a right to use his name for publicity purposes. “Just like an author writing a book or a director making a film, the public has the right to know who is creating something,” he said in a recent interview with DNR. “I’m not using Joseph Abboud as a trademark; I’m using it as my name. By no means do I want to create any confusion in the marketplace between Jaz and JA Apparel’s product.”
JA Apparel’s suit also claims Abboud violated his non-compete agreement by beginning work on Jaz before the agreement expired on July 13. Abboud’s counterclaim denies all allegations.
This is not Joseph Abboud’s first legal wrangling with JA Apparel. After selling his trademarks for $65.5 million in 2000 to then owner-GFT, Abboud fought with JA Apparel’s management for creative control for the label, which led to the designer’s first lawsuit against the company. In it, he claimed he had been duped into selling his trademarks.
That suit was dropped when J.W. Childs Associates purchased JA Apparel and with it the Abboud trademarks in 2004. That deal marked the arrival of Marty Staff, who had masterminded the sale even as the legal battle with GFT loomed, and was subsequently able to bring Abboud back into the fold as the company’s chief creative director.
But the good times didn’t last. Contention between the two parties precipitated Abboud’s departure in July 2005, at which time his non-compete agreement kicked in.
The case, on an accelerated schedule, now moves to discovery with a trial date set for Dec. 17.
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