Philadelphia-based Urban on Friday pushed a California federal court to dismiss March allegations by Coachella that the retailer is trying to capitalize on the annual music event’s image with several “Coachella”-themed items of apparel sold through its subsidiary, Free People.
Although Urban is the sole owner of Free People and its roughly 1,400 retail locations, it said it should not be a defendant in Coachella’s lawsuit “whatever the merits,” according to a dismissal motion.
“Apart from conclusory assertions that need not be accepted as true, plaintiffs do not and cannot allege any factual matter to suggest that Urban and Free People do not operate and should not be recognized as distinct legal entities,” Urban said.
The company went on to argue that Coachella’s suit “at most” supports the “existence of the typical ties between Urban and Free People that are typical of corporate parents and subsidiaries,” which are, in Urban’s estimation, not enough to show contributory infringement.
As for Urban’s alleged purchase of the word “Coachella” for use in search engine keyword results set to trigger adverts for Free People, also paid for by Urban, the retailer admitted this would count as allegedly unlawful conduct, were it not for newer legal standards.
“Under the now established standards governing Internet keyword advertising, the text and surrounding context of Urban’s resulting advertisement… repudiates any plausible allegation that this non-trademark use of ‘Coachella’ is likely to result in consumer confusion or assumptions as to the source of Urban’s advertised goods,” the retailer said.
With that, it asked that all causes of action against Urban be dismissed, and that Coachella not be allowed to amend its complaint, leaving it to be dismissed in its entirety.
Counsel for Coachella could not be reached for comment.
When Coachella launched its suit, it said its “famous” and long-registered trademark was being improperly used to sell four Free People products — the “Coachella Boot,” “Coachella Mini Dress,” “Coachella Pocket Tank” and “Coachella Valley Tunic.”
Coachella pointed out that the items not only used the trademark in their titles, but as a keyword trigger in online advertising and in display URLs, leading Google searches for “Coachella clothing” to lead first to advertisements for the allegedly infringing products.
The festival, which has licensing deals with H&M and Pandora AS for accessories and apparel incorporating “Coachella” and its mark, accused Urban of making an effort to “misdirect” shoppers from legitimately branded Coachella merchandise.
Coachella also noted in its complaint that Urban ignored a cease and desist letter sent last year over its use of the mark, and that the demand “was not the first time” it had to reach out to the retailer over infringement issues.
For More, See: