Appeals Court Reinstates Black Fraternities and Sororities Case against Converse.

DALLAS -- In a major victory for the NPHC's African-American Fraternities and Sororities, the Fifth Circuit Court of Appeals panel agreed unanimously to reinstate a landmark trademark infringement and trademark dilution lawsuit filed by The Pittman Law Firm, P.C. and Davis and Kendall, P.C. on behalf of Alpha Kappa Alpha and Delta Sigma Theta Sororities and Alpha Phi Alpha, Kappa Alpha Psi, Omega Psi Phi, and Phi Beta Sigma Fraternities.

The original case arose out of a complaint filed on December 11, 2003, in the United States District Court for the Northern District of Texas, Dallas Division, on behalf of six predominantly African-American fraternities and sororities against Converse, a manufacturer of sneakers and basketball shoes, alleging federal and state claims of trademark and trade dress infringement, as well as unfair competition. The sororities and fraternities own a series of trademarks and trade dress, some of which contain the founding year(s), colors and identification of the plaintiffs. According to the complaint, Converse produced and marketed a line of athletic shoes called the GREEKPAK Weapon basketball shoe that features a two-color combination associated with one of the organizations and a small embroidered date near the heal of the shoe that corresponds to the founding year of that same organization. The district court granted Converse's motion to dismiss on January 12, 2005.

However, in an opinion just written by the Chief and Presiding Justice of Fifth Circuit Court of Appeals, the Court, citing to the "detailed description of the claimed marks or dress in the plaintiff's complaint," ruled that "the district court's conclusion (to dismiss the case) is difficult to square with the excerpts from the complaint." In finding that the petition clearly demonstrated the required elements for trademark and trade dress infringement, trademark dilution and unfair competition, the high court ruled that the case should not have been dismissed and ordered that it be sent back immediately to the District Court. Converse was also ordered to pay the court costs and filing fees for losing the appeal.

Aubrey "Nick" Pittman, one of the counsel for the Fraternities and Sororities, said, "This represents a major victory for these organizations. Converse flagrantly infringed these trademarks and tried to use its corporate muscle to make money through unfair competition by using the protected property of these groups. Apparently, Converse assumed that it could take rights that did not belong to it without ramifications. It underestimated the fight in these organizations. The court's opinion essentially guarantees these organizations that they will have an opportunity to present Converse's brazen actions to a jury. This opinion will send a strong statement that these groups will not allow anyone to infringe upon their rights and this strong ruling from the appeals court will positively change the dynamics of protection of these organizations' intellectual property rights."

Delta Sigma Theta National President, Dr. Louise Rice, who has followed the lengthy appeal, said of the opinion, "This is a significant victory. Since our founding in 1913, our trademarks have always been recognized and have never been under attack in such a manner (as Converse did). This will send a message to Converse and everyone else that we are committed to undertaking whatever effort is necessary to ensure that our marks are not infringed or diluted."

Samuel Hamilton, Chair of the NPHC Council of Presidents, who also serves as President of Kappa Alpha Psi, said of the opinion, "This opinion delivers a strong blow on our behalf. Perhaps Goliath (Converse) will recognize that our sling shot and a stone, combined with truth, can be lethal and will prevail. I hope Converse and others get the message that we will leave no stone unturned to protect the valuable rights that we have worked so hard to establish."

John S. Kendall, co-counsel for the organizations added, "We applaud our clients for continuing this fight and having confidence in our opinion that this case would be reinstated. It is amazing that Converse and its lawyers would spend over two years and substantial money trying to dismiss this action instead of admitting its infringement and working with these groups to resolve this clear case of infringement."

After hearing from members across the country, many of the groups were considering calling for a world-wide economic boycott of Converse and its parent company, Nike, over what the groups perceived as a clear case of a deliberate attack on the marks of these African-American organizations. Pittman and Kendall added, "If Converse wants to spend another two years fighting this, we are prepared to go full steam ahead. On the other hand, if it is prepared to admit its wrongs and avoid the calls for a boycott, our clients are open to discussing other ways of protecting their rights."

The six plaintiffs are a part of the National Pan-Hellenic Council (NPHC), which is comprised of nine (9) International Greek letter Sororities and Fraternities: Alpha Kappa Alpha Sorority, Inc., Alpha Phi Alpha Fraternity, Inc., Delta Sigma Theta Sorority, Inc., Zeta Phi Beta Sorority, Inc., Iota Phi Theta Fraternity, Inc., Kappa Alpha Psi Fraternity, Inc., Sigma Gamma Rho Sorority, Inc., Phi Beta Sigma Fraternity, Inc. and Omega Psi Phi Fraternity, Inc.

Persons with questions concerning the opinion of the appeals court or the on-going litigation may contact the attorneys for the groups -- Aubrey "Nick" Pittman, The Pittman Law Firm, P.C. 100 Crescent Court, Suite 700, Dallas, TX 75201, 214-459-3454, www.thepittmanlawfirm.com and John S. Kendall, Davis & Kendall, P.C., 225 Washington St., Suite 2200, Chicago, IL 60606, 312-857-1997.