This past summer in an attempt to sell a collection of orange and blue accented Nike sneakers – from the Beaverton, Oregon-based brand’s React Presto to its Air Max styles – in more than 500 stores across the U.S., Champs looked to “the most important and influential” surfing films of all time for inspiration. What was born was a campaign called “Endless Summer,” complete with posters and social media promotions that featured Nike’s name alongside a graphic of a “stylized blue wave with a large orange sun.”
In both name and design, the campaign was a clear take on the seminal 1966 film, The Endless Summer. The problem with that, according to Bruce Brown Films, LLC, the company founded by The Endless Summer filmmaker Bruce Brown, and tasked with merchandising and licensing the intellectual property of the Endless Summer film and its iconic posters? Neither Nike nor Champs licensed the trademark-protected “Endless Summer” name or the trade dress-protected graphics – namely, “a series of stylized blue waves with a large orange sun” – associated with it before they launched their nation-wide campaign.
With that in mind, Bruce Brown Films filed suit against Nike, Champs, and Champs’ parent company Footlocker in a federal court in California this week, accusing the sportswear entities of “knowingly” and “impermissibly trad[ing] on the fame and goodwill associated with [the Endless Summer] intellectual property in [their] unauthorized use” of Bruce Brown Films’ trademarks.
According to Bruce Brown Films’ complaint, “Beginning in or about May 2019 until August 2019, Champs and Nike used [its] Endless Summer trademark along with distinctive elements of [its] Endless Summer poster image to conduct a sales promotion relating to Nike shoes offered by Champs through its website and in all 529 Champs retail stores throughout the U.S.”
Despite being put on notice of such alleged infringement by way of the cease and desist letter that counsel for Bruce Brown Films sent to Champs, demanding that they cease their use of the trademarks, the defendants “continued their infringing conduct,” nonetheless, Bruce Brown Films asserts.
In addition to maintaining rights in the Endless Summer film, itself, Bruce Brown Films claims that it oversees that “Endless Summer Brand,” which “continues to be a highly profitable property for purposes of licensing goods and services” more than 50 years after the film was first released. As a result of various licensing deals, “many different products featuring Endless Summer Brand are available to the public, including, apparel and accessories.” And beyond that, it has also licensed “the use of the Endless Summer brands in connection with promotional and media uses, including retail services and media promotion rights.”
Given the existing market for licensed products bearing the Endless Summer name and relevant graphics, Nike and Champs not only “traded off the goodwill associated with The Endless Summer by using the Endless Summer Brand in connection with sales and offers to sell shoes and other goods … in direct competition with [Bruce Brown Films],” they used the mark in a manner that “is likely to confuse consumers as to [Bruce Brown Films’] authorization, association with or endorsement of [their] goods, retail stores and online stores,” thereby, running afoul of trademark law.
As a result, Bruce Brown Films sets forth claims of trademark infringement and dilution, as well as unfair competition, and is seeking monetary damages and injunctive relief to bar Champs and Nike from engaging in further infringing acts, all while pitting itself against the $135 billion behemoth that is Nike.
*The case is Bruce Brown Films, LLC v. FootLocker Inc et al, 2:20-cv-02553 (C.D. Cal.).
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