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March 2015

Gordon & Rees Team Obtains Reversal of Preliminary Injunction in Trademark Infringement Dispute

On March 3, 2015, a three-judge appellate panel of the Ninth Circuit Court of Appeals issued a unanimous decision reversing a preliminary injunction against the sale of certain cable jewelry, issued by the District Court prior to our involvement, by the Firm’s client, ALOR International Limited, as well as upholding denial of other preliminary injunctive relief against it. ALOR is a well-known San Diego-based jewelry design, manufacturing, and distribution company locked in a bitter dispute with fellow luxury goods merchant Philippe Charriol International (“PCI”) involving claims of trademark infringement, copyright infringement, and breaches of a licensing agreement between the two companies. Gordon & Rees substituted in as counsel in the case for prior counsel Jones Day shortly after the now-defunct preliminary injunction against cable was entered. While continuing to handle the underlying litigation at the District Court level, an appellate team consisting of Richard Sybert, Kimberly Howatt, Hazel Pangan, Justin Aida, and Amanda Abeln prepared an extensive series of briefs in consolidated appeals arising out of PCI’s multiple motions for preliminary injunctive relief, some of which were denied, but one part of which was granted to enjoin ALOR’s sales of certain designs of cable jewelry in North America.

PCI appealed the denial of its first preliminary injunction motion, which sought to enjoin ALOR’s foreign sales of its own copyrighted, designed, and manufactured cable jewelry. The Ninth Circuit affirmed the District Court’s denial of the first motion, holding that PCI did not prove a sufficient nexus between ALOR’s foreign sales of the accused jewelry to U.S. commerce as required under the Lanham Act. Both PCI and ALOR appealed the denial in part and the grant in part of PCI’s second motion for preliminary injunction; the motion was granted in part by the District Court on the stated ground that PCI had established a likelihood of success of succeeding on its breach of contract claims, which were predicated on the validity of PCI’s claimed trademark for cable jewelry. The ensuing preliminary injunction forbade ALOR from using PCI’s marks or selling jewelry bearing those marks, including a registered trademark for cable design.

On appeal, the Gordon & Rees team obtained a complete victory, sustaining the denial of the unsuccessful portions of PCI’s motions by the District Court, and obtaining a unanimous reversal of the portion of the preliminary injunction that had been granted. Oral argument before the appeals panel in Pasadena, which was handled by partner Richard Sybert, lasted a full hour and was streamed live on YouTube. The Ninth Circuit’s written decision concluded that the parties’ Jewelry License Agreement did not include the contested cable design mark, but only the word marks expressly listed in the contract’s schedule of licensed marks. Additionally, contrary to the district court’s findings, the Ninth Circuit stated that any prohibition of sales of similar designs by ALOR did not extend past the contract’s term. The reversal, as well as the Ninth Circuit’s ruling as to the scope of the license agreement, should materially strengthen ALOR’s hand in the underlying litigation.

Kimberly D. Howatt
Hazel Mae B. Pangan
Richard P. Sybert



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