Hanesbrands v Keds, LLC and SR Holdings, 1:20-cv-11354-IT (D Mass May 21, 2021)

Hanes, successor to Champion, has been licensing the CHAMPION brand in relation to shoes, from Keds, for decades.  Keds has been selling KEDS CHAMPION in the U.S,. and several other jurisdictions. Hanes was free to use in non-U.S. jurisdictions where Keds had not acquired superior rights. The licensing agreement had included a moratorium during which Hanes could not contest Keds’ “historic use” of the CHAMPION mark in non-U.S. jurisdictions. Hanes alleges that Keds exploited the moratorium by deliberately expanding into various jurisdictions such as Taiwan, Austria, and Korea.  I guess it depends on what the meaning of historic” is.

In addition to various contract causes, Hanes sues Keds on trademark, relying on the extraterritorial effect of the Lanham Act.

The court reviews all the old extraterritorial favorites: Person’s, Steele v. Bulova, Vanity Fair, and Cecil McBee. and concludes:

Text of Hanes v Keds:

hanes v keds us ma extra decision

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