Sukumar v IOC, 21cv215-GPC (AGS) (SD Cal June 1 2021)


Plaintiff ordered three commemorative replica stopwatches from Omega for $350K. The watches and customized pouches were to be engraved with the Olympic Rings logo (the original stopwatch had been used in the 1932 Olympics).  Plaintiff was dissatisfied with the final product. Omega “rejected any attempt to resolve the issue and refused to refund the purchase.” Plaintiff requested the right to obtain create substitute engraved pouches, proposing that he use the same third party Omega had used to create the pouches it had sold Plaintiff. However,  Omega indicated that it did not have the authority to allow the plaintiff to affix the Rings logo to the pouches. Plaintiff sought direct permission from the IOC, owner of the Rings logo, to use the logo but IOC didn’t respond. The decision doesn’t indicate as such, but it may be the case that Plaintiff intended to re-sell the stopwatches, thus the concern that there be no dispute as to his right to affix the rings to the pouches. I mean, who needs three commemorative stopwatches at $115K per.

Plaintiff brought a declaratory judgment against the IOC, seeking confirmation that he could utilize the logo (apart from a separate lawsuit against Omega).

From the decision:

At bottom, Plaintiff is a consumer who purchased collectible Omega stop watches
engraved with the Olympic Rings as well as pouches and ribbons embossed with the
Olympic Rings, and because he was not satisfied with the pouches and ribbons that
Omega produced, he seeks to independently have the pouches and ribbons with the
Olympic Rings made either through the third party used by Omega or an independent
third party. However, to do so, he must seek permission from the intellectual property
holder, the IOC, and not by filing a declaratory judgment lawsuit. Plaintiff acknowledges
that all rights to the Olympic Rings belong exclusively to the IOC and the Olympic Rings
may only be used “with the express prior written consent of the IOC.”  Therefore, his declaratory relief action is merely seeking an answer to
whether he may use the Olympic Rings on the pouches and ribbons in lieu of obtaining
prior written consent from the IOC. That is not a proper use of the DJA.
Therefore, even if the Court granted Plaintiff leave to amend to add the allegation
that he has a reasonable apprehension that the IOC will bring a trademark infringement
suit, those allegations are not sufficient to establish a case or controversy under the DJA.

Text of decision: sukumar v ioc sd cal DJ