Surf Chick Heads to Court
Who can be a surf chick?
That answer will be decided by the U.S. District Court in Los Angeles when it hears in March a trademark infringement lawsuit filed by Ventura, Calif.–based Kat House Productions LLC against New York’s Christian Dior Inc. and France’s Christian Dior Couture SA.
Kat House President Kat Merrick said she was using the “surf chick” trademark on T-shirts and boardshorts as early as 1985 and that she has been selling merchandise nationally and internationally since June 1996. Kat House registered with the U.S. Patent and Trademark Office (USPTO) the phrase “surf chick” in April 2002 and “surf chick get wet” in January 2003. It also registered “surf chick” in Mexico and Japan. Dior aplied the “Dior surf chick” logo on Summer 2004 tank tops, silver necklaces and other products.
The suit, filed in July 2004, alleges that “Dior is knowingly and intentionally using the [surf chick] mark in an effort to confuse the public into believing that Kat House is endorsing or sponsoring Dior’s surf chick apparel line.”
What is at stake is more than a name. The outcome also can affect the long-term sales of privately held Kat House, which has 20 employees, sells to some 600 stores worldwide, and regularly receives fan mail from girls and women who buy its $50 boardshorts and $20 surfboard leashes, among other items.
“When we start pursuing licensing agreements for Japan and the EU, how do you convince people that you are the original when [Christian Dior] Couture has gone there before you?” said Merrick, who declined to disclose Kat House’s sales.
As surfwear flows into the mainstream and competitors jockey for position in the $6 billion global surf market, it seems inevitable that companies will step on each other’s toes. A recent noteworthy case was the one filed between Quiksilver Inc.’s Roxy surf brand and Kymsta Corp.’s Roxywear juniors line, during which a federal judge concluded that the two labels had to coexist.
Kat House’s lawsuit is interesting because a tiny operation rarely takes the offensive and sues a behemoth such as Dior, said Greg Weisman, a partner at Silver & Freedman PLC in Los Angeles.
“David vs. Goliath battles are very expensive,” he said. “Certainly a victory by a small surf company over a large European label, if that comes, will be a tremendous show of support for the industry. It will show that small Southern California labels won’t be pushed around.”
Dior, a unit of LVMH Moeuml;t Hennessy Louis Vuitton, posted sales of 13.21 billion euros in 2004 for fashion, leather goods and other businesses. In 2003, the United States represented Dior’s largest market, accounting for 25 percent of sales.
Philip Gottfried, a lawyer representing Dior at Amster, Rothstein & Ebenstein LLP in New York, referred questions about the lawsuit to Dior’s office. Dior did not return calls for comment.
Veteran surf industry executive Steve Pinkow acknowledged that fashion houses and surfwear companies all compete for the consumer’s dollar but doubted that high-end labels will be serious players in the surf market. The president of Split Clothing Inc. in Irvine, Calif., said the display of surfboards and surfwear at recent runway shows represents the high-end fashion labels’ way of addressing what might be for them a trend for a season. “That comes and goes,” Pinkow said. “I don’t think Christian Dior will be Roxy anytime soon.”
Kat House is aggressively seeking compensation and damages from Dior Inc. and Dior SA. In addition to a permanent injunction and restraint from using the “surf chick” mark on Dior’s goods, ads and Web site, Kat House also seeks a constructive trust that will allow the court to hold all proceeds, assets and benefits that Dior obtained for the “surf chick”–branded products until the dispute is resolved. Furthermore, Kat House requests monetary damages of no less than $20 million and that any award of damages and profits be tripled in the case of intentional infringement.
Another equally important issue that Merrick said she wants to clarify is confusion among her customers. Merrick said it was a teen-age girl who alerted her to Dior’s “surf chick” ad that ran in a fashion magazine in June 2004.
“You guys are sellouts,” the teen-ager wrote in an email to Kat House. Merrick called the teen-ager and explained that the ad did not come from her company.
Merrick said she checked out the magazine ads and visited the Dior boutiques in Beverly Hills and Costa Mesa, Calif., to see for herself the “surf chick” photographs.
She said she sent a cease-and-desist letter to Dior two weeks later and filed the lawsuit on July 14, 2004. Los Angeles’ Holland & Knight LLP is serving as Kat House’s legal counsel.
Two days after the lawsuit was filed, Dior’s law firm wrote a letter noting that Dior had instructed all boutiques to remove items with the “Dior surf chick” designation and had eliminated the items from its Web site. Since then, Dior SA filed to cancel Kat House’s trademark with USPTO and, along with Dior Inc., moved to stay litigation.
Merrick said applications for the “surf chick” trademark are pending in Costa Rica, China, the European Union and Australia. This lawsuit applies only to the United States, but Merrick said the company has already started the process for protecting the trademark in Japan.
