SAN DIEGO, April 6, 2015 /PRNewswire/ -- Former San Diego Chargers football standout and current entrepreneur and TV personality Shawne "Lights Out"® Merriman and his company Lights Out Holdings, LLC, today moved for summary judgment against Nike in their ongoing legal battle. The motion, filed in the United States District Court, Southern District of California (Case No. 3:14-CV-00872-JAH-NLS) by Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC seeks $18 million in statutory damages as well as Nike's gross profits on the false endorsement claim, along with attorney's fees.
"After I was given the nickname 'Lights Out' ® in high school, I decided to create a brand while I was at the University of Maryland. From 2002-2005 I sold approximately 2000 t-shirts printed with the Lights Out ® logo and the money helped pay my way through college," said Merriman. "I've carefully grown and developed that brand ever since, but Nike still insists on using it."
The motion requests that the court decide the pending lawsuit on summary judgment based on undisputed facts according to the lawsuit. In the alternative, the motion requests summary adjudication on the issues it raises.
Merriman acquired the trademark for Lights Out ® in 2007 (U.S. Trademark Registration No. 2,885,212) and since it has been registered for so long, the Lights Out ® mark became incontestable on September 15, 2010. According to the lawsuit, Nike, which is known for developing product lines associated with famous athletes, knew of Merriman's Lights Out ® brand when it signed with Merriman in 2006.
According to the filing, Nike's Lights Out apparel line consists of 56 separate products for both men and women and is quite successful. Summary judgment is sought on both Nike's infringement of the federally registered mark and on Shawne Merriman's false endorsement claim. A false endorsement claim is brought under the Lanham Act and prohibits "the use of any symbol or device which is likely to deceive consumers as to the association, sponsorship, or approval of goods or services by another person."
In celebrity endorsement cases such as this one, the term "mark" applies to the celebrity's persona. Merriman has a highly visible persona due to his time in the NFL and his subsequent television jobs and charitable works. He was also a prominent endorser of Nike's products for a number of years. He is probably most recognizable to sports and athletic enthusiasts, which is the market Nike's Lights Out targets, according to the filing. "Under the law of false endorsement, likelihood of customer confusion is the determinative issue" according to the court documents.
The motion also notes that Nike's actions were willful, and done despite expressly deciding not to obtain rights to the Lights Out® trademark from Merriman. The motion describes Nike's actions as "blatant counterfeiting".
Despite many opportunities to resolve the matter without litigation, Nike has continued to substantially infringe the Lights Out® trademark.
About Shawne Merriman
Shawne Merriman (https://twitter.com/shawnemerriman) was given the nickname "Lights Out"® in high school for his hard-hitting style of play. He knew right away that "Lights Out" was more than just a nickname, and set out to parlay the success of the Light Out® trademark into a globally recognized luxury lifestyle brand that features affordable items for all.
Merriman had an amazing career in the NFL, playing with both the San Diego Chargers and the Buffalo Bills. Merriman is a three-time NFL Pro Bowler and NFL All Pro and was named the 2005 AP NFL Defensive Rookie of the Year. Merriman is currently a television sports analyst. He has taken a special interest in contributing to the Salvation Army, Standing Up For Kids and Feeding America while establishing the "Lights On Foundation" in an effort to help children and families in need.
For more information on Lights Out Brand visit www.LightsOutBrand.com
SOURCE ML Strategies