SB Designs v. Reebok Int’l, Ltd., 338 F.Supp.2d 904 (N.D. Ill. 2004) (full-text).
Factual Background Edit
The "Crossover King" trademark is a basketball player in action with a crossover dribble, moving ball, and name "Crossover King." Gary and Maurice Sidney own the "Crossover King" trademark and their company, SB Designs, markets basketball apparel with it. SB Designs and Reebok discussed, but never came to an agreement, allowing Reebok to use "Crossover King" with Iverson endorsements, although Reebok had physical access to the trademark's art pieces.
Trial Court Proceedings Edit
When commercials and sponsored websites — such as those of Iverson's promotional company, "Crossover Promotions" — began using the "Crossover King" trademark with Iverson, SB Designs sued Reebok for trademark infringement. Reebok argued there was no direct infringement and it should not be held secondarily liable (vicarious or contributory) for Crossover Promotions' or any other alleged third party website infringers.
The district court found that Reebok never used the "Crossover King" trademarks in its commercials, and so granted Reebok's motion for summary judgment. The court also ruled that Reebok was not vicariously liable because the "mere existence of a relationship" or "prior dealings" with alleged infringing websites is not enough. Also, there was no evidence Reebok owned, endorsed, or otherwise affiliated itself with these websites.
There was no contributory liability because there was no evidence that Reebok supplied products to an alleged infringer; or that Reebok knew or should have known of any infringement; or that Reebok controlled or monitored alleged infringing websites or materials.