Opinion
Nos. 05 Civ. 3938 (NRB), 05 Civ. 3957 (NRB).
May 18, 2005
Claudia Ray, Esq., Barry Goldstein, Esq., Patricia G. Corley, Esq., Samantha Hetherington, Esq., O'Melveny Myers LLP, New York, New York, Counsel for Le Tigre LLC and LT2 LLC.
Helen Davis Chaitman, Esq., Elizabeth A. Adinolfi, Esq., Phillips Nizer LLP, New York, New York.
Philip E. Klein, Esq., Solomon Liss, Esq., Klein Liss, LLP, New York, New York, Counsel for FeliNESIco and Nesi Apparel Group, LLC.
ORDER
Upon the Motion for Temporary Restraining Order and Preliminary Injunction and the Memorandum of Law and other papers in support thereof, dated April 20, 2005 of Le Tigre LLC and LT2 LLC ("LT2") (collectively, the "Le Tigre Parties"), and the Motion for Temporary Restraining Order and Preliminary Injunction and the Memorandum of Law and other papers in support thereof, dated April 20, 2005, submitted by FeliNESIco, LLC ("FeliNESIco") and Nesi Apparel Group, LLC ("NAG") (collectively, the "Nesi Parties") and the Court having heard oral argument by the parties; and the Court having jurisdiction to consider the various Motions and the relief requested therein pursuant to the Lanham Act, 15 U.S.C. §§ 1051 et seq. and 28 U.S.C. §§ 1331 and 1338(a) and (b); and the parties having shown good cause for the entry of this order, pending a final judgment in this action following a consolidated preliminary injunction hearing and trial on the merits, and
WHEREAS the Nesi Parties have provided to the Le Tigre Parties a complete list identifying (i) all distributors, wholesalers, jobbers, independent contractors, dealers, or retailers to whom the Nesi Parties and their agents, servants, employees, attorneys, successors and assigns, and all persons, firms, and corporations acting in concert with them have sold, agreed to sell, shipped, and agreed to ship, any and all apparel and other items bearing any of the Le Tigre Marks from November 13, 2003, to April 26, 2005; and (ii) the quantity of Le Tigre brand merchandise that was sold and/or shipped or to be shipped to each such entity from November 13, 2003, to April 6, 2005, organized by (a) style number, (b) description, (c) gender, (d) store, (e) state/country, (f) start and cancel date of order, and (g) actual shipping date, and (h) price; and
WHEREAS the Le Tigre Parties having agreed not to interfere with the ability of the Nesi Parties to continue selling products bearing the Le Tigre Marks, subject to the limitations described below; and
WHEREAS the Le Tigre Parties and the Nesi Parties have agreed that during the pendency of these actions they will continue to operate under the terms of the November 13, 2003 license agreement between FeliNESIco and LT2 (the "License Agreement"), except with respect to those matters that are the subject of this Order, as to which the terms of this Order shall govern; it is hereby
ORDERED that the Nesi Parties, pending final judgment in this action, refrain from offering any discounts exceeding 15% off the wholesale list price, to any distributors, wholesalers, jobbers, dealers, or retailers (other than discount stores as provided below) for apparel bearing the Le Tigre Marks, without the Le Tigre Parties' prior written consent, such consent not to be unreasonably withheld, conditioned or delayed; and it is hereby further
ORDERED that the Nesi Parties, pending final judgment in this action, refrain from selling any products bearing the Le Tigre Marks to any discount stores except with respect to discontinued styles, irregulars, or broken sized inventory, or at the end of each season, and at a discount not to exceed 40% off the wholesale list price, without the Le Tigre Parties' prior written consent, such consent not to be unreasonably withheld, conditioned or delayed; and it is hereby further
ORDERED that the Nesi Parties, pending final judgment in this action, refrain from soliciting or entering into any sublicensing or distribution agreements regarding the Le Tigre Marks or products bearing the Le Tigre Marks without the Le Tigre Parties' prior written consent, such consent not to be unreasonably withheld, conditioned or delayed; and it is hereby further
ORDERED that the Nesi Parties, pending final judgment in this action, refrain from drafting, submitting or filing any applications to register the Le Tigre Marks or any variations thereof with the trademark authority of an country or with any entity with power to register trademarks or related intellectual property, including, but not limited to Internet domain names; and it is hereby further
ORDERED that the Nesi Parties provide the Le Tigre Parties with weekly reports identifying (i) all distributors, wholesalers, jobbers, independent contractors, dealers, or retailer to whom the Nesi Parties have sold, agreed to sell, shipped, and agreed to ship, any and all apparel and other items bearing any of the Le Tigre Marks within the previous week; and (ii) the quantity of Le Tigre brand merchandise that was sold and/or shipped or to be shipped to each such entity during such previous week, organized by (a) style number, (b) description, (c) gender, (d) store, (e) state/country, (f) start and cancel date of order, (g) actual shipping date, and (h) price; and it is hereby further
ORDERED that the Nesi Parties and the Le Tigre Parties each refrain from making any statements to any third parties regarding these actions, the License Agreement, or their relationship other than the statement set forth in the attached Exhibit A.
SO ORDERED.