Coachella Music Festival Sues Urban Outfitters

–by Irem Karacal

Sources:

Kat Greene, Coachella Hits Urban Outfitters, Free People with TM Suit, Law 360, (Mar. 14, 2017, 8:46 PM EDT), https://www.law360.com/articles/902025/coachella-hits-urban-outfitters-free-people-with-tm-suit.

Ryan Reed, Coachella Organizers Suing Urban Outfitters for Trademark Infringement, Rolling Stone, (Mar. 17, 2017), http://www.rollingstone.com/music/news/coachella-suing-urban-outfitters-for-trademark-infringement-w472583.

Cait Munro, Coachella Suing Urban Outfitters is the Most Hilarious Lawsuit of 2017 Thus Far, Bullet Media, (Mar. 17, 2017, 1:08 PM), http://bullettmedia.com/article/coachella-suing-urban-outfitters-hilarious-lawsuit-2017-thus-far/.

Coachella Music Festival, LLC v. Urban Outfitters, Inc., 2:17-CV-02027 (C.D. Cal. filed Mar. 14, 2017).

Coachella, https://www.coachella.com (last visited Apr. 3, 2017).

15 U.S.C. §1114(1) (2005).

15 U.S.C. § 1125(c) (2012).

Abstract: Coachella Music Festival, LLC filed suit against Urban Outfitters, Inc. in the U.S. District Court for the Central District of California accusing Urban Outfitters of violating Coachella’s Trademark of the term “Coachella.”

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On March 14, 2017 Coachella Music Festival, LLC filed a complaint in the United States District Court for the Central District of California alleging that the popular retail store Urban Outfitters, LLC and its Free People unit of the brand had infringed on Coachella’s trademark.

Coachella, the popular music and arts festival that occurs annually in the Coachella Valley of Southern California, is known for attracting popular musicians, artists, celebrities and other “chic festival goers” every year. The Coachella festival hosts multiple bands, artists, food vendors, and stages attracting nearly 600,000 attendees annually. Coachella and Goldenvoice, LLC, the promoter for Coachella, own numerous registrations for the famous Coachella marks and use the marks in connection with their goods, services, and apparel. Coachella and Goldenvoice sell sponsorships and license the use of the marks to others for services and apparel, however they are very selective in the entities they chose to allow to use the Coachella mark.  Previously, Coachella has allowed the retailer H&M to license the mark and the two groups collaborated to form an exclusive “Coachella” collection for H&M.

The popularity of the event has prompted retail stores to target customers every Spring by marketing directly towards the festival-going crowd or others who may wish to draw on the fringed jackets, crocheted tops, frayed denim, and nonchalant vintage aesthetic. The popular retail stores, Urban Outfitters and Free People, bought the keyword “Coachella” so when online shoppers search the term “Coachella clothing,” Urban Outfitters and Free People’s products and websites appear.  Coachella and Goldenvoice have not authorized the affiliation and have not licensed the Coachella trade name to Urban Outfitters and Free People for use. Essentially, Urban Outfitters and Free People are misdirecting shoppers using the keyword to trigger advertising so that shoppers will be led to Urban Outfitter and Free People’s websites that sell their apparel with the unauthorized Coachella label. Coachella alleges that Urban Outfitter and Free People’s use of the term is a violation of the Coachella trademark and is likely to cause confusion of affiliation.

Coachella’s complaint alleges a cause of trademark infringement under 15 U.S.C. §1114(1). A trademark violation occurs when (1) a plaintiff has registered their trademark, (2) defendant has used the trademark, and (3) defendant’s use creates a likelihood of confusion. Here, Coachella has registered their mark and retained the trademark and service mark rights to the Coachella, Coachella (stylized mark), and Coachella Valley Music and Arts Festival. To satisfy the “use” requirement, the trademark must be used in commerce. The redirection to Urban Outfitters and Free People’s retail sites with the search word Coachella and the distinct use in commerce in their advertising and of marketing under Coachella and “Coachella Bella” as alleged here suffice as uses in commerce. Regarding the likelihood of confusion, a court will consider a multitude of factors including the similarity of the marks and similarity of the goods and services offered.  Urban Outfitters and Free People have used the identical mark, Coachella, and have used it in apparel, which is a similar good to Coachella’s own use of the mark.  In addition to trademark infringement, Coachella’s complaint also alleges a dilution cause of action under 15 U.S.C. §1125(c).

The complaint concludes with a request for relief including punitive damages, attorney costs, an award of all profits from Urban Outfitters and Free People’s sales to Coachella, and a permanent injunction enjoining and restraining Urban Outfitters and Free People from continuing to sell and market items under the name Coachella. This is neither party’s first instance in discussion on trademark violations. However, this complaint coincides with the beginning of the Coachella festival on April 14, 2017. With the beginning of the festival fast approaching and festival-goers seeking the perfect Instagram worthy outfit, the court’s decision regarding Coachella’s complaint will have an impact on future retail and marketing opportunities surrounding the event.

Posted in Intellectual Property, Legal Pulse