Annie Sloan Wins Preliminary Injunction on Reverse Passing Off Claims Against Distributor

On October 12th, U.S. District Judge Mary Ann Vial Lemmon of the Eastern District of Louisiana entered a preliminary injunction order against Jolie Home, LLC and other defendants accused of trademark infringement by Annie Sloan Interiors, the U.K.-based makers of Annie Sloan® Chalk Paint®. The preliminary injunction orders the defendants to cease their “reverse passing off” of Annie Sloan® products as Jolie Home products and their distribution of advertisements and labels for Jolie Home paints which claim to use the same formula as Annie Sloan® Chalk Paint® and used the trademarked phrase “chalk paint” in a non-fair use manner.

Annie Sloan brought its trademark claims against Jolie Home and Jolie Design & Decor, formerly a distributor of Annie Sloan® Chalk Paint®, after it won at district court on summary judgment regarding the termination of its distribution agreement. The agreement was for a perpetual term and not a fixed term of years and Annie Sloan sought to terminate the agreement after Jolie Design began taking actions that flew in the face of the terms of that agreement, such as selling Annie Sloan® Chalk Paint® on e-commerce sites like Amazon.

Following that summary judgment, Annie Sloan then gave six months notice to Jolie Design that the distribution agreement would be terminated. While Annie Sloan was seeking the termination of the distribution agreement, Jolie Design and its operator Lisa Rickert created a new Jolie Home entity which negotiated with an Annie Sloan Chalk Paint® manufacturer and began to market a paint product which Annie Sloan alleged infringed upon both its trademarks and trade dress behind the Chalk Paint® product.

Andy Lee, partner at Jones Walker LLP and lead counsel representing Annie Sloan in the case, remarked that it was very unusual that a former distributor would look to become a manufacturer-competitor after a distribution agreement was ended. “A typical distributor that’s been terminated might find another product to sell, quietly moving on and not getting themselves into a trademark infringement situation.” By entering the preliminary injunction preventing the infringing Jolie Home product from coming to market, Lee said that the court prevented Jolie Home from trading off on Annie Sloan’s reputation.

The day prior to the entering of the preliminary injunction, Judge Lemmon filed an order and reasons analyzing both Annie Sloan’s motion for a preliminary injunction and Jolie Home’s motion to partially dismiss an amended complaint. This filing discussed evidence that Jolie Home deliberately sought to copy Annie Sloan’s trade dress including the signature-style font for the brand name directly above the word “PAINT” in all capital letters, all in black writing on a white background. Judge Lemmon also noted evidence presented at trial which showed Jolie Home’s intent to copy Annie Sloan including communications with a public relations firm which advised Jolie Home to “look to convert the [Annie Sloan] brand’s popularity” and to “maximize brand alignment to amplify consumer awareness.”

Along with the trademark and trade dress claims, the court also enjoined Jolie Design and the other defendants from engaging in reverse passing off. Passing off involves situations where a party sells a product it made itself in packaging which identifies it with a different brand; if Jolie Home sold paint that it made as Annie Sloan Chalk Paint®, that would have been considered to be “passing off.” Reverse passing off occurred when Jolie Home took authentic Annie Sloan Chalk Paint® and pictures of furniture painted with the Annie Sloan product and marketed those as being authentic Jolie Home articles. Lee noted that one of the pictures used to determine the reverse passing off claim depicted a table and chairs. That picture had been previously used on Jolie Design’s Instagram feed where the paint was identified as Annie Sloan Chalk Paint®, but that same picture was later used in a Jolie Home brochure where the furniture was identified as being painted with Jolie Home’s paint product.

A trial regarding permanent injunction is scheduled to be held in June 2019 although Jolie Design has already appealed the district court’s preliminary injunction to the Court of Appeals for the Fifth Circuit. Lee noted that the standard of review for the appellate court was abuse of discretion which is typically deferential to the district court judge. “I’m not prejudging the outcome but I think you’ll see on appeal that the judge did a very thorough job and saw the evidence firsthand,” Lee said. “If Judge Lemmon got the law wrong, then it’s an issue, but our view is that she got the law right.” On November 20th, Annie Sloan also filed a motion for contempt against the defendants on allegations that they’ve already violated the preliminary injunction. The motion for contempt is set for a mid-January 2019 hearing date.


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