Reebok International Ltd., LLC et al. v. Autry USA LLC et al. (D. Mass. 23-cv-10966).

Reebok sued Autry in May 2023, accusing them of knocking off Reebok shoes and substantially copying Reebok’s trademark elements.  Earlier, Judge Stearns had granted Reebok’s motion to disqualify Autry’s then counsel for having previously represented Reebok in similar matters in Europe.  He also denied Autry’s motion to dismiss.  While he did not find a waiver on personal jurisdiction through prior counsel’s appearing to challenge the disqualification motion, he did find that personal jurisdiction existed through Autry’s having twice sold shoes to retailers in Massachusetts.  He further found the complaint stated a claim on which relief could be granted, finding allegations that the inclusion of an American flag in Autry’s logo falsely advertised the shoes as being made in the USA, even though the shoes are manufactured abroad.

On February 7, 2024, Reebok moved to amend the complaint to add claims against two Autry products that were released after the lawsuit had been filed.  Judge Stearns granted Reebok’s motion, finding there was no undue or prejudicial delay between the launch of the new shoes in November and Reebok’s motion in February.  The motion to amend fell within the time set forth in the scheduling order to amend, and Reebok asserted that it spent the time between release and its motion investigating the viability of the new claims.  Reebok had further agreed to construe the existing discovery requests to cover the new allegations, and discovery remains open through the end of May, further reducing any potential prejudice.  Finally, evaluating Reebok’s proposed claims under the liberal Rule 12(b)(6) standard – whether the proposed new claims allege factual matter that, if taken as true, would state a claim of relief that is plausible on its face – he determined that the proposed new claims should not be refused as futile.