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Settlement reached in sneaker dispute

Black frats, sororities had claimed Converse violated trademark

08:32 AM CST on Thursday, January 4, 2007

By MICHAEL GRABELL / The Dallas Morning News

Six historically black fraternities and sororities have settled with Converse after a three-year legal battle in Dallas over allegations that the company illegally used their colors and founding years to sell a line of sneakers.

The fraternities and sororities are now negotiating a licensing agreement with Converse, meaning that the idea for the sneakers might still be alive, the groups' Dallas attorney said Wednesday.

"They regret that they did it the way they did and want to continue a relationship," said attorney Aubrey "Nick" Pittman. "They recognized the significance that the marks have and realized the impact that the groups have on life in the African-American community."

Converse spokeswoman Cheryl Calegari said the company is pleased that discussions appear to be leading to a positive resolution for both sides. But she added that it was premature to disclose specific terms of the settlement.

The dispute began in fall 2003, when Converse began advertising a line of "GREEKPAK" sneakers with two main colors and a small, embroidered year near the heel.

The fraternities and sororities said those designs matched their traditional colors and founding years, such as the black and gold and 1906 of the Alpha Phi Alpha fraternity and the red and white and 1913 of the Delta Sigma Theta sorority.

Those two groups – along with Alpha Kappa Alpha, Kappa Alpha Psi, Omega Psi Phi and Phi Beta Sigma – sued Converse in Dallas federal court in December 2003, alleging trademark infringement.

But Converse never used the Greek letters or marketed the sneakers as being tied to the fraternities and sororities. The company argued in court papers that the traditional colors and founding years, even when used together, had never been trademarked by the organizations.

U.S. District Judge Jane Boyle dismissed the lawsuit in January 2005, ruling that the fraternities and sororities failed to identify any registrations that had been violated. Last April, the 5th U.S. Circuit Court of Appeals overturned part of the ruling and sent the case back to the district court.

Since then, the groups have been in talks with Converse. The settlement, filed with the court last week, is awaiting the judge's signature. It says that Converse has acknowledged that the fraternities and sororities have exclusive rights to the marks.

Terms of the settlement were not disclosed but do include monetary damages, Mr. Pittman said.

The groups are scheduled to meet with Converse next week to discuss the possible licensing agreement.

The lawsuit seemed potentially disastrous: Would Converse be alienating the same young black men and women it was trying to attract?

Blacks on average spend more on sneakers than whites, according to advertising experts. And Converse is owned by Nike, which makes the enormously popular Air Force 1, one of the top-selling sneakers and a near icon in the hip-hop community.

The fraternities and sororities carry prestige among young black men and women, and their symbols have come to represent the history of African-Americans and the struggle for civil rights.

But the fraternities and sororities said their lawsuit was more about business than race.

"I think it's important for everyone to fully recognize those things that are intellectual properties," said Sam Hamilton, chairman of the organizations' Council of Presidents. "We are pleased that it has been settled in a matter that is mutually beneficial and begins an opportunity for us to discuss ongoing long-term negotiations with one another."

E-mail mgrabell@dallasnews.com

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