Martha Stewart, Emeril Lagasse and the Home Shopping Network have been selling counterfeit German cutlery, according to a German trade association asking a federal judge in Miami for an injunction.
The Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid filed a motion for a preliminary injunction, asking U.S. District Judge Kathleen M. Williams to order Stewart’s companies, which bought Lagasse’s brand, and HSN to stop selling cutlery “bearing trademarks which are indistinguishable from the Chamber’s registered certification mark.”
The German region east of Duesseldorf is home to many small companies that use the Chamber’s certification mark on their products. For example, Henckels and Wusthof are renowned companies that properly label their products and packaging with the Solingen mark, according to the association’s amended complaint.
The trade association cited many exhibits to show the defendants promoted fake Solingen cutlery to profit from its reputation without the Chamber’s permission. One exhibit is a brochure for Emeril-Wusthof cutlery that quotes Lagasse saying, “The only knives that make Emeril say, ‘Bam!’”
Another exhibit is a book forward allegedly written by Lagasse that describes a trip to a knife museum in Solingen, Germany, and states, “It was on that visit that I realized knives had an incredible history worth studying and getting involved in.”
In the defendants’ response prepared by Andrew Bray of Vernis & Bowling in North Miami, Lagasse concedes the forward contains the museum trip reference. However, “Emeril Lagasse has no recollection of authoring said foreword.”
The trade association brought the lawsuit in September, accusing the cable television celebrities, their companies, HSN and SED International Holdings Inc. of federal trademark infringement, counterfeiting, false designation of origin and common law unfair competition.
Represented by Catherine Hoffman of Mayback & Hoffman in Fort Lauderdale, Fla., the trade association seeks $24 million in damages. She had no comment by deadline.
An amended complaint filed November 6 alleges the defendants willfully promoted, advertised, distributed and sold at least a dozen different types of cutlery and knives bearing the association’s trademark name Solingen.
Hoffman claims the defendants never asked a fundamental question: Why were the products marked China on one side and Solingen Germany on the other?
Solingen, the association insists, has been renowned for its cutlery, knives and scissors for eight centuries. Only products produced in Solingen, Germany, that meet requirements set forth under a German law called the Solingen Decree may bear the name. Further, the trademark has been registered in the United States since 1974.
The defendants’ answer filed December 5 acknowledges, “They are not licensed by the plaintiff to use the Solingen certification mark.”
The German association claims it became aware of the counterfeits last spring and began buying the products as part of its investigation. It accuses the defendants of procuring inferior steel products from Chinese suppliers.
The defense response said, “SED believes that the cutlery is at least in part manufactured in China, but otherwise the defendants lack sufficient information to admit or deny allegations as to how and where said cutlery is made.”
Despite making some admissions about the procurement of products, marketing and sales, the defendants rejected the German association’s demand for damages.
Judge Williams ordered the parties to file a joint pretrial conference report by January 11.