FC Online Marketing, Inc. v. Burke's Martial Arts, LLC et al

Filing 62

OPINION & ORDER: SO ORDERED that (1) the branch of defts' motion seeking dismissal of plaintiffs trade dress claim pertaining to its Website pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is granted and so much of plaintiffs t rade dress claim as pertains to its Website is dismissed in its entirety with prejudice for failure to state a claim for relief; (2) the branch of defts' motion seeking dismissal of plaintiffs trade dress claim as pertains to its Store Trade Dre ss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is treated as a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure and summary judgment is granted dismissing plaintiffs trade dress claim as pertains to its Store Trade Dress in its entirety with prejudice; (3) defts' motion pursuant to Rule 12(b )(6) of the Federal Rules of Civil Procedure is otherwise denied; and (4) plaintiffs motion for a preliminary injunction pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal Rules of Civil Procedure is denied in its entirety. Ordered by Judge Sandra J. Feuerstein on 7/8/2015. (Florio, Lisa)

FlLED
IN CLE:Rt'.'S OFf'ICE
U S DISTRICT COURT E D N Y

,!UL 08 Z015

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

---------------------------------------------------------)(

LONG ISLAND OFFICE

FC ONLINE MARKETING, INC.,
Plaintiff,
OPINION & ORDER
14-CV-3685 (SJF)(SIL)

-againstBURI<E'S MARTIAL ARTS, LLC and
JOHN JACOB BURKE,
Defendants.

----------------------------------------------------------)(
FEUERSTEIN, J.
I.

Introduction
On June 11, 2014, plaintiff FC Online Marketing, Inc. ("plaintiff') commenced this

action against Burke's Martial Arts, LLC ("BMA") and John Jacob Burke ("Burke")
(collectively, "defendants"), asserting claims for copyright infringement under the Copyright Act
of 1976 ("the Copyright Act"), 17 U.S.C. §§ 101, et seq.; trademark infringement under the
Lanham Act, 15 U.S.C. §§ 1114, 1125, et seq.; cybersquatting under the Lanham Act, 15 U.S.C.
§ 1125(d); and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). On November
13, 2014, plaintiff filed an amended complaint, inter alia, adding claims for trade dress
infringement under the Lanham Act, 15 U.S.C. §§ 1114, 1125, et seq. Pending before the Court
are: (1) defendants' motion to dismiss the amended complaint in its entirety as against Burke,
and to dismiss plaintiffs copyright and trade dress infringement claims against BMA, pursuant
to Rnle 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim for relief; and
(2) plaintiffs motion pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal
Rules of Civil Procedure for a preliminary injunction enjoining defendants "from the sale of
1

*

services and goods that infringe [plaintiffs] copyrighted website content, [plaintiffs]
trademarked ILoveKickboxing.com mark ("the Mark"), and [plaintiffs] ILoveKickboxing
franchisee's trade dress[;]

* * * [from] any unauthorized use of the aforesaid website content or

Mark[;] and from cybersquatting via the use of the infringing domain name
'ILove2Kickbox.com."' For the reasons set forth below, defendants' motion is granted in part
and denied in part and plaintiffs motion is denied.

II.

Background
A.

Factual Background
I.

Allegations in Amended Complaint

Plaintiff "is a corporation that provides website design, search engine optimization, lead
generation and other online marketing services and products to its weight loss through fitness
licensees and franchisees." (Amended Complaint ["Am. Compl."], '1[3).
BMA is a limited liability corporation that provides kickboxing classes in the State of
Rhode Island. (Am. Compl., '1[4). Burke is the "Managing Member" ofBMA. (Id., '1[5).
Plaintiff"owns a website entitled I Love Kickboxing Carle Place, located on the internet
at www.ilovckickboxingcarleplace.com (hereinafter referred to as 'Website')." (Am. Compl., 'If
10). According to plaintiff, "[t]he Website contains 'protectable elements' afforded copyright
protection,

* * * includ[ing], but not limited to, the unique written content, images, graphics, and

***expressions set forth in the Website." (!fl, '1[12). Plaintiff received a Certificate of
Registration from the United States Copyright Office indicating, inter alia, that registration had
been made for the Website, effective October 20, 2012. (!fl, '1[13, Exhibit ["Ex."] A). Plaintiff

2

alleges that defendants infringed upon its copyright "by adapting [its] Website content ('the
Work') and releasing said adaptation ('Infringing Content') on its company website, located on
the Intemet at the Infringing Domain Name[,]" Chl:., '1[15), www.ilove2kickbox.com, (&, '1[2).
Plaintiff also owns the trademark ILoveK.ickboxing.com ("the Mark"). (Am. Compl., 'If
19). Plaintiffs CEO, Michael Parella ("Parella"), is "the driving forc[e] behind the Mark[] [and]
is a top gun fitness consultant and thought leader." (Id.) According to plaintiff, "Parella's
notoriety [sic] stems in part from running [plaintiff's] iLoveK.ickboxing.com fitness franchise
('ILKB')[,]" (!QJ, which "has generated over 100,000 enrollments for schools around the world
in its first two years of operation." (MJ On or about April 23, 2013, the Mark, consisting "of a
winged heart with boxing gloves hanging on it behind the text 'iLoveK.ickboxing.com[,]"' (&,
Ex. F), was registered with the United States Patent and Trademark Office ("USPTO").

~'

'If

20, Ex. F). According to plaintiff, it "has used the Mark in commerce on, and in connection
with, the sale of its services on hundreds ofwebsites ('the Works' or 'Works') that bear the
Mark." ili\,, '1[21, Ex. G). Plaintiff alleges that defendants infringed upon its Mark "by
registering a domain name ('ILove2K.ickbox.com ') strikingly and confusingly similar to [its]

**

* Mark and adopting a confusingly similar trademark, releasing said adaptation ('Infringing
Mark') on its company website, located at 1Love2Kickbox.com." ilil,, '1[23, Ex. H).
According to plaintiff, it "became aware of Defendants' use of the Infringing Content
[and the Infringing Mark] on or about June 2, 2014." (Am. Compl., '1['1[16, 24). On that same
date, plaintiff: (1) sent "a first notification of copyright infringement" to defendants, (&, '1[17,
Ex. C); and (2) sent a "takedown notification" pursuant to the Digital Millennium Copyright Act,
("DMCA"), 17 U.S.C. §§ 512(c)(3) and (d)(3), to defendants' "Intemet hosting provider

3

('GoDaddy')." (.gi, 'If 17, Ex. D). The next day, i.e., June 3, 2014, GoDaddy '"suspended'
Defendants' website located on the Internet at ILove2Kickbox.com[,]'' (!Q, 'If 18, Ex. E), and
plaintiff notified defendants that they had infringed upon its Mark. (.gi, '1{25, Ex. I). According
to plaintiff, defendants knew of its Mark "prior to registering the Infringing Mark on GoDaddy
because [they] were former* * * licensees [of plaintiff][,]" (ill, '1{29), and "used the Infringing
Mark to dive1t Internet traffic, and therefore revenue, from users searching for [plaintiff's] wellknown fitness Mark, to the Infringing Domain name [ILove2K.ickbox.com]." (.gi, '1{31).
Plaintiff alleges, inter alia, (1) that defendants' ''unauthorized registration of the Infringing
Domain Name creates a likelihood of confusion as to the source, sponsorship, affiliation, or
endorsement of the Infringing Domain Name, and is likely to falsely suggest a sponsorship,
connection, license, or association of Defendant [sic], and the Infringing Domain Name, with
[plaintiff][,]" QQ,. '1{33); and (2) that defendants' conduct "constitutes unfair competition***
by, inter alia, directing search engine results toward an unauthorized and Infringing Domain
Name and away from [plaintiff's] [W]ebsite and Works, which bear [plaintiff's] distinctive
Mark." (Id., '1{35).
Plaintiff further alleges that it "has invested substantial time and financial resources in the
creation of its extensive ILKB web presence ('Web Presence')[,]" (Am. Compl., '1{36, Ex. M),
which "focused on a particular 'look and file [sic]' (ILKB 'Trade Dress') that would convert
leads into sales." (!!L, 'If 36). According to plaintiff, BMA "in its www.atomickickboxing.com
website, copied the 'look and feel' of[its] distinctive elements (24) as well as their
corresponding arrangement" ("the Website Trade Dress claim"). (!!L, '1{37, Ex. N).
In addition, plaintiff alleges that it has "invested substantial time and financial resources

4

in the creation of its trade dress for its 'brick and mortar' ILKB stores ('Store Trade Dress')."
(Am. Compl., '1]41, Ex. 0). According to plaintiff, plaintiff's and defendants' stores "are
remarkably similar, if not identical. In particular, the brick wall, the red bench, the front desk,
the placement of merchandise, the workout area flooring, the use of the respective logos on the
wall (and the logo themselves) are all either identical or substantially similar'' ("the Store Trade
Dress Claim"). @,, '1]42, Ex. 0).

B.

Procedural History

On June 11, 2014, plaintiff commenced this action against defendants, asserting claims
seeking damages and injunctive relief for copyright and trademark infringement, cybersquatting
and unfair competition. On November 13,2014, plaintiff filed an amended complaint, inter alia,
asserting claims against defendants seeking damages, injunctive relief, attorney's fees and costs
against defendants for copyright infringement (first claim for relief); trademark infringement
(second claim for relief); cybersquatting (third claim for relief); unfair competition (fourth claim
for relief); and trade dress infringement (fifth claim for relief).
Defendants now move to dismiss the amended complaint in its entirety as against Burke,
and to dismiss plaintiffs copyright and trade dress infringement claims against BMA, pursuant
to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim for relief. 1

1

During a pretrial conference held before me on February 25, 2014, I, inter alia, (1)
granted (a) plaintiffs request to inspect and photograph defendants' store, and (b) defendants'
request to designate, inspect and photograph up to three (3) of plaintiffs franchises; and (2)
denied defendants' initial motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure with leave to renew so as to afford both parties an opportunity to submit
supplemental materials pertaining to plaintiffs Store Trade Dress claim on or before April 8,
2015. Defendants renewed their motion, including the supplemental materials provided by both

5

Plaintiff moves pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal Rules of
Civil Procedure for a preliminary injunction enjoining defendants "from the sale of services and
goods that infringe [plaintiff's] copyrighted website content, [plaintiff's] trademarked
ILoveKickboxing.com mark ("the Mark"), and [plaintiff's] ILoveK.ickboxing franchisee's trade
dress[;]

* * * [from] any unauthorized use of the aforesaid website content or Mark[;] and from

cybersquatting via the use of the infringing domain name '1Love2Kickbox.com. '"

Ill.

Discussion
A.

Defendants' Motion to Dismiss
1.

Standard of Review

The standard of review on a motion made pursuant to Rule 12(b)(6) of the Federal Rules
of Civil Procedure is that a plaintiff plead sufficient facts "to state a claim for relief that is
plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S. Ct. 1955, 1974, 167 L.
Ed. 2d 929 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that
allows the court to draw tlie reasonable inference that the defendant is liable for the misconduct
alleged." Ashcroft v. Iqbal, 556 U.S. 662,678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009). The
plausibility standard requires "more than a sheer possibility that a defendant has acted
unlawfully." Id.
"A pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements
of a cause of action will not do."' Iqbal, 556 U.S. at 678, 129 S. Ct. 1937 (quoting Twombly,
550 U.S. at 555, 127 S. Ct. 1955). "Nor does a complaint suffice if it tenders 'naked

sides, on April 8, 2015.

6

assettion[s]' devoid of 'further factual enhancement.'" Id. (qnoting Twombly, 550 U.S. at 557,
127 S. Ct. 1955). "Factual allegations must be enough to raise a right to relief above the
speculative level, on the assumption that all the allegations in the complaint are true (even if
doubtful in fact)." Twombly, 550 U.S. 544, 127 S. Ct. at 1959.
In deciding a motion pursnant to Rule 12(b)(6), the Court must liberally construe the
claims, accept all factual allegations in the complaint as true, and draw all reasonable inferences
in favor of the plaintiff See Aegis Ins. Servs., Inc. v. 7 World Trade Co., L.P., 737 F.3d 166,
176 (2d Cir. 2013) (quotations and citation omitted); Grullon v. City ofNew Haven, 720 F.3d
133, 139 (2d Cir. 2013). However, this tenet "is inapplicable to legal conclusions. Threadbare
recitals of the elements of a cause of action, supported by mere conclusory statements, do not
suffice." Iqbal, 556 U.S. at 678, 129 S. Ct. 1937. "While legal conclusions can provide the
framework of a complaint, they must be supported by factual allegations." Id. at 679, 129 S. Ct.
193 7. "In keeping with these principles a court considering a motion to dismiss can choose to
begin by identifying pleadings that, because they are no more than conclusions, are not entitled to
the assumption of truth." Id.; ~also Ruston v. Town Bd. for Town of Skaneateles, 610 F.3d
55, 59 (2d Cir. 2010).
Nonetheless, a plaintiff is not required to plead "specific evidence or extra facts beyond
what is needed to make the claim plausible." Arista Records, LLC v. Doe 3, 604 F.3d 110, 120-1
(2d Cir. 20 I 0); accord Pension Benefit Guar. Corp. ex rei. St. Vincent Catholic Med. Ctrs. Ret.
Plan v. Morgan Stanley Inv. Mgmt. Inc., 712 F.3d 705, 729-30 (2d Cir. 2013). "When there are
well-pleaded factual allegations, a court should assume their veracity and then determine whether
they plausibly give rise to an entitlement to relief." Iqbal, 556 U.S. at 679, 129 S. Ct. 1937.

7

In deciding a motion pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure,
the Court must limit itself to the facts alleged in the complaint, which are accepted as true; to any
documents attached to the complaint as exhibits or incorporated by reference therein; to matters
of which judicial notice may be taken; or to documents upon the terms and effect of which the
complaint "relies heavily" and which are, thus, rendered "integral" to the complaint. Chambers
v. Time Warner, Inc., 282 F.3d 147, 152-53 (2d Cir. 2002); ~also ASARCO LLC v. Goodwin,
756 F.3d 191, 198 (2d Cir. 2014), cert. denied, 135 S. Ct. 715, 190 L. Ed. 2d441 (2014).

2.

Claims against Burke

Defendants contend, inter alia, that the amended complaint should be dismissed in its
entirety as against Burke because there are no allegations against him specifically and no
allegations that suggest a potential claim against him." (Defendants' Memorandum of Law
["De f. Mem. "] at 5).
"[A ]!though the Copyright Act does not expressly render anyone liable for infringement
committed by another,

* * * one who, with knowledge of the infringing activity, induces, causes

or materially contributes to the infringing conduct of another, may be held liable as a
'contributory' infringer." Arista Records, 604 F. 3d at 117-18 (quotations, brackets, emphasis
and citations omitted); accord Matthew Bender & Co., Inc. v. West Publ'g Co., 158 F.3d 693,
706 (2d Cir. 1998). "The knowledge standard is an objective one; contributory infringement
liability is imposed on persons who know or have reason to know of the direct infringement[.]"
Arista Records, 604 F .3d at 118 (quotations, emphasis and citations omitted). "Two types of
activities that lead to contributory liability are: (i) personal conduct that encourages or assists the

8

infringement; and (ii) provision of machinery or goods that facilitate the infringement." Matthew
Bender, 158 F.3d at 706; see also Arista Records, 604 F.3d at 118 (holding that contributory
liability "exists if the defendant engages in personal conduct that encourages or assists the
infringement[.]"(quotations and citations omitted)). "The resolution of the issue depends upon a
detennination of the function that the alleged infringer plays in the total reproduction process."
Arista Records, 604 F .3d at 118 (quotations, alterations and citations omitted). Thus,
"[c ]m"])orate officers can be held vicariously liable for copyright infringement if they had (i) the
right and ability to supervise the infringing activity; and (ii) an obvious and direct financial
interest in exploitation of copyrighted materials." Carel! v. Shubert Org., Inc., 104 F. Supp. 2d
236, 270 (S.D.N.Y. 2000); accord Capitol Records, Inc. v. Wings Digital Corp., 218 F. Supp. 2d
280,285 (E.D.N.Y. 2002). "Where a complaint lacks any description of acts that could lead to
the conclusion of direct copyright infringement, or allegations of authorization or participation
that would indicate vicarious liability or contributory infringement, claims sounding in those
theories must be dismissed." Warren v. John Wiley & Sons, Inc., 952 F. Supp. 2d 610, 619
(S.D.N.Y. 2013) (quotations, brackets and citation omitted).
Similarly, "[a] company's individual officer can be held personally liable under the
Lanham Act if the officer is a moving, active conscious force behind the corporation's
infringement." Century 21 Real Estate, LLC v. Bercosa Corp., 666 F. Supp. 2d 274,283
(E.D.N.Y. 2009) (quotations and citation omitted);~ also KatiRoll Co. v. Kati Junction, Inc.,
33 F. Supp. 3d 359, 370 (S.D.N.Y. 2014) ('"'[F]or an individual to be held personally liable for a
corporation's acts of infringement [under the Lanham Act], he or she must be the moving, active,
conscious force behind the infringement." (quotations, brackets and citation omitted)); Bambu

9

Sales, Inc. v. Sultana Crackers, Inc., 683 F. Supp. 899, 913 (E.D.N.Y. 1988) ("[P]ersona1liability
for trademark infringement and unfair competition is established if the officer is a moving, active
conscious force behind the defendant corporation's infringement" (quotations, brackets and
citation omitted)). "In determining whether the officer's acts render him individually liable, it is
immaterial whether he knows that his acts will result in an infringement." Bambu Sales, 683 F.
Supp. at 913-14. (quotations, alterations and citation omitted); accord Carell, 104 F. Supp. 2d at
271. "Contributory infringement holds liable '[o]ne who, with knowledge of the infringing
activity, induces, causes, or materially contributes to the infringing conduct of another ...."
Carel!, 104 F. Supp. 2d at 271 (quoting Demetriades v. Kaufmann, 690 F. Supp. 289,292-93
(S.D.N.Y.1988)).
Plaintiffs allegations, inter alia, that Burke is the managing member ofBMA; was a
fanner licensee of plaintiff and, thus, knew of plaintiffs Website, Mark and trade dress; "used
the Infringing Mark to divert Internet traffic, and therefore revenue, from users searching for
[plaintiffs]

* * * Mark," (Am. Compl., ~ 31); and, together with BMA, used plaintiff's "Work

for their own economic gain," (&,

~

51; see also id., ~ 52 ("Upon information and belief,

Defendants' acts of copyright infringement were

* * * intended for its [sic] own economic

gain")), are sufficient at the pleadings stage to state plausible claims against Burke for copyright,
trademark and trade dress infringement; unfair competition; and cybersquatting. See, ~
KatiRoll, 33 F. Supp. 3d at 370 (denying the defendants' motion to dismiss trade dress
infringement and unfair competition claims against the individual defendants where the
complaint alleged, inter alia, that one of the defendants directed the activities of the defendant
corporation and that all of the defendants had worked at the plaintiff corporation); Capitol

10

Records, 218 F. Supp. 2d at 285 (finding that the complaint stated a plausible claim for copyright
infringement against the individual defendant insofar as it alleged, inter alia, that he was the
president and sole shareholder of the corporate defendant and managed and fmanciallybenefitted
from the production and sale of the acts of copyright infringements). Accordingly, the branch of
defendants' motion seeking dismissal of the amended complaint in its entirety against Burke is
denied.

3.

Trade Dress Infringement Claims

"A product's trade dress encompasses the overall design and appearance that make the
product identifiable to consumers." Nora Beverages, Inc. v. Perrier Grp. of Am., Inc. ("Nora
Beverages II"), 269 F .3d 114, 118 (2d Cir. 2001 ). "Trade dress originally included only the
packaging, or 'dressing,' of a product, but it has been expanded to encompass* * *the design or
configuration of the product itself." Yunnan Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114 (2d
Cir. 200 1) (quotations and citations omitted);~ also L. & J.G. Stickley, Inc. v. Canal Dover
Furniture Co., Inc., 79 F.3d 258, 262 (2d Cir. 1996) ("Although trade dress once referred only to
the manner in which a product was 'dressed up' to go to market with a label, package, display
card, and similar packaging elements, the _concept now includes the design and appearance of the
product as well as that of the container.

* * * It is essentially the total image and overall

appearance of a product." (quotations, brackets and citations omitted)). The purpose of trade
dress law is "to protect an owner of a dress in informing the public of the source of its products,
without pem1itting the owner to exclude competition from functionally similar products." Jeffrey
Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 33 (2d Cir. 1995); see also Nora

11

,

Beverages II, 269 F.3d at 119 ("When evaluating [trade dress] claims, courts must not lose sight
of the underlying purpose of the Lanham Act, which is protecting consumers and manufacturers
from deceptive representations of affiliation and origin." (quotations and citation omitted)).
"Trade dress protection must subsist with the recognition that in many instances there is no
prohibition against copying goods and products. In general, unless an intellectual propertY right
such as a patent or copyright protects an item, it will be subject to copying." TrafFix Devices,
Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S.Ct. 1255, 1260, 149 L.Ed.2d 164 (2001)); ~
also Best Cellars, Inc. v. Wine Made Simple, Inc., 320 F. Supp. 2d 60, 69 (S.D.N.Y. 2003) ("The
text of the statute makes clear that the Lanham Act is not intended to enable monopolistic use of
a commercial idea, but rather aims to guard against confusion in the marketplace that would
hann both buyers and sellers.")
In order to establish any trade dress infringement claim under the Lanham Act, "the
plaintiff must prove (1) that the mark is distinctive as to the source of the good,[] (2) that there is
a likelihood of confusion between its good and the defendant's [product][,]" Yurman Design,
262 F.3d at 115; accord Forschner Grp., Inc. v. Arrow Trading Co., Inc., 124 F.3d 402, 407 (2d
Cir. 1997), and (3) that the "unregistered trade dress is 'not functional."' Yurman Design, 262
F.3d at 116; see also TrafFix Devices, 532 U.S. at 29, 121 S. Ct. 1255 ("[T]rade dress protection
may not be claimed for product features that are functional."); Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763, 769, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992) ("[E]ligibility for protection
under§ 43(a) [of the Lanham Act] depends on nonfunctionality.")

12

a.

Distinctiveness

For trade dress claims based upon product packaging, "the plaintiff may prove
distinctiveness by showing either that the 'intrinsic nature' of the mark serves to identifY a
particular source (what is known as 'inherent distinctiveness') or that 'in the minds of the public,
the primary significance of [the mark] is to identifY the source of the product rather than the
product itself (what is known as 'acquired distinctiveness' or 'secondary meaning')." Yurman
Design, 262 F.3d at 115 (brackets and emphasis in original) (quoting Wal-Mart Stores v. Samara
Bros., Inc., 529 U.S. 205, 210-11, 120 S. Ct. 1339, 146 L. Ed. 2d 182 (2000)). "The product
design plaintiff, however, must always make the second, more difficult showing." Yurman
Design, 262 F.3d at 115.
"Under the rubric of inherent distinctiveness, the focus of the inquiry is whether or not
the trade dress of a product serves primarily as an indication of origin, such that consumers will
readily rely on it to distinguish the product from those of competing manufacturers." Forschner

Qrg,, 124 F.3d at 407-08; see also L. & J.G. Stickley, 79 F.3d at 262 ("An inherently distinctive
trade dress is one that is likely to serve primarily as a designator of origin of the product,***
taking into account the nature of the designation and the context in which it is used." (quotations
and citations omitted)). "As an element of trade dress, however,* **color is never inherently
distinctive, but is capable of identifYing a product's source and may be a protected trademark
only when it has attained secondary meaning and has come to be associated in the consuming
public's mind with a single source of origin." Forschner Grp., 124 F.3d at 408; ~also WalMart, 529 U.S. at 212, 120 S. Ct. 1339 ("[Product] design, like color, is not inherently
distinctive." (emphasis added)). "Association of origin reflects the goodwill a manufacturer has

13

built up in its product such that prospective consumers associate this product feature with the
producer rather than with the product itself." Forschner Grp., 124 F.3d at 408.
"Secondary meaning refers to a subsequent significance added to the original meaning of
the trade dress due to a producer's use of it." L. & J.G. Stickley, 79 F.3d at 263 (quotations and
citation omitted). In order to demonstrate that its trade dress has attained secondary meaning, the
plaintiff must "show that, over time, the trade dress has become identified with its producer in
the minds of potential consumers." ld.; see also Forschner Grp., 124 F. 3d at 408 ("In a case
involving secondary meaning, the crucial question is whether the public is moved in any degree
to bny an article because of its sonrce." (quotations and citation omitted)). In determining
whether the plaintiffs trade dress has acquired secondary meaning, courts consider the following
factors: "(1) advertising expenditures, (2) consumer studies linking the dress to the source, (3)
unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the dress,
and (6) length and exclusivity of the [dress]'s use." L. & J.G. Stickley, 79 F.3d at 263
(quotations and citation omitted). However, ''no single factor is determinative, and every
element need not be proved[.]" Id. (quotations, brackets and citation omitted).
"[E]ven a showing of secondary meaning is insufficient to protect product designs that
are overbroad or 'generic'- those that refer to the genus of which the particular product is a
species' [sic]." Yunnan Design, 262 F.3d at 115 (quotations, brackets and citation omitted).
Trade dress law does not "protect an idea, a concept, or a generalized type of appearance." Id. at
115-116 (quotations and citation omitted). Since "[p]roduct design is driven primarily by the
usefulness or aesthetic appeal of the object[,] trade dress protection for product design[] entails a
greater risk of impinging on ideas as compared with protection of packaging or labeling." Id. at

14

116. Accordingly, courts must exercise "particular caution, when extending protection to
product designs." Id. at 114 (quotations and citation omitted).
Courts ')udge the distinctiveness of packaging trade dress

* * * on a spectrmn of

increasing distinctiveness as generic, descriptive, suggestive, or arbitrary/fanciful." Nora
Beverages, Inc. v. Perrier Grp. of Am., Inc. ("Nora Beverages I"), 164 F.3d 736, 743 (2d Cir.
1998) (quotations and citation omitted). "Generic words or phrases may never serve as
trademarks; descriptive marks, while not inherently distinctive, may be trademarks upon a
showing of secondary meaning; and suggestive, arbitrary and fanciful terms are inherently
distinctive trademarks even without a showing of secondary meaning." Landscape Forms, Inc.
v. Columbia Cascade Co., 113 F.3d 373, 377 (2d Cir. 1997); see also Nora Beverages I, 164 F.3d
at 7 43 ("Suggestive, arbitrary, or fanciful trade dress is considered inherently distinctive and thus
protectable unless it is also functional.

* * * Descriptive trade dress merits protection only if it

has acquired secondary meaning in the marketplace.

* * * Generic trade dress consisting of the

shape of a product that conforms to a well-established industry custom is not protectable."
(quotations, brackets and citation omitted)).
Any trade dress claim under the Lanham Act "will always require a look at the product
and the market in which it competes," Landscape Forms, 113 F.3d at 378, and must be
"construed in the light of a strong federal policy in favor of vigorously competitive markets[.]"
Id.; accord Nora Beverages II, 269 F.3d at 119.

1.

Website Trade Dress Claim

Plaintiff alleges, inter alia, (I) that it "has invested substantial time and fmancial

15

resources in the creation of its extensive ILKB web presence ('Web Presence')[,]" (Am. Compl.,
~

36; see also id.,

~

38); (2) that it "currently has active hundreds ofiLKB websites including one

of their flagship websites located on the Internet at www.ilovekickboxingcarleplace.com[,]" @,
~

36 and Ex. M); (3) tbat its "ILKB Web Presence was designed and refined after expending

thousands of man hours, and significant amounts of money, focused on a particular 'look and file
[sic]' (ILKB 'Trade Dress') that would convert leads into

sales[,]"@,~

36); and (4) that BMA

"copied the 'look and feel' of [its] distinctive elements (24) as well as their corresponding
arrangement" in its W\vw.atomickickboxing.com website. (!sl, ~ 37 and Ex. N). Plaintiff
identifies "example[s]" ofBMA's "literal copying" of its twenty-four (24) "distinctive elements"
in the amended complaint, such as: (a) tbe "use of a radiant element" above the main content of
the website,@,~~ 37(a) and 37(o)); (b) tbe placement oftbe "logo and action figure elements,"
@, ~~ 37(b) and (p)); (c) the "use of [a] solid blue border,"(&,~~ 37(c) and (q)); (d) tbe
similarity between BMA's phrase, "Celebrity Cranston Kickboxing Instructor Will Show" and
plaintiffs phrase, "Famous Carle Place Kickboxing Instructor
"placement of the first 'contact box

element,'"(&,~

Shows,"(&,~

37(d)); (e) tbe

37(e)); (f) tbe use oftbe same text, "Enter

your Name and Primary Email to get," in the first line in the contact box,(&,~ 37(f)); (g) the
inclusion of a "Get Instant Access" button, witb "the same text and call to action," in the contact
box,@,~~

37(g) and (x)); etc. According to plaintiff, "[t]he distinct and non-functional

elements of [its] Trade Dress include, but are not limited to, tbe elements enumerated [in the
amended complaint]."

ffil at 40).

Although "the application of trade dress law to websites is a somewhat 'novel' concept,"
Parker Waichman LLC v. Gilman Law LLP, No. 12-cv-4784, 2013 WL 3863928,

16

* 4 (E.D.N.Y.

July 24, 2013); see also Lepton Labs, LLC v. Walker, 55 F. Supp. 3d 1230, 1239 (C.D. Cal.
2014) ("Whether a website's design can constitute protectable trade dress under the Lanham Act
is a fairly unsettled issue"), the district courts that have considered the issue have almost
universally "recognized that a website's 'look and feel' can constitute a protectable trade
dress[.]" Parker Waichman, 2013 WL 3863928, * 4 (citing cases); accord Ingrid & Isabel, LLC
v. Baby Be Mine, LLC, No. 13-cv-01806, 2014 WL 5507669, at* 26 (N.D. Cal. Oct. 1, 2014);
Lepton Labs, 55 F. Supp. 3d at 1239; Conference Archives, Inc. v. Sound Images, Inc., Civ. No.
3:2006-76, 2010 WL 1626072, at* 16 (W.D. Pa. Mar. 31, 2010). "Given the conceptual
similarity between 'look and feel' and 'design,' Wal-Mart suggests that Plaintiff must show that
its website's 'look and feel' is distinctive through its secondary meaning[.]" Ingrid & Isabel,
2014 WL 5507669, at* 26.
"[A] mere cataloguing of a website's features does not give defendants adequate notice of
a plaintiffs trade dress claim,* * *especially, when[] * * *the list of features comprising the
trade dress is not complete[.]" Parker Waichman, 2013 WL 3863928, at* 4 (quotations and
citations omitted). "Rather,*** a complaint must 'synthesize' how th[o]se features combine to
create the website's protectable 'look and feel."' Id. (quotations and citation omitted).
A complaint that lists only some, but not all, of the features of the plaintiffs website that
the plaintiff believes constitute its trade dress is insufficient to state a plausible claim for trade
dress infringement under the Lanham Act.

See,~

Parker Waicbrnan, 2013 WL 3863928, at*

4; Ingrid & Isabel, 2014 WL 5507669, at* 26 ("Plaintiff employs language suggesting that the[]
[enumerated] components are only some among many, which weighs against Plaintiffs claims,
and Plaintifflists only alleged similarities, not a definitive list of the elements constituting [its]

17

website's 'look and feel."' (quotations and citation omitted)); Lepton Labs, 55 F.Supp. 3d at
1239 ("Neither can a plaintiff only list some elements of a website's design among many and
claim that those features establish the site's look and feel.") Moreover, conclusory allegations
that the trade dress "serves to identify [the plaintiff]," is "widely recognized," is "distinctive,"
and is "not merely functional;" and that the defendant's similar website is "likely to cause
consumer confusion,"

see,~

(Am.

Campi.,~~

38-40), are not entitled to the assumption of

truth and are insufficient to state a plausible claim for trade dress infringement under the Lanham
Act.

See,~

Vedder Software Grp. Ltd. v. Insurance Servs. Office, Inc., 545 F. App'x 30, 33

(2d Cir. Oct. 18, 2013); Boarding Sch. Review, LLC v. Delta Career Educ. Corp., No. 11 Civ.
8921,2013 WL 6670584, at* 7 (S.D.N.Y. Mar. 29, 2013); Parker Waichman, 2013 WL
3863928, at* 4.
Furthermore, plaintiffs conclusory allegation that the "look and feel" of its "Web
Presence" "serves to identify [it] as the sources of its services," (Am.

Campi.,~

38), is belied by

the fact that it "currently has active hundreds ofiLKB websites[,]" QsL ~ 36), not all of which
contain the purportedly "distinctive elements" enumerated in the amended complaint as
constituting its trade dress. Compare http://www.ilovekickboxing.com;
http://www.ilovekickboxing-stpaulnm.com; http://www.ilovekickboxing-georgia.com with
http://www.ilovekickboxingnewyorkny.com; http://www.ilovekickboxingbayport.com;
http://www.ilovekickboxingmedford.com. See Parker Waichman, 2013 WL 3863928, at* 4 n. 3
("The Court seriously questions whether th[e] [pleading] defect is curable, as Plaintiff's
allegation that the 'look and feel' of [its website] 'serves to identify [Plaintiff] as the source of its
services' * * *is belied by the fact that Plaintiff has 'hundreds ofwebsites' * **that do not

18

•

contain the features * * * described in the Complaint as constituting protectable trade dress."
(citations omitted)). Since, inter alia, the amended complaint is bereft of any factual allegations,
other than plaintiffs conclusory allegations, from which it may reasonably be inferred that
plaintiffs "Web Presence" has acquired secondary meaning in the relevant market, it fails to
state a plausible claim of trade dress infringement with respect to plaintiffs Website.

See,~

Carson Optical, Inc. v. Prym Consumer USA, Inc. 11 F. Supp. 3d 317, 344 (E.D.N.Y. 2014)
(holding that absent any factual allegations regarding "actual consumer surveys, unsolicited
media coverage or specific attempts to plagiarize the trade dress at issue" the second amended
complaint failed to support a reasonable inference that the plaintiffs trade dress acquired
secondary meaning); Morgans Grp. LLC v. John Doe Co., No. 10-cv-5225, 2012 WL 1098276,
at* 7 (S.D.N.Y. Mar. 31, 2012) ("[C]onclusory allegations ofsa1es success cannot support a
finding of secondary meaning.") Accordingly, the branch of defendants' motion seeking
dismissal of so much of plaintiffs trade dress infringement claim (fifth claim for relief) as
pertains to its Website pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is
granted and so much of plaintiffs trade dress infringement claim as pertains to its Website is
dismissed with prejudice for failure to state a claim for relief.

4.

Copyright Infringement Claim

"In order to demonstrate copyright infringement, a plaintiff must show ownership of a
valid copyright and copying of the protectable elements of the copyrighted work." Scholz
Design. Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012); ~also Zalewski v.
Cicero Builder Dev., Inc., 754 F.3d 95, 100 (2d Cir. 2014) ("In order to make out a claim of

19

copyright infringement

* * * a plaintiff must establish three things:

1) that his work is protected

by a valid copyright, 2) that the defendant copied his work, and 3) that the copying was
wrongful."); Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127,
131 (2d Cir. 2003) ("Copyright infringement is established when the owner of a valid copyright
demonstrates unauthorized copying." (quotations and citation omitted)). Courts in this Circuit
have held that "[t]o meet the requirements of Rule 8(a) [of the Federal Rules of Civil Procedure],
a complaint must plead with specificity the acts by which a defendant has committed copyright
infringement[,]" Transcience Corp. v. Big Time Toys, LLC, 50 F. Supp. 3d 441, 448-49
(S.D.N.Y. 2014); accord Patrick Collins, Inc. v. John Doe 1, 945 F. Supp. 2d 367,374 (E.D.N.Y.
2013); Elektra Entm't Grp., Inc. v. Barker, 551 F. Supp. 2d 234, 238 (S.D.N.Y. 2008), by
alleging "1) which specific original works are the subject of the copyright claim, 2) that plaintiff
owns the copyrights in those works, 3) that the copyrights have been registered in accordance
with the statute, and 4) by what acts during what time the defendant infringed the copyright."
Kellyv. L.L. Cool J., 145 F.R.D. 32,36 (S.D.N.Y. 1992), affd, 23 F.3d 398 (2d Cir. 1994)
(citing cases); accord Lefkowitz v. McGraw-Hill Global Educ. Holdings, LLC, 23 F. Supp. 3d
344, 352 (S.D.N.Y. 2014); Warren, 952 F. Supp. 2d at 616; Patrick Collins, 945 F. Supp. 2d at
374. Moreover, "[p]ost- Iqbal, the courts in this Circuit considering motions to dismiss copyright
claims have held that a plaintiff with a valid copyright must allege that '(1) defendant has
actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity
exists between the defendant's work and the protectable elements of plaintiffs."' Ritani, LLC v.
Aghjayan, 880 F. Supp. 2d 425,441-42 (S.D.N.Y. 2012) (quoting LaChapelle v. Fenty, 812
F.Supp.2d 434,438 (S.D.N.Y.2011)); accord Lambertini v. Fain, No. 12-cv-3964, 2014 WL

20

4659266, at* 4 (E.D.N.Y. Sept. 17, 2014); ~also Peter F. Gaito Architecture, LLC v. Simone
Dev. C01p., 602 F.3d 57, 63 (2d Cir. 2010) ("In order to establish a claim of copyright
infringement, a plaintiff with a valid copyright must demonstrate that: (1) the defendant has
actually copied the plaintiffs work; and (2) the copying is illegal because a substantial similarity
exists between the defendant's work and the protectible elements of plaintiffs." (quotations and
citation omitted)). "[S]ubstantial similarity* *

* must be to that which is protected in the

plaintiffs work." Tufenkian, 338 F.3d at 131; ~also Zalewski, 754 F.3d at 101 ("[T]he term
'substantial similarity' is properly reserved for similarity that exists between the protected
elements of a work and another work. * * * [S]imilarity that relates to unprotected elements * * *
is referred to as 'probative similarity."' (citation omitted)). "[T]he failure to plead facts
regarding how the [works] are 'substantially similar,' including identifying the protectable
elements of [the plaintiffs work] as part of its claim, will result in the dismissal of the copyright
claim." Ritani, 880 F. Supp. 2d at 442.
Nonetheless, "[a]t this stage of the litigation, a plaintiff need only give the opposing party
fair notice of what the plaintiffs claim is and the grounds on which it rests." Ritani, 880 F.
Supp. 2d at 440 (quotations, brackets and citation omitted). "Neither Twombly nor Iqbal
requires a plaintiff in a copyright infringement action to plead specific evidence or extra facts
beyond what is needed to make the claim plausible." Id. (quotations and citation omitted).
''Thus, once there has been notice of the claim, factual and evidentiary issues should be
developed during discovery." Id. (quotations, alterations and citation omitted).
The allegations in the amended complaint, together with the exhibits attached thereto,
satisfy the first three (3) pleading requirements for stating a plausible copyright infiiugement

21

claim. Specifically, plaintiff alleges, inter alia, that its "website entitled I Love K.ickboxing
Carle Place, located on the internet at www.iloveldckboxingcarleplace.com," (Am. Compl., ~
10), is subject to protection under the Copyright Act, and that it "received a Certificate of
Registration for the

Website,"(&,~

13), which is attached to the amended complaint as Exhibit

A. Since, inter alia, there is a rebuttable presumption that "[a] certificate of copyright

registration is prima facie evidence of ownership of a valid copyright," Scholz Design, 691 F .3d
at 186, plaintiff has established that it owns a valid copyright in the "new and revised text,
editing, additional artwork, [and] additional photographs" in its "Ilovekickboxing Caries Place
Website" that were not included in the "previously published version of [its] website," (Am.
Compl., Ex. A).

See,~

Patrick Collins, 945 F. Supp. 2d at 374; Gusler v. Fischer, 580 F.

Supp. 2d 309, 318 (S.D.N.Y. 2008) (fmding that the copyright registration certificate attached to
the complaint satisfied the first three [3] pleading requirements for a copyright infringement
claim).
Plaintiff further alleges, inter alia, (I) that "[s]ubsequent to the issuance of the Website's
copyright certificate," (Am. Compl., ~ 15), i.e., on or after October 2, 2012, (see&, Ex. A),
defendants "infringed upon [its] copyright by adapting [its] Website content * * * and releasing
said adaptation * * * on its company website, located on the Internet at
[ILove2Kickbox.com][,]"2

C!!:L ~ 15; ~ id., ~ 2 and Ex. B); (2) that it "became aware of

2

Contrary to plaintiffs contention, the amended complaint cannot be read to state a
claim of copyright infringement with respect to defendant's website located at
w-ww.atomickickboxing.com. Plaintiff refers to defendants' www.atomickickboxing.com
website only under the heading "Trade Dress Infringement Websites" in the amended complaint,
(see Am. Compl., ~~ 36-40), and specifically refers only to either "ILove2K.ickbox.com" or "the
Infringing Domain Name," which is identified in the amended complaint as "the domain name
ILove2Kickbox.com," (Am. Comp., ~ 2), in the factual allegations under the heading "Copyright
22

[d]efendants' * * * [infringement] on or about June 2, 2014," GQ,_, 'lfl6); and (3) that defendants'
Intemet hosting provider "suspended" defendants' purportedly infringing website on June 3,
2014. (Ish, 'lf'lf17-18). Thus, the amended complaint sufficiently identifies the time period during
which defendants' infringement of plaintiffs copyright may have occurred, i.e., on or after
October 2, 2012 until June 3, 2014.

See,~

Lefkowitz, 23 F. Supp. 3d at 354; Gusler, 580 F.

Supp. 2d at 318-19; see also Young-Wolffv. McGraw-Hill Sch. Educ. Holdings, LLC, No. 13cv-4372, 2015 WL 1399702, at* 4 (S.D.N.Y. Mar. 27, 2015) (holding that Rule 8 of the Federal
Rules of Civil Procedure requires only "fair notice of the approximate time period of
[d]efendants' alleged infringement.")
Moreover, "it is not fatal for a plaintiffs copyright claim if the complaint fails to specifY
how [its] particular [work] has been infringed." Lefkowitz, 23 F. Supp. 3d at 353 (quotations
and citation omitted); accord Warren, 952 F. Supp. 2d at 618; ~also Young-Wolff, 2015 WL
1399702, at* 3. In any event, plaintiff attached to the amended complaint a copy of defendants'
allegedly infringing website, with the elements it claims that defendants copied from its Website
highlighted in yellow. (Am. Compl., Ex. B).
"While the question of substantial similarity is typically a question of fact, 'in certain
circumstances, it is entirely appropriate for a district court to resolve that question as a matter of
law, either because the similarity between two works concems only non-copyrightable elements

Infringement" in the amended complaint, (see id., 'lf'lfl0-18). Since it may be presumed that the
separation of the claims was intentional, the amended complaint does not provide fair notice to
defendants of any copyright infringement claim pertaining to its www.atomickickboxing.com
website. In any event, since the amended complaint is bereft of any allegations regarding the
time period during which defendants' allegedly infringed upon plaintiffs copyright with the
www.atomickickboxing.com website, it fails to state a plausible claim of copyright infringement
with respect to that website.
23

of the plaintiffs work, or because no reasonable jury, properly instructed, could fmd that the two
works are substantially similar."' Ritani, 880 F. Supp. 2d at 442 (quoting Peter F. Gaito, 602
F.3d at 63). Although the court may consider the similarity between the works at issue in
connection with a motion to dismiss when the works in question are attached to a plaintiffs
complaint, ~ Peter F. Gaito, 602 F .3d at 64, there is no requirement, under Rule 8(a) of the
Federal Rules of Procedure or elsewhere, that the plaintiff attach the works in question to the
complaint in order to state a plausible claim for copyright infringement. Accordingly, and
contrary to defendants' contention, plaintiffs failure to attach "screen shots" or any images from
its Website as it existed in June 2014, when defendants are alleged to have copied it, is not fatal
to its copyright infringement claim at the pleadings stage.' Thus, dismissal is appropriate in this
case only if "the similarity between [the parties' websites] concerns only non-copyrightable
elements of[] plaintiffs work[.]" Ritani, 880 F. Supp. 2d at 442.
"The mere fact that a work is copyrighted does not mean that every element of the work
may be protected." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 348, Ill S. Ct.
1282, 113 L. Ed. 2d 358 (1991). "To qualify for copyright protection, a work must be originalthat is, it must be independently created by the author and possess 'at least some minimal degree
of creativity."' Scholz Design, 691 F.3d at 186 (quoting Feist Publ'ns, 499 U.S. at 345, 111 S.
Ct. 1282); accord Mattei, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, 135 (2d Cir. 2004);
see also Zalewski, 754 F.3d at 102 ("A fundamental rule of copyright law is that it protects only
'original works of authorship,' those aspects of the work that originate with the author himself."

3

The fact that plaintiff does not attach any images of its Website to its amended
complaint does not necessarily mean that plaintiff will be unable to establish the elements that its
Website contained, i.e., how its Website appeared, in June 2014, as suggested by defendants.
24

(quoting 17 U.S.C. § 102(a))). Thus, a work may be entitled to copyright protection "so long as
[it] was in fact created by its author, notwithstanding lack of creativity* * *and [the] absence of
anything strikingly unique or novel[.]" Mattei, 365 F.3d at 135 (quotations and citations omitted).
However, "[t]he protection that flows from * * * a copyright is * *

* quite limited[,]"

Matte!, 365 F.3d at 135, insofar as "[t]he copyright does not protect ideas; it protects only the
author's particularized expression of the idea." Id. at 135-36; ~also Peter F. Gaito, 602 F.3d at
67 ("In a copyright action, * * * the similarity between two works must concern the expression of
ideas, not the ideas themselves.") "It is universally true, * * * that even works which express
enough originality to be protected also contain material that is not original, and hence that may be
freely used by other designers." Tufenkian, 338 F.3d at 132; see also Feist, 499 U.S. at 348, 111
S. Ct. 1282 ("[C]opyright protection may extend only to those components of a work that are
original to the author."); Zalewski, 754 F.3d at 100-01 ("Not every portion or aspect of a
copyrighted work is given copyright law's protection. Copying these aspects of a work is not
wrongful[.] * * *When an original work contains many unprotected [sic] elements,* **a close
similarity between it and a copy may prove only copying, not wrongful copying[] * * * because
the similarity may derive only from these unprotected elements.") Thus, the court must
"detennine whether any alleged similarities are due to protected aesthetic expressions original to
the allegedly infringed work, or whether the similarity is to something in the original that is free
for the taking." Peter F. Gaito, 602 F.3d at 67 (quotations and citation omitted).
"The standard test for substantial similarity between two items is whether an ordinary
observer, unless he set out to detect the disparities, would be disposed to overlook them, and
regard the aesthetic appeal as the same." Peter F. Gaito, 602 F.3d at 66 (quotations, brackets and

25

citation omitted); accord Zalewski, 754 F.3d at 102. The court must "compar[e] the contested
design's total concept and overall feel with that of the allegedly infringed work[]*** because
the defendant may infringe on the plaintiffs work not only through literal copying of a portion of
it, but also by parroting properties that are apparent only when numerous aesthetic decisions
embodied in the plaintiffs work of art- the excerpting, modifYing, and arranging of unprotectible
components- are considered in relation to one another." Peter F. Gaito, 602 F.3d at 66
(quotations, alterations and citations omitted). In other words, the court's "inquiry necessarily
focuses on whether the alleged infringer has misappropriated the original way in which the
author has selected, coordinated, and arranged the elements of his or her work." Id. (quotations
and citations omitted); see also Feist, 499 U.S. at 349, Ill S. Ct. 1282 ("Copyright does not
prevent subsequent users from copying from a prior author's work those constituent elements
that are not original- for example [] facts, or materials in the public domain- as long as such use
does not unfairly appropriate the author's original contributions. [quotations, alterations and
citation omitted]

* * * Facts, whether alone or as part of a compilation, are not original and

therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an
original selection or arrangement of facts, but the copyright is limited to the particular selection
or arrangement.") Accordingly, even assuming, arguendo, that many of the various components
and features of plaintiffs Website that defendants allegedly misappropriated are non-protectable
concepts, ideas, phrases, facts, etc., it cannot be ascertained from the pleadings and exhibits
attached thereto whether defendants misappropriated the original way in which plaintiff selected,
coordinated, and arranged those elements of its Website.
In sum, since, inter alia, the amended complaint identifies plaintiff's copyright
26

infringement claim; the work that plaintiff claims was infringed, i.e., its Website; and the bases
for plaintiffs assertion that its Website was infringed, i.e., that defendants actnally copied
numerous elements of plaintiffs Website as highlighted in Exhibit B to the amended complaint,
it states a plausible claim for copyright infringement against defendants.• See, M Lefkowitz, 23
F. Supp. 3d at 353-54; Anna v. Buyseasons, Inc., 591 F. Supp. 2d 637, 644 (S.D.N.Y. 2008);
Elektra Entm't, 551 F. Supp. 2d at 238. Accordingly, the branch of defendants' motion seeking
dismissal of plaintiffs copyright infringement claim (first claim for relief) is denied.

B.

Branch of Defendants' Motion Seeking Dismissal of Store Trade Dress Claim

1.

Consideration of Extrinsic Evidence

Rule 12(d) of the Federal Rules of Civil Procedure provides:
"If, on a motion under Rule * * * 12(c), matters outside the
pleadings are presented to and not excluded by the court, the
motion must be treated as one for summary judgment under Rule
56. All parties must be given a reasonable opportunity to present
all the material that is pertinent to the motion."
"Ordinarily, formal notice is not required where a party should reasonably have
recognized the possibility that the motion might be converted into one for summary judgment
and was neither taken by surprise nor deprived of a reasonable opportunity to meet facts outside

4

Defendants' reliance upon the doctrines of merger and "scenes a faire" is misplaced at
the pleadings stage, since those doctrines are considered to be defenses to a claim of
infringement. See Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1358 (Fed. Cir. 2014), cert.
denied, 2015 WL 2473490 (June 29, 2015); Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1082
(9'h Cir. 2000) (citing Kregos v. Associated Press, 937 F.2d 700,705 (2d Cir. 1991)); see also
Hmt v. Dan Chase Taxidermy Supply Co., Inc., 86 F.3d 320, 322 (2d Cir. 1996) (holding that
there is a "strong preference that the question [of merger] be decided only after all the evidence
of substantial similarity is before the court.")
27

the pleadings." Hernandez v. Coffey, 582 F.3d 303, 307 (2d Cir. 2009) (quotations, brackets and
citations omitted); ~ also Sira v. Morton, 380 F .3d 57, 68 (2d Cir. 2004) ("A party is deemed to
have notice that a motion may be converted into one for summary judgment if that party 'should
reasonably have recognized the possibility' that such a conversion would occur." (quoting Gurarv
v. Winehouse, 190 F.3d 37,43 (2d Cir.1999))). "The district court's conversion of a Rule
12(b)(6) motion into one for summary judgment is governed by principles of substance rather
than form." M.J.M. Exhibitors, Inc. v. Stem (In reG. & A. Books, Inc.), 770 F.2d 288, 295 (2d
Cir. 1985). "The essential inquiry is whether the appellant should reasonably have recognized the
possibility that the motion might be converted into one for summary judgment or was taken by
surprise and deprived of a reasonable opportunity to meet facts outside the pleadings." Id.
"Resolution of this issue will necessarily depend largely on the facts and circumstances of each
case." Id.
As noted above, during a pretrial conference before me on February 25, 2015, I, inter

alia, denied defendants' initial motion to dismiss with leave to renew so as to afford both sides
an opportunity to obtain discovery and provide facts outside the pleadings relative to plaintiffs
Store Trade Dress claim. "A party cannot complain of lack of a reasonable opportunity to
present all material relevant to a motion for surmnary judgment when both parties have filed
exhibits, affidavits, counter-affidavits, depositions, etc. in support of and in opposition to a
motion to dismiss***." M.J.M. Exhibitors, 770 F.2d at 295 (citation omitted);~ also
Reliance Ins. Co. v. Polyvision Corp., 474 F.3d 54, 57 (2d Cir. 2007) (finding that it was not

28

error for the district court to consider evidence outside of the complaint in resolving a Rule 12(c)
motion "without explicitly giving notice that it was converting the Rule 12 motion to a Rule 56
motion[,]" because it was "clear from the record

* * * that [the non-moving party] knew

additional factual considerations were being considered and, in fact, responded with its own
evidentimy submissions."); Sira, 380 F.3d at 68 ("By attaching to their motion extensive
materials that were not included in the pleadings, defendants plainly should have been aware of
the likelihood of such a conversion.") Under such circumstances, neither party can complain that
they were deprived of an adequate opportunity to provide the materials they deemed necessary to
support or respond to the motion. See Sir!!, 380 F.3d at 68.
Since the parties were afforded a reasonable opportunity to present materials outside the
pleadings with respect to plaintiffs Store Trade Dress claim, and, in fact, submitted such
materials, the branch of defendants' motion seeking dismissal of plaintiffs Store Trade Dress
claim against them is treated as one for summmy judgment under Rule 56 of the Federal Rules of
Civil Procedure.

2.

Standard of Review

"A motion for summmy judgment may properly be granted

* * * only where there is no

genuine issue of material fact to be tried, and the facts as to which there is no such issue warrant
judgment for the moving party as a matter of law." In re Dana Com., 574 F.3d 129, 151 (2d Cir.
2009);

~Fed.

R. Civ. P. 56(a) ("The court shall grant summary judgment if the movant shows

29

that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of Jaw.") In ruling on a summary judgment motion, the district court must first
"determine whether there is a genuine dispute as to a material fact, raising an issue for trial."
McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 202 (2d Cir. 2007) (internal quotations and
citations omitted); see Ricci v. DeStefano, 557 U.S. 557, 129 S. Ct. 2658, 2677, 174 L. Ed. 2d
490 (2009) (holding that "[o]n a motion for summary judgment, facts must be viewed in the light
most favorable to the nonmoving party only if there is a 'genuine' dispute as to those facts."
(emphasis added) (internal quotations and citation omitted)); Vermont Right to Life Comm., Inc.
v. Sorrell, 758 F.3d 118, 142 (2d Cir. 2014), cert. denied, 135 S. Ct. 949, 190 L. Ed. 2d 830
(20 15) ("The role of the court on a summary judgment motion is to determine whether, as to any
material issue, a genuine factual dispute exists." (quotations and citation omitted)). "On a
motion for summary judgment, a fact is material if it 'might affect the outcome of the suit under
the governing law."' Royal Crown Day Care LLC v. Dep't of Health & Mental Hygiene of City
of New York, 746 F.3d 538, 544 (2d Cir. 2014) (quoting Anderson v. Liberty Lobby, Inc., 477
U.S. 242,248, 106 S. Ct. 2505,91 L. Ed. 2d 202 (1986)).
In reviewing the record to detennine whether there is a genuine issue for trial, the court
must "constrne the evidence in the light most favorable to the nonmoving party," Dalberth v.
Xerox Corp., 766 F.3d 172, 182 (2d Cir. 2014) (quotations and citation omitted), and "resolve all
ambiguities and draw all permissible factual inferences in favor of the party against whom
summary judgment is sought." Smith v. County of Suffolk, 776 F.3d 114, 121 (2d Cir. 2015)

30

(quotations and citation omitted); accord Delaney v. Bank of America Corp., 766 F.3d 163, 168
(2d Cir. 2014). "An issue of fact is genuine 'if the evidence is such that a reasonable jury could
return a verdict for the nonmoving party."' Dalberth, 766 F.3d at 182 (quoting Anderson, 477
U.S. at 248, 106 S. Ct. 2505); ~also Delaney, 766 F.3d at 168. "Where the record taken as a
whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine
issue for trial." Ricci, 557 U.S. 557, 129 S. Ct. at 2677 (quoting Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986)); accord
Smith, 776 at 121.
"The moving party bears the initial burden of showing that there is no genuine dispute as
to a material fact." CILP Assocs., L.P. v. PriceWaterhouse Coopers LLP, 735 F.3d 114, 123 (2d
Cir. 20 13) (quotations, brackets and citation omitted); see also Crawford v. Franklin Credit
Mgmt. Corp., 758 F.3d 473, 486 (2d Cir. 2014). "[W]hen the moving party has carried its
burden

* * *,its opponent must do more than simply show that there is some metaphysical doubt

as to the material facts*

* *[,]"Scott v. Harris, 550 U.S. 372, 380, 127 S. Ct. 1769, 167 L. Ed.

2d 686 (2007) (quoting Matsushita Elec., 475 U.S. at 586-87, 106 S. Ct. 1348), and must offer
"some hard evidence showing that its version of the events is not wholly fanciful." Miner v.
Clinton County, New York, 541 F.3d 464,471 (2d Cir. 2008) (quotations and citation omitted).
The nonmoving party can only defeat summary judgment "by adduc[ing] evidence on which the
jury could reasonably find for that party." Lyons v. Lancer Ins. Co., 681 F.3d 50, 56 (2d Cir.
20 12). '"The mere existence of a scintilla of evidence in support of the [non-movant's] position

31

will be insufficient' to defeat a summary judgment motion[,]" Fabrikant v. French, 691 F.3d 193,
205 (2d Cir. 2012) (quoting Anderson, 477 U.S. at 252, 106 S. Ct. 2505); and "[a] court cannot
credit a plaintiffs merely speculative or conclusory assertions." DiStiso v. Cook, 691 F.3d 226,
230 (2d Cir. 2012); see also Fabrikant, 691 F.3d at 205 ("[C]onclusory statements or mere
allegations will not suffice to defeat a summary judgment motion." (quotations and citation
omitted)).

3.

Plaintiffs Store Trade Dress Claim

Plaintiff alleges that its "Store Trade Dress" consists of nineteen (19) elements: (1) a
reception area with (a) a desk (i) "framed [in] sheetrock painted Benjamine [sic] Moore ["BM"]
#1061 tan," (Am. Compl., ~ 4l(a)), and (ii) "topped with absolute black granite with affront [sic]
apron[,]" (&, ~ 41(b )), (b) flooring of"either tan ceramic tile or black rolled rubber flooring
with brown & tan chips[,]"(!!,~ 4l(c)) (emphasis added), and (c) "red pendant lighting** *
[from] Home Depot fixture

'Watermelon[,]"'(&,~

4l(d)); (2) walls either (a) painted "flat

black" or "BM #1061 tan," or (b) on which "Faux Brick paneling is used[,]"(!!!:.,~ 41(e)); (3) a
"pro shop" or merchandise area with (a) a "black slat wall with tan

framing[,]"(&,~

41(±)), (b)

that was ''previously*** [a] brick slat wall for hanging merchandise[,]"(&,~ 41(g)), and (c)
"black track

lighting[,]"(&,~

41(h)); (4) a lobby area with (a) red benches,(&,~ 4l(i)), and (b)

"green tall bamboo style plants[,]"(&,~ 41(s)); (5) a training area with (a) red and black floor
mats that are "usually red with [a] black border[,]"(&,~ 410)) (emphasis added), and (b) "high

32

bay acrylic [lights] hung to the 10" [sic] height on chain or similar product[,]"(&.,~ 41(1))
(emphasis added); (6) either (a) an open ceiling painted black, or (b) a drop

ceiling,@,,~ 4l(k));

(7) locker rooms, bathrooms and store rooms painted "BM/Linen White[,]"(&.,~ 4l(m)); (8)
corridors with (a) "a simple chair rail at approximately 41 "," @,, ~ 4l(n)), and (b) a "similar tan
wall covering" on the "lower half of [the] walls," (&., ~ 41 (o )); and (9) bathrooms with (a)
vanities of "absolute black granite with mirror finish Kohler sinks and single lever faucets
(chrome Moen),"@,,~ 4l(p)), (b) "light glazed tile with 12" dark grey accents up the middle of
showers and behind sinks[,]"@,,~ 4l(q)), and (c) "vanity lights over 18x30" commercial
mirrors 3 square lights with green glass covers by Jasco[,]" (&., ~ 4l(r)).

4.

Facts Supported by the Record
a.

Plaintiffs "Facility Requirements"

Colleen Tracey ("Tracey"), plaintiffs president, avers that plaintiff has a twenty-two (22)
member staff "and has spent millions of dollars in developing its [ '] I Love Kickboxing'
('ILKB') brand." (Affidavit of Colleen Tracey ["Tracey Aff."], ~~ 2-3). According to Tracey,
plaintiffs handbook lists twenty-one (21) pages of"Facility Requirements" that franchisees of its
ILKB brand must follow, (M:., ~~ 4-6, Ex. A), including the following:
(i) in the training area, (A) one wall must (I) be covered with faux brick paneling
from Lowe's called "Gaslight II Brick Hardboard," (2) have "a wooden box 4"
deep and 12" high*** painted Benjamin Moore Tan #1061" built at the bottom,
and (3) have "Large Styrene Prints" mounted upon it as provided therein; (B)
"[a]ll other walls around the mat area" must have a "lxl2 wood base," painted
tan; and (C) there must be (I) either (a) custom-printed "Dollarnur [mats] from
Swain Mats," containing a thirty-six inch (36") border and the ILKB logo in the
33

center or (b) rectangle "Zebra mats" of"red or black (no logo)** * measur[ing]l
meter x 2 meter," and (2) "High Bay Acrylic Lights,'' with "[e]ach fixture
plug[ging] into a receptacle mounted on the ceiling and hang[ing]lO feet high on
a chain;"
(ii) in the lobby or reception area, (A) testimonials must be exhibited as set forth
therein; (B) there must be a reception desk comprised of(l) a "2x4 metal stud
[frame] with W' sheetrock" painted "Benjamin Moore Tan #1061" situated seven
feet (7') from the front frame to the wall, (2) a three-quarter inch (3/4") "absolute
black granite top,'' fourteen inches (14") wide, overhanging the frame by three
inches (3") total, with a four-inch (4") mitered apron, (3) a "flat black formica"
backsplash glued to the sheetrock, (4) an eighteen-inch (18") deep work counter,
and ( 5) a "simple black vinyl moulding [sic]" at the base; (C) there must be "an
evenly spaced number of red pendant lights with CFM bulbs" called "Watermelon
Pendants" from Home Depot over the reception desk; (D) the ILKB logo must be
centered on a faux brick wall that has a twelve-inch (12") tan base behind the
reception desk; (E) there must be a credenza "used to store the printer, literature,
and hanging files in drawers," "built to size with matching granite * * * [at] the
same height as the reception desk * * * [with] a total of 7ft in between the
credenza and the front wall of the reception desk[;]" (F) there must be ceramic tile
flooring in "Heron Beige 30x60cm #682329 with Sand Grout;" and (G) there
must be ( 1) red fabric benches from TableChairEtc. or a "similar item" and (2)
"tall green bamboo style [silk] plant[s]" in a plant box purchased from
"FiberGlassDepot.com;"
(iii) there must be a "retail pro shop" or merchandise area (A) consisting of a
"Black Slatwall" beginning twelve inches (12") off the floor and extending up to
eighty-four inches (84") high, "framed with a lx4" pine frame and painted
Benjamin Moore Tan #1061," and (B) containing black "hanging accessories;"
(iv) in the locker rooms and bathrooms, (A) walls must be painted "Benjamin
Moore Linen White #912;" and (B) bathrooms must contain (1) "Jesco WS306H3GL Quattro" vanity lights from the "ATG Store," consisting of a three (3) "Light
Line Voltage Wall Sconce, Glass," (2) a "Brushed Aluminum" hand dryer by
World Smart, (3) an "Andis Quiet Turbo Hang Up" hair dryer, (4) an "Absolute
Black Granite" countertop, twenty-four inches (24") deep "width to space" and
five inches (5") "mitered fron [sic] apron," (5) "Kohler K-2602" mirror finish
sinks with "Moen S6700 Chrome" faucets and matching "Moen Shower Bodies"
in the showers, (6) one-quarter inch (1/4") "tough rubber," "brown/tan" flooring,
(7) showers with (a) either a prefab base or a tiled floor with "Hollywood saddle,"
and (b) "Onyx Krem" tile "placed vertically with a 12" wide accent of2x2 Silver
Grey polished from ceiling to floor centered behind each faucet," and (8)
eighteen-inch by thirty-inch (18"x30") mirrors, as well as particular model soap
34

dispensers and toilet paper dispensers, from Washroom Inc.; and
(v) in the corridors, (A) walls must have (1) a chair rail, the top of which is fortyone inches (41 ") off the floor, painted to match the top of the wall, and (2) a vinyl
wall covering on the lower half of the wall in one (1) of two (2) colors depending
upon whether the top of the wall is painted "Linen White" or tan; and (B) there
must be "Large Action Prints" mounted as provided therein on "the tan wall
adjacent to walkway."
(Tracey Aff., Ex. A).

b.

Plaintiffs Franchises

According to Parrella, who is also the CEO ofiLKB, LLC, plaintiffs "affiliate entity,"
(Affidavit of Michael Parrella ["Parrella Aff."]

~

10), in May 2012, the Office of the Attorney

General of the State of New York ("OAG") "launched an investigation to determine if the ILKB
'Subscription Licenses' that it was offering at the time were in fact franchise licenses pursuant to
New York General Business Law ('GBL') Article 33, § 680 et seq., known as the New York
State Franchise Sales Act' ('Franchise Sales Act')."' (Id., ~ 4). After the OAG determined that
plaintiff "sold franchises from and within New York while it was not registered or otherwise
exempt from franchise registration[,]" GQ,, Ex. Cat 1), plaintiff, inter alia, (1) sent "rescission
letters to all of its licensees providi;"g [them] the option to convert to franchisees at their sole
discretion[,]" or to "decline the ftahchisee offer and continue operating under their previously
entered into Subscriber Agreement[,]" pursuant to Section 691(2) of the New York General

5

The issue involved in the OAG's investigation was whether plaintiff"sold franchises
from or in New York State without satisfying the pre-requisite of registering its franchise
offering with the OAG or having an exemption from franchise registration[,]" in violation of the
Franchise Sales Act. (Parrella Aff., Ex. Cat 1).
35

Business Law, (&, 'lf'lf5-6) 6; and (2) was prohibited from offering subsequent ILKB licenses, and
could only offer ILKB franchises, thereafter. @, 'lf6). According to plaintiff, as a result, "there
now exist ILKB Licensees (i.e. those grandfathered in [pursuant to the OAG's Assurance of
Discontinuance], Express Franchisees, and Full Franchisees locations[.]" (Id., 'lf8). In total,
plaintiff has identified approximately one hundred fifty (150) of its licensees and/or franchisees.
@,Ex. E).
According to Parrella, (1) plaintiffs "[l]icensees were never required to conform to [its]
ILKB trade dress because, by definition, [it] only developed its trade dress requirements as part
of the OAG agreement[,]" (Parrella Aff., 'lf9); (2) as part of plaintiffs "transition to a Full
franchisee model ('Full Model'), [it], through its affiliate entity ILKB, LLC, initially offered an
Express licensee model ('Express Model') to entities that already had existing locations and
therefore found it economically infeasible to 'build out' the equivalent of a Full Model[,]"
(Parrella Aff., 'lflO); (3) although not explicitly stated in the Express Contract itself, pursuant to
an oral agreement between plaintiff and its franchisees, the "Express Model franchisees were not
required to follow [plaintiffs] trade dress[,]"@; (4) plaintiff"stopped offering its Express
Model in July 2013,

* * *[,]"(&);and (5) "[a]ll Full Model franchisees are required to follow

[plaintiffs] trade dress as contained in its trade dress manual[,]" (Parrella Aff., 'lfll). Plaintiff
identifies sixty-seven (67) franchise locations that purportedly follow its Express Model and only
twenty-five (25) franchise locations, four of which are apparently owned by Parella himself, that
are "Full Model" franchisees. ilil, Ex. E).

6

Twelve (12) of plaintiffs licensees accepted its rescission offer. (See Parrella Aff., Ex.

E).

36

c.

Photographs of Plaintiffs Franchises

In March 2015, Eddie Cayer, Jr. ("Cayer"), a photographer retained by defendants,

inspected and photographed three (3) of plaintiffs franchises, located at 1400 Oaklawn Avenue,
Cranston, Rhode Island ("plaintiffs Cranston franchise"); 45 Riverside Avenue, Medford,
Massachusetts ("plaintiffs Medford franchise"); and 24 North Street, Randolph, Massachusetts
("plaintiffs Randolph franchise"), respectively, as well as defendants' facility, located in
Cranston, Rhode Island. (Declaration of Eddie Cayer Jr. in Further Support of Defendants'
Motion to Dismiss the Amended Complaint ["Cayer Dec!."], 'lf'lf 1-6). Plaintiffs Cranston
franchise, presumably the closest facility to defendant's, is identified as a "Full" franchise, (see
Panella Aff., Ex. E), whereas its Medford and Randolph franchises are identified as "Express"
franchises. (See &)
Also in March 2015, Brian Glantz ("Glantz"), a photographer retained by plaintiff,
photographed another of plaintiffs "full" franchises, located at 20 Commerce Way, Seekonk,
Massachusetts ("plaintiffs Seekonk franchise"), as well as defendants' facility. (Affidavit of
Brian Glantz ["Glantz Aff."], 'If 4).

1.

Plaintiffs Cranston Franchise

The photographs of plaintiffs Cranston franchise reveal, inter alia, that it complies with
plaintiffs "Facility Requirements" set forth above insofar as, inter alia, (!) the lobby/reception
area contains, inter alia, (a) a red bench, (b) a tall, "bamboo style" plant in a square planter, (c) a
brick or faux brick wall with a tan base, (d) a merchandise area with a black slat wall, (e) a tan
reception desk with a black base, and (f) four (4) red pendant lights hanging over or near the

37

reception desk; and (2) the training area (a) is near (i) a faux brick paneled wall upon which are
mounted "Large Styrene Prints" and (ii) a solid tan wall upon which are mounted "Large Action
Prints," and (b) contains a red mat with a black border. (Cayer Dec!., Ex. A). However, the floor
in the lobby/reception area is not comprised of ceramic tile in "Heron Beige 30x60cm #682329
with Sand Grout," as required by plaintiffs Facility Requirements, compare Tracey Aff., Ex. A,
with Cayer Dec!., Ex. A, nor of"black rolled rubber flooring with brown & tan chips." (Am.
Camp!.,~

4l(c)). Rather, the floor appears to consist of striped carpet tiles in various shades and

sizes of beige, grey and brown. (See Cayer Dec!., Ex. A). In addition, the reception desk is "free
standing," i.e., the front frame of the reception desk is not seven feet

en from a faux brick-

paneled wall, and has a black speckled counter top, not the "absolute black" top required under
plaintiffs Facility Requirements.

C!s!J

Moreover, the ILKB logo is centered on the face of the

reception desk, not on a faux brick wall behind the reception desk as set forth in plaintiffs
Facility Requirements.

C!s!J

With respect to the training area in plaintiffs Cranston franchise, there is no four-inch by
twelve-inch (4"xl2") wooden box, painted tan, at the base of the faux brick wall; nor is there a
tan, "lxl2 wood base" on the solid black wall abutting the mat area. (See Cayer Dec!., Ex. A).
Moreover, there are no "High Bay Acrylic Lights" hanging from chains, or a similar item, over
the training area. (Id.) Rather, the lighting in the training area in the Cranston facility is
provided by what appears to be recessed fluorescent lights.

C!s!J

In addition, although the mat is

red with a black border, it is surrounded by a wooden frame and it does not appear to contain
plaintiffs logo in the center.

ili!J

Furthermore, the black slat wall in the merchandise area does not begin twelve inches

38

(12") off the floor, nor is it "framed with a 1x4" pine frame painted Benjamin Moore Tan
#1061;" and there is no chair rail or vinyl wall covering on any wall exhibited in the photographs
of plaintiffs Cranston franchise as set forth in plaintiffs Facility Requirements. (Cayer Dec!.,
Ex. A).
With respect to the bathroom in plaintiffs Cranston franchise, although the walls may be
painted "Benjamin Moore Linen White," or a similar color, inter alia, it does not contain the
vanity lights, hand dryer, hair dryer, counter, sinlcs, floor or mirrors set forth in plaintiffs Facility
Requirements. Compare Tracey Aff., Ex. A, with Cayer Dec!., Ex. A. Indeed, it does not appear
that the bathroom in plaintiff's Cranston franchise is consistent in any respect with plaintiffs
Facility Requirements, notwithstanding that it is purportedly a "Full Model" franchise required to
comply with plaintiff's purported trade dress as set forth therein.

ii.

Plaintiffs Medford Franchise

Plaintiffs Medford franchise does not appear to comply with plaintiffs Facility
Requirements or trade dress in any respect. (See Cayer Dec!., Ex. B). For example, there are tan
or beige ann chairs, wooden benches and/or red plastic chairs without arms, not red benches, on
which patrons may sit. (Id.) There are various awards, photographs, trophies and posters
displayed on shelves and the walls in the facility, but no "Large Styrene Prints" or "Large Action
Prints" mounted upon the walls as provided in plaintiffs Facility Requirements. <!!!) The floor
in what is presumably the lobby area appears to be blue carpeting, not beige ceramic tiling, G.!!),
and the reception desk consists of a glass display case on one side, in which various merchandise
is displayed; a black bookcase; and a red, not a black, "credenza." (Id.) There is no "absolute

39

black" granite counter top on, no logo behind, no testimonials near, and no red pendant lights
hanging over the reception desk as set forth in plaintiffs Facility Requirements. @) Moreover,
the floor under and near the reception desk appears to be green or grey carpeting, not ceramic
tiling. @) In addition, although there are two (2) small potted plants atop the reception desk,
there are no "tall, green bamboo style [silk] plants" depicted anywhere in the photographs. @)
There are two (2) training areas in plaintiffs Medford franchise: one on the main level
and one on a lower floor. With respect to the training area on the main level, one (1) wall is
painted what appears to be white or off-white and has a "simple black molding" at the base and
two (2) large pictures of "ninjas" painted on it; another wall is covered by mirrors; and the mats
are yellow and red. (Cayer Dec!., Ex. B). The walls on the far side of the facility on the main
level are painted red. iliL_) With respect to the training area on the lower level, one (I) of the
walls is painted what appears to be yellow from the ceiling to about halfway to the floor and blue
from that halfway point to the floor; the other wall is painted what appears to be yellow and has a
black base and two (2) large pictures of black "throwing stars" painted on it; and the mats are red
and blue. @) There are no "High Bay Acrylic Lights" hanging from chains or a similar item in
either training area. @)
There are no walls covered in faux brick paneling, painted black or containing a chair rail
or vinyl covering anywhere in the Medford franchise, (Cayer Dec!., Ex. A), nor is there a black
slat wall or black track lighting in the merchandise area of that franchise. (Id.) Rather,
merchandise is either displayed in the display case forming one side of the reception desk or on
what appears to be a wire fixture hanging near the ceiling on a wall painted red and either white
or off-white on the main level. iliL_)

40

Furthermore, the "locker" or changing room in the Medford franchise has walls painted
blue, not "Linen White," and contains, inter alia, four (4) lockers painted what appears to be the
same color blue. (Cayer Dec!., Ex. B). The bathrooms contain, inter alia, a single white sink
with silver faucets and no counter, and walls painted either what appears to be green in the
women's bathroom or red in the men's bathroom, ·not "Benjamin Moore Linen White." (Id.)
The bathrooms do not contain showers, nor the vanity lights, hand dryer, hair dryer, counter,
sinks, floor or mirrors set forth in plaintiffs Facility Requirements. Compare Tracey Aff., Ex. A,
with Cayer Dec!., Ex. B. Accordingly, plaintiffs Medford franchise does not appear to be
consistent in any respect with either plaintiffs claimed Store Trade Dress, as purportedly set
forth in its Facility Requirements, or with the overall appearance of plaintiffs Cranston
franchise.

iii.

Plaintiffs Randolph Franchise

Plaintiffs Randolph franchise also does not appear to comply with plaintiffs Store Trade
Dress or Facility Requirements in any respect. For example, the reception area has a wood floor
with black area mats; a red and white wall and half wall; a tan slatwall; and a reception desk
painted blue with red trim and containing a blue and white speckled Formica counter top. (Cayer
Dec!., Ex. C). There is no granite counter top, tan desk, logo, red pendant lights or tall, "bamboo
style" silk plants in the reception area, and there are black plastic arm chairs with blue or green
cushions and black and blue wooden benches, not red benches, on which patrons may sit. ilih)
There is no black slat wall, wood framing, black "hanging accessories," or black track
lighting in the merchandise area of the Randolph franchise. (Cayer Dec!., Ex. C). The training

41

area consists of alternating rows of red and blue mats, abutted by two (2) half walls painted white
or off-white with a red top, and one wall consisting of faux brick paneling containing a simple
black base and top molding. (!£) However, there is no four-inch by twelve-inch (4"x12") tan
wooden box at the base of the faux brick wall and no "High Bay Acrylic Lights" hanging from
chains or a similar item in the training area. (!£) Rather, the lighting in the training area is
provided by what appears to be recessed fluorescent lights. (Id.) There are no chair rails or vinyl
coverings on any of the walls depicted in the photographs of plaintiffs Randolph facility. (!£)
There is a tan patterned carpet in the changing areas in the bathrooms, as well as in a
conidor containing a small palm tree. (!£) The bathrooms contain, inter alia, a single white
sink with a silver faucet and no counter and either tan and white tiles on the floor and walls in the
men's bathroom, or pink and white tiles on the floor and walls in the women's bathroom. (Cayer
Dec!., Ex. C). The bathrooms do not contain showers, nor the vanity lights, hand dryer, hair
dryer, connter, sinks, floor, mirrors or soap dispensers set forth in plaintiffs Facility
Requirements. Compare Tracey Aff., Ex. A, with Cayer Dec!., Ex. C. Accordingly, plaintiffs
Randolph franchise does not appear to be consistent in any respect with plaintiffs claimed Store
Trade Dress, as purportedly set forth in its Facility Requirements, nor with the overall appearance
of either plaintiffs Cranston franchise or its Medford franchise.

iv.

Plaintiffs Seekonk Facility

Plaintiffs Seekonk franchise complies with plaintiffs Facility Requirements insofar as,

inter alia, (1) the lobby/reception area contains (a) red benches, (b) a brick or faux brick wall
with a tan base, (c) a merchandise area consisting of a black slat wall that appears to begin

42

approximately twelve inches (12") from the floor and a tan frame mounted on a faux brick
paneled wall, (d) a tan reception desk with an "absolute black" granite counter top with "affront
apron," and (e) red pendant lights hanging over or near the reception desk; and (2) the training
area (a) is bordered by (i) a faux brick paneled wall with an approximate four-inch by twelveinch (4"xl2") tan wooden box at the base, upon which are mounted "Large Styrene Prints;" (ii) a
tan wall with a darker tan chair rail and base, upon which are mounted "Large Action Prints;"
and (iii) a solid black wall, and (b) contains a red mat with a black border and plaintiffs logo in
the center. (Glantz Aff., Ex. A). Moreover, although the floor in the lobby/reception area is not
comprised of ceramic tile in "Heron Beige 30x60cm #682329 with Sand Grout," as required by
plaintiffs Facility Requirements, compare Tracey Aff., EJ<. A, with Glantz Aff., Ex. A, it does
appear to be comprised of "black rolled rubber flooring with brown & tan chips," (Am. Compl., ~
4l(c)).
However, the front frame of the reception desk is not seven feet (7') from a faux brickpaneled wall; there is a tan, not a black, base on the reception desk; there is no "bamboo style"
silk plant in the lobby or reception area; and the ILKB logo is not displayed anywhere behind, or
even near, the reception desk. (Glantz Aff., Ex. A). Rather, there are windows overlooking the
parking lot behind the reception desk. (!QJ
With respect to the training area in plaintiffs Seekonk franchise, there is no tan, "lxl2
wood base" on the solid black wall abutting it, (see Glantz Aff., Ex. A), nor any "High Bay
Acrylic Lights" hanging from chains or a similar item over the mat area, as required by the
Facility Requirements. (Id.) Rather, the lighting in the training area is provided by what appears
to be recessed fluorescent lights. (!QJ

43

Although plaintiff claims that certain features of its bathrooms and locker rooms
comprise elements of its Store Dress, it does not provide photographs of those areas in its
Seekonk franchise. Accordingly, plaintiffs Seekonk franchise does not appear to be consistent
with all elements of plaintiffs claimed Store Trade Dress, as purportedly set forth in its Facility
Requirements, nor with the overall appearance of plaintiffs Cranston, Medford and Randolph
franchises.

d.

Defendants' Facility

According to Burke, from April2011 to April2014, defendants were licensees of
plaintiffs website and trademarks and paid plaintiff one hundred forty-nine dollars ($149.00) per
month "for the right to use Plaintiffs website content." (Declaration of John Jacob Burke in
Further Support of Defendants' Motion to Dismiss the Amended Complaint ["Burke Dec!."], '11'11
4-5). As licensees, defendants were not required to follow plaintiffs design specifications and
did not do so in setting up their facility in Cranston, Rhode Island. (&, '1[6).
Burke contends that after approximately three (3) years of operating under the licensing
arrangement, plaintiff unexpectedly '"terminated' the license by text message," resulting in their
"ILKB landing page [www.ilovekickboxingcranston.com] ***[being] taken down[,]" (Burke
Dec!., '1[7), but a few days later, "the landing page

* * * was up and running again with a new

address in the footer, [and] a new location in Cranston, Rhode Island opened by a different
individual who had contacts with Plaintiff." (!1.) According to Burke, "[t]he moment [he]
launched a new website,

* * * [p]laintiff filed this lawsuit," @, '1[8), so he "began operating

[his] kickboxing gym under the name Atomic Kickboxing." Q.sl, '1[9). In October 2014, Burke
44

"began building out the space where the kickboxing classes would be held[,]" (l!!:, ~ 10), but
once plaintiff "raised the issue of filing a trade dress infringement claim, [he] ceased work on the
facility to await the Court's resolution of the

issue[,]"(&,~

15).

According to Burke, he "ordered [his] mats from one of the two most popular mat
manufacturers in the industry[,]" and "the tatami style mat [he] use[s] * * *is commonly used in
the industry for kickboxing training areas[] [and] is only made by two manufacturers." (Burke
Dec!.,~

12). ln addition, Burke contends (1) that "the red and black color scheme that [he] chose

for the mats is a very common color scheme used in a wide range ofkickboxing martial arts gym
facilities," (jQJ; (2) that the tan walls in his facility are painted with a "custom color * * *known
as Mesa Tan[] * * *not[] the BM 1061, Benjamin Moore, Brunswick Beige* * *[,]" (&, ~ 13);
and (3) that although one of the walls in his facility is covered with faux brick paneling, "the use
of faux brick paneling is a common feature in martial arts

e.

gyms[,]"(&,~

14).

Photographs of Defendants' Facility

The training area of defendants' facility contains (a) a mat that is predominantly red, with
two (2) rows of black toward the center, upon which heavy bags containing defendants' "Atomic
Kickboxing" logo are situated; (b) one wall painted "Mesa Tan" from floor to ceiling, with
defendants' "Atomic Kickboxing" logo monnted in the center; (c) another wall covered with faux
brick paneling extending from the floor to about halfway to the ceiling, and painted solid black
from that halfway point to the ceiling; and (d) another wall painted black and containing four (4)
large windows. (Cayer Decl., Ex. D; Glantz Aff., Ex. A). There is no four-inch by twelve-inch
(4"xl2") tan wooden box at the base of the faux brick wall in the training area, nor any "High

45

Bay Acrylic Lights" hanging from chains or a similar item in that area. (Cayer Dec!., Ex. C).
Rather, the lighting in the training area is provided by fluorescent lights hanging from the ceiling
by what appears to be chains "approximately 10"-14" long***." (Glantz Aff., ~ 5[1] and Ex.
A).

The lobby/reception area of defendants' facility contains, inter alia, (a) two (2) red vinyl
couches with arms, one situated against a wall painted tan and containing a simple black molding
at the base, and the other against a faux brick-paneled wall without a base; (b) a reception desk
painted the same tan color with the same black molding at the base, and containing a black and
gray speckled, not an "absolute black," counter top; and (c) small lockers in an upside down "U"
shape, with a bar for hanging coats across the middle situated against the faux brick-paneled wall
across from, not behind, the reception desk. (Cayer Dec!., Ex. C; Glantz Aff., Ex. A). There is
no lighting, much less "red pendant lighting," over the reception desk, (Glantz Aff., ~ 5[d]), and
no tall, bamboo-style plants in defendants' lobby area. (&, ~ 5[s]). Moreover, the wall behind
defendants' reception desk is painted the same tan color as the desk itself and is not covered by
faux brick paneling. (&, Ex. A).
The merchandise area in defendants' facility consists of a tan slat wall containing black
and silver hanging accessories mounted on the upper half of the tan wall, not the faux brickpaneled wall, below which are situated red plastic cubbies containing additional merchandise for
purchase. (Cayer Dec!., Ex. C; Glantz Aff., Ex. A). There is no track lighting, much less "black
track lighting," over the merchandise area in defendants' facility. (Glantz Aff., ~ 5[h]).
There are no photographs depicting any bathrooms or changing rooms in defendants'
facility, although there are photographs depicting various areas of the facility that were under

46

>

construction at the time of the inspection. (Cayer Decl., Ex. C; Glantz Aff., 'lf'lf5[n]-[r]).

5.

Analysis
a.

Distinctiveness of Store Trade Dress

"Trade dress traditionally refers to the packaging or labeling of a product, but may also
include the appearance of the product itself" Walt Disney Co. v. Goodtimes Home Video Corp.,
830 F. Supp. 762,766 (S.D.N.Y. 1993); accord Innovative Networks, Inc. v. Satellite Airlines
Ticketing Ctrs., Inc., 871 F. Supp. 709, 722 (S.D.N.Y. 1995); see also Landscape Forms, 113
F.3d at 381 ("[T]rade dress may protect the 'overall look' of a product."); Maharishi Hardy
Blechman Ltd. v. Abercrombie & Fitch Co., 292 F. Supp. 2d 535, 541 (S.D.N.Y. 2003) ("The
scope of trade dress claims has expanded to include the totality of any elements in which a
product or service is packaged or presented." (quotations and citation omitted)). Accordingly,
the trade dress of a business may include the overall appearance of its business facilities, M, its
interior design, layout or decor. See, ~Pure Power Boot Camp, Inc. v. Warrior Fitness Boot
Camp, LLC, 813 F. Supp. 2d 489, 539-40 (S.D.N.Y. 2011) (fmding that the p1aintiffhad a
recognizable trade dress in the layout and interior decor of its indoor exercise facility);
Innovative Networks, 871 F. Supp. at 722 (involving a trade dress claim based upon the design
and constmction of the plaintiffs business centers to resemble ticket counters in an airport).
Since "a trade dress that seeks to protect an idea, a concept, or a generalized type of
appearance is generic, not distinctive, and therefore not subject to trade dress protection[,]"

47

Maharishi Hardy, 292 F. Supp. 2d at 542 (quotations and citation omitted);~ also Pure Power,
813 F. Supp. 2d at 538 ("A generic trade dress is never protectable"), plaintiff must establish
"that the appearance of its several products

[~

its franchises] is sufficiently distinct and unique

to merit protection as a recognizable trade dress." Landscape Forms, 113 F.3d at 380; accord
Regal Jewelry Co., Inc. v. Kings bridge Int'l, Inc., 999 F. Supp. 477, 486 (S.D.N.Y. 1998).
"Initially, this burden requires the plaintiff to articulate a specific trade dress,* * *and then to
demonstrate that it has, in fact, consistently used that trade dress." Regal Jewelry, 999 F. Supp.
at 486. Thus, since plaintiff is claiming a trade dress based upon the appearance of its multiple
franchises, it must establish that the overall look in each of its franchises is consistent. See
Yunnan Design, 262 F.3d at 116 (quoting Walt Disney, 830 F. Supp. at 766 ); GTFM, Inc. v.
Solid Clothing, Inc., 215 F. Supp. 2d 273, 299 (S.D.N.Y. 2002); see also Maharishi Hardy, 292
F. Snpp. 2d at 542 ("The broad category of distinctiveness incorporates three related doctrines*

* *: genericness, specificity, and consistency.

A trade dress which is either generic, non-specific,

or inconsistent among its products cannot be distinctive.") "If a plaintiff can not [sic] establish
that its [appearance] ha[ s] a consistent overall look, the trade dress that is allegedly infringed
does not exist." Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co., Ltd., No. 95 Civ. 4008,
1997 WL 749388, at* 4 (S.D.N.Y. Dec. 3, 1997).
"Although each element of a trade dress individually might not be inherently distinctive,
it is the combination of elements that should be the focus of the distinctiveness inquiry." Jeffrey
Milstein, 58 F.3d at 32; ~also Wine Made Simple, 320 F. Supp. 2d at 71 ("Because in the

48

context of trade dress the whole can be greater than, or at least different from, the sum of its
parts, it is necessary to consider the combined articulated elements of [the plaintiffs] trade dress
to detem1ine whether as an ensemble they fonn a distinctive presentation to consumers.")
Nonetheless, although "[a] unique combination of elements may make a dress distinctive,[] the
fact that a trade dress is composed entirely of commonly used or functional elements might
suggest that the dress should be regarded as unprotectible or 'generic,' to avoid tying up a
product or marketing idea." Yunnan Design, 262 F.3d at 118 (quotations and citation omitted);
see also Maharishi Hardy, 292 F. Supp. 2d at 543 ("Where the asserted trade dress extends to the
'overall look' of the combination of features comprising a product or product line, the Court
must evaluate the distinctiveness and functionality of those features taken together, not in
isolation.

* * * Nonetheless, the fact that a trade dress is composed exclusively of commonly

used or functional elements might suggest that that dress should be regarded as unprotectable or
'generic,' to avoid tying up a product or marketing idea." (quotations, emphasis and citations
omitted)).
Initially, as pleaded, five (5) of the nineteen (19) elements identified by plaintiff as
constituting its trade dress, i.e., the flooring, walls, layout of the floor mat, ceilings and product
on which the training floor lights are held, are not even required to be uniform throughout its
franchises. Moreover, it is clear from the submitted photographs that the "overall look" of
plaintiffs franchises vary widely and are not uniform. Even the photographs of plaintiffs "Full
Model" franchises, i.e., the Cranston and Seekonk franchises, reveal various inconsistencies

49

between the elements plaintiff claims constitutes its trade dress and the actual appearance of
those franchises, as well as between the stores themselves. Given the multiple variations in the
appearance of even the small sampling of plaintiffs franchises provided in the record, plaintiffs
Store Trade Dress claim is "more in the nature of an unprotectable 'generalized appearance[,]'"
than of the "overall look" of its stores. Casa Editrice, 1997 WL 749388, at* 4 (quoting Jeffrey
Millstein, 58 F.3d at 33). In other words, plaintiff cannot demonstrate "that it has consistently
applied any single avowed theme trade dress to [its multiple franchises]." Regal Jewelry, 999 F.
Supp. at 487. Since, inter alia, the elements of plaintiffs claimed trade dress are not consistent
in its franchises, plaintiff carrnot establish that its "overall look" is distinctive or constitutes a
protectable trade dress.

See,~

Maharishi Hardy, 292 F. Supp. 2d at 542; Regal Jewelry, 999 F.

Supp. at 486 (holding that the plaintiffs trade dress claim under the Lanham Act failed "because
it ha[d] not consistently defined the elements of, or pursued the use of, a theme trade dress.")
h1 any event, defendants have established that their Atomic K.ickboxing facility does not

infringe upon plaintiffs Store Trade Dress, insofar as, inter alia: (1) defendants' reception desk
and walls are painted a different color, i.e., Mesa Tan as opposed to Benjamin Moore "#1061
tan,"7 (Am. Compl., ~~ 41(a) and (e)); (2) defendants' reception desk has a different counter top,
i.e., black and gray speckled granite as opposed to "absolute black granite," (Tracey Aff., Ex. A);
(3) the lobby flooring in defendants' reception area is not "heron beige" ceramic tile as set forth

7

While plaintiff designates the color of its wall as "tan," the actual name of the
Benjamin Moore #1061 product is "Brunswick Beige,"~ www.benjaminmoore.com/enus/paint-color/, and it is described as "[t]imeless and traditional." Id.
50

in plaintiffs Facility Requirements, @.); ( 4) defendants do not have "red pendant lighting," @,
,; 41 (d)), over their reception desk; (5) defendants' merchandise area does not contain a "black
slat wall with tan framing[,]"@,_,,; 4l(f)), nor "black track lighting[,]" (!Q,,; 4l(h)); (6)
defendants' lobby area has, inter alia, (a) red vinyl couches with arms, (see Cayer Dec!., Ex. D),
not red fabric benches, (see Tracey Aff., Ex. A), and (b) a small green plant that appears to be
real in a tall pot or vase situated on an end table, (see Cayer Dec!., Ex. D), not a "green tall
bamboo style [silk] plant[]," (Am. Compl.,,; 4l(s)), in a fiberglass plant box, (see Tracey Aff.,
Ex. A); (7) defendants' training area has red and black floor mats, but they are not red with a
thirty-six-inch (36") black border and do not have a logo in the center as set forth in plaintiffs
Facility Requirements, (see Am. Compl.,,; 4l(j); Tracey Aff., Ex. A), nor is there any evidence
that the pattern in which they are situated is similar to any of the training areas in plaintiffs other
franchises; and (8) there are no "high bay acrylic [lights] hung to the 10" [sic] height on chain or
similar product[,]"@,,; 41(1); see Tracey Aff., Ex. A), in defendants' training area. In fact, the

only indistinguishable element between defendants' facility and plaintiffs claimed Store Trade
Dress is the "open ceiling painted black," (Am. Compl.,,; 4l(k)), which is generic, not set forth
in plaintiffs Facility Requirements, and is pleaded as an alternative to a drop ceiling.

ilil,,;

4l(k)). Otherwise, the overall look of defendants' facility is sufficiently dissimilar from the
appearance of all of plaintiffs franchises depicted in the record, as well as from the photographs
depicting plaintiffs Facility Requirements. In cases involving the general appearance of a
business, such as this one, "the trade dress is the overall look of the store, consisting of a

51

cumulation of interacting elements, and defendants do not infringe by appropriating the
marketing concept, or any particular element of plaintiff's design, unless the overall dress is
sufficiently similar to generate likely consumer confusion." Wine Made Simple, 320 F. Supp. 2d
at 72. Moreover, "competitors cannot be prevented from employing a trade dress that is similar
to but clearly different than [the plaintiff's], particularly when [the plaintiff] has failed to use that
dress on many of its products***." Regal Jewelry, 999 F. Supp. at 488.

Accordingly,

pursuant to Rule 12(d) of the Federal Rules of Civil Procedure, the branch of defendants' motion
seeking dismissal of plaintiff's Store Trade Dress claim pursuant to Rule 12(b)(6) of the Federal
Rules of Civil Procedure is treated as a motion for summary judgment under Rule 56 of the
Federal Rules of Civil Procedure and summary judgment is granted dismissing plaintiff's Store
Trade Dress claim against defendants in its entirety with prejudice.

b.

Likelihood of Confusion

Even assuming, arguendo, that plaintiff's Store Trade Dress is distinctive, plaintiff
cannot establish a likelihood of confusion. In this Circuit, "likelihood of confusion means a
probability of confusion; it is not sufficient if confusion is merely possible." Estee Lauder, Inc.
v. The Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997) (quotations and citation omitted); accord
Star Indus., Inc. v. Bacardi & Co., Ltd., 412 F.3d 373, 383 (2d Cir. 2005); ~also New York
Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 554 (2d Cir. 2002) ("To
support a fmding of infringement, a plaintiff must show a probability, not just a possibility, of

52

confusion."); accord Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir. 1998).
Likelihood of confusion is determined by considering the following eight (8) factors set out in
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961):
"the strength of the prior owner's mark, the degree of similarity between the two
marks, the proximity of the products, the likelihood that the prior owner will
bridge the gap between the two products, actual confusion, and the reciprocal of
defendant's good faith in adopting its own mark, the quality of defendant's
product, and the sophistication of the buyers."
Nora Beverages II, 269 F.3d at 119 (quoting PolaroiQ, 287 F.2d at 495); accord Star Indus., 412
F.3d at 384.
"When conducting a Polaroid analysis, a court should focus on the ultimate question of
whether consumers are likely to be confused." Nora Beverages II, 269 F.3d at 119 (quotations
and citation omitted). "In making this determination, a court looks to the totality of the product."
Id. "Although no one factor is necessarily dispositive, any one factor may prove to be so." Id.
(emphasis added). "[T]he Lanham Act must be construed in the light of a strong federal policy in
favor of vigorously competitive markets[,]*** [and] courts must not lose sight of the
underlying purpose of the Lanham Act, which is protecting consumers and manufacturers from
deceptive representations of affiliation and origin." Id. (quotations and citations omitted).

1.

Strength of the Trade Dress

"[T]he strength of a mark [or trade dress] is determined by its tendency to uniquely
identify the source of the product." Star Indus., Inc., 412 F.3d at 384; see also Patsy's Brand, Inc.
v. LO.B. Realty, Inc., 317 F.3d 209, 218 (2d Cir. 2003) ("To determine the strength of a mark, a
53

court examines the mark's tendency to identifY the goods sold as emanating from a particular,
although possibly anonymous, source. * * * Strength of trade dress is similarly analyzed."
(quotations and citations omitted)); accord Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111
F. 3d 993, 1003 (2d Cir. 1997). "Determination of strength* * *begins with inquiry as to
whether the mark [or trade dress] has the inherent distinctiveness that would entitle it to
protection in the absence of secondary meaning[,]" Star Indus., 412 F. 3d at 384, k, whether the
trade dress is generic, descriptive, suggestive or arbitrary and fanciful. Id. at 3 84-85. "Arbitrary
or fanciful marks are ones that do not communicate any information about the product either
directly or by suggestion[,]" Id. at 385, and are inherently distinctive. Id.
"Once a mark [or trade dress] has been classified, the second step in determining strength
is to consider its degree of distinctiveness, au inquiry that concerns both the inherent
inventiveness of the mark itself and the amount of third-party usage of the term [or image] as a
mark [or trade dress], especially in the market in question." Star Indus., 412 F.3d at 385
(quotations and citation omitted).
Defendants have sufficiently established, inter alia, that other fitness and martial arts
facilities offering kickboxing classes that are not affiliated in any way with the parties herein
utilize many of the elements plaintiff claims constitutes its Store Trade Dress,~. faux brick
paneling and/or red and black color schemes in their businesses.' See,~

8

"[T]he existence of similar dresses used in connection with similar products," Best
Cellars Inc. v. Grape Finds at Dupont, Inc., 90 F. Supp. 2d 431,454 (S.D.N.Y. 2000), is a factor
to consider in determining the strength of the trade dress with respect to the "likelihood of
confusion" element of a trade dress claim. See id. (holding that the strength of the plaintiffs
54

•

www.littleboxingclub.com (depicting a wall with similar faux brick paneling); www.9round.com
(depicting a wall with similar faux brick paneling and a red and black color scheme);
www.ufcgyrn.com (depicting a red and black color scheme). See Regal Jewelry, 999 F. Supp. at
489 ("An otherwise protectable trade dress can become generic within a particular market if the
design becomes a standard or custom for the industry); Kind LLC v. ClifBar & Co., No. 14 Civ.
770, 2014 WL 2619817, at* 3 (S.D.N.Y. June 12, 2014) ("[D]espite the tendency for trade
dresses to be inherently distinctive because the whole universe of materials and designs is
available for packaging, [p ]laintiffs very common packaging [i.e., interior] design is not
inherently distinctive." (quotations and citation omitted)); Conte v. Newsday, Inc., No. 06-cv4859, 2013 WL 978711, at* 19 (E.D.N.Y. Mar. 13, 2013) ("[T]he fact that a similar trade dress
is already being used by manufacturers of other kinds of products, may indicate that th[e] dress is
no more than a concept or idea." (quoting Jeffrey Milstein, 58 F.3d at 33)). Accordingly,
plaintiff cannot establish that upon consideration of its product, i.e., its kickboxing franchises,
and the market in which it competes, Landscape Forms, 113 F.3d at 378, the "overall look" of its
franchises served to identify the source of its product. "Notably, the only element of [plaintiffs]
packaging that indicates its source, [plaintiffs ILKB]logo, is not included in the trade dress
[plaintiff] seeks to protect[.]" Kind LLC, 2014 WL 2619817, at* 3. In sum, even assuming that
plaintiffs Store Trade Dress is inherently distinctive, it is not particularly strong because it "does
not primarily serve to identify the source of its product." Eastern America Trio Products, Inc. v.

trade dress "may be diminished by the existence of similar dresses used in connection with
similar products.")
55

Tang Elec. Corp., 97 F. Supp. 2d 395,411 (S.D.N.Y. 2000).

ii.

Similarity of Trade Dress

"[T]he appropriate test for similarity of trade dress is the overall impression of the
products and the entirety of the trade dress, and [] a mark may not be dissected in order to prove
similarity." Nora Beverages II, 269 F.3d at 122. Although "[q]uestions regarding likelihood of
confusion are normally factual in nature," Universal City Studios, Inc. v. Nintendo Co., Ltd., 746
F.2d 112, 116 (2d Cir. 1984), summary judgment is "appropriate if the court is satisfied that the
products or marks [or trade dress] are so dissimilar that no question of fact is presented." Id.; ~
also Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000) ("[I]n an appropriate
case, the 'similarity of the marks' factor can be dispositive and will warrant summary judgment
for an infringement defendant if the court is satisfied that the ... marks are so dissimilar that no
question of fact is presented." (quotations and citation omitted)). The court's task on a motion
for summary judgment is "to determine whether any reasonable trier of fact could conclude that
confusion is likely." Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir.
1996) (quotations and citation omitted).
Although there are some similarities between the appearance of plaintiffs "full" franchise
and plaintiffs facility, their overall look is sufficiently different as to make the likelihood of
consumer confusion unlikely. See, ~ Eastern American Trio, 97 F. Supp. 2d at 411. In other
words, the "similarity of the marks" factor is dispositive in defendants' favor insofar as "[t]he

56

cumulative effect of the[] differences in the parties' commercial presentation of their trade dress
creates distinct marketplace impressions, thereby eliminating any likelihood of consumer
confusion." Conte, 2013 WL 978711, at* 21; see,"'-& Eastern American Trio, 97 F. Supp. 2d at
414 (finding that the plaintiffs claim for packaging trade dress infringement failed because
"[t]he strength of plaintiffs trade dress, the proximity of the products, and even plaintiffs
evidence of actual confusion [were] * * * far outweighed by the fact that the overall appearance
of the packaging at issue is so dissimilar.") Accordingly, and construing plaintiffs Store Trade
Dress claim in light of the "strong federal policy in favor of vigorously competitive markets[,]"
id., defendants have established their entitlement to summary judgment dismissing plaintiffs
Store Trade Dress claim against them in its entirety with prejudice.

C.

Plaintiffs Motion for a Preliminary Injunction
1.

Standard

"[A] court may issue a preliminary injunction in a copyright [or trademark] case only if
the plaintiff has demonstrated [1] either (a) a likelihood of success on the merits or (b)
sufficiently serious questions going to the merits to make them a fair ground for litigation * *
*[,]"Salinger v. Colting, 607 F. 3d 68, 79 (2d Cir. 2010) (quotations, alterations and citation
omitted);~

also Zino Davidoff SA v. CVS Com., 571 F.3d 238,242 {2d Cir. 2009) (trademark

claim); "[2] that he is likely to suffer irreparable injury in the absence of an injunction[,]"
Salinger, 607 F.3d at 79-80 (quoting Winter v. Natural Res. Def. Council, 555 U.S. 7, 129 S. Ct.

57

365, 374, 172 L. Ed. 2d 249 (2008)); accord Zino Davidoff, 571 F.3d at 242; "[3] [that] "the
balance of hardships tips in the plaintiffs favor,***[;] and [4] ***that the public interest
would not be disserved by the issuance of a preliminary injunction." Salinger, 607 F.3d at 80
(quotations and citations omitted); see also WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 278 (2d Cir.
2012) ("In a copyright case, a district court may grant a preliminary injunction when plaintiffs
demonstrate: (1) a likelihood of success on the merits; (2) irreparable harm in the absence of an
injunction; (3) a balance of the hardships tipping in their favor; and (4) non-disservice of the
public interest by issuance of a preliminary injunction.") Injunctive relief is "an extraordinary
remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such
reliefl:,]" Winter, 555 U.S. at 22, 129 S. Ct. 365, and is "never awarded as of right." Id. at 24,
129 S. Ct. 365.

2.

Irreparable Harm

"A showing of irreparable harm is the single most important prerequisite for the issuance
of a preliminary injunction." Faiveley Transport Malmo AB v. Wabtec Corp., 559 F.3d 110, 118
(2d Cir. 2009) (quotations and citation omitted); accord Grand River Enter. Six Nations, Ltd. v.
Pryor, 481 F.3d 60, 66-67 (2d Cir. 2007). "[T]o satisfy the irreparable harm requirement,
plaintiffs must demonstrate that absent a preliminary injunction they will suffer an injury that is
neither remote nor speculative, but actual and imminent, and one that cannot be remedied if a
court waits until the end of trial to resolve the harm." Faiveley Transport, 559 F.3d at 118

58

(quotations, brackets and citation omitted)); accord Freedom Holdings, Inc. v. Spitzer, 408 F.3d
112, 114 (2d Cir. 2005); ~also Salinger, 607 F. 3d at 81 ("The relevant harm is the harm that
(a) occurs to the parties' legal interests and (b) cannot be remedied after a final adjudication,
whether by damages or a permanent injunction.") "Where there is an adequate remedy at law,
such as an award of money damages, injunctions are unavailable except in extraordinary
circumstances." Faiveley Transport, 559 F.3d at 118 (quotations, brackets and citation omitted)).
"Harm may be irreparable where the loss is difficult to replace or measure, or where
plaintiffs should not be expected to suffer the loss." WPIX, 691 F.3d at 285. "The court must not

* * * presume that the plaintiff will suffer irreparable harm[,] * * * and must actually consider
the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately
prevails on the merits, paying particular attention to whether the remedies available at law, such
as monetary damages, are inadequate to compensate for that injury." Salinger, 607 F.3d at 80
(quotations and citation omitted); see also WPIX, 691 F.3d at 285 ("[C]ourts may no longer
simply presume irreparable harm; rather, plaintiffs must demonstrate that, on the facts of the
case, the failure to issue an injunction would actually cause irreparable harm.")
In assessing irreparable harm, courts should generally consider any undue delay by the
plaintiff in seeking the preliminary injunction. See Tom Doherty Assocs., Inc. v. Saban Entm't,
Inc., 60 F.3d 27, 39 (2d Cir. 1995); Environmental Servs., Inc. v. Recycle Green Servs., Inc., 7 F.
Supp. 3d 260, 280 (E.D.N.Y. 2014); see also Levola v. Fischer, 403 F. App'x 564, 565 (2d Cir.
Dec. 14, 2010) (summary order) (affirming the. district court's finding that the plaintiff failed to

59

show an immediate danger of irreparable harm based upon his delay in seeking preliminary
relief); Transcience, 50 F. Supp. 3d at 457-58 ("It is well-established in this Circuit that delays in
moving for injunctive relief to protect copyrights and trademarks from further unauthorized use
weigh heavily against the movant." (citing cases)); Bulman v. 2BKCO, Inc., 882 F. Supp. 2d 551,
564 (S.D.N.Y. 2012) ("In the Second Circuit, delay in applying for a preliminary injunction is
one factor to be considered in determining whether a plaintiff will, in fact, suffer irreparable
harm in the absence of a preliminary injunction." (quotations and citation omitted)). "Delay in
seeking a preliminary injunction can weaken a claim of irreparable harm because 'the failure to
act sooner undercuts the sense of urgency that ordinarily accompanies a motion for preliminary
relief."' Juicy Couture, Inc. v. Bella Int'l, Ltd., 930 F. Supp. 2d 489, 504 (S.D.N.Y. 2013)
(quoting Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964,968 (2d Cir.l995)). The Second
Circuit has "found delays of as little as ten weeks sufficient to defeat [a finding] of irreparable
harm* * *[,]"Weight Watchers Int'l, Inc. v. Luigino's, Inc., 423 F.3d 137, 144 (2d Cir. 2005),
except for when there is "good reason" for the delay, "as when a plaintiff is not certain of the
infringing activity or has taken additional time to examine the infringing product." Id. at 144-45;
see also Silber v. Barbara's Bakery, Inc., 950 F. Supp. 2d 432, 439 (E.D.N.Y. 2013) ("While
delay does not always undermine an alleged need for preliminary relief, months-long delays in
seeking preliminary injunctions have repeatedly been held by courts in the Second Circuit to
undercut the sense of urgency accompanying a motion for preliminary relief." (citing cases));
VOX Amplification Ltd. v. Meussdorffer, 50 F. Supp. 3d 355, 376 (E.D.N.Y. 2014) (holding that

60

while "delay generally destroys the presumption of irreparable harm that follows a showing of
likelihood of confusion in a trademark case, the presumption remains in cases where the
non-infringing party was unaware of its rights or was actively pursuing its rights." (quotations,
alterations and citation omitted)).
Plaintiff allegedly became aware of defendants' alleged copyright infringement on June 2,
2014, (Am. Compl., '1{'1{16, 24), and commenced this action against them on June 11, 2014, but
did not move for a preliminary injunction until Aprill8, 2015, more than ten (10) months later,
and only after defendants moved to dismiss the amended complaint.' Even assuming, arguendo,
that some delay was initially justified while the parties attempted to settle the matter in August
2014, (see Notice of Pending Settlement filed August 6, 2014, Doc. No. 12; and Notice of
Settlement Impasse filed August 21, 2014, Doc. No. 15), plaintiffs still failed to seek injunctive
relief for approximately eight (8) months after their settlement negotiations broke down, thereby
undermining their claim of irreparable harm. See,

~Grout

Shield Distribs., LLC v. Elio E.

Salvo, Inc., 824 F. Supp. 2d 389, 403 (E.D.N.Y. 2011) (finding that the plaintiffs five (5) month
delay in moving for a preliminary injunction after settlement negotiations had broken down was
unreasonable and undercut its claim of irreparable harm); Marks Org., Inc. v. Joles, 784 F. Supp.
2d 322, 333 (S.D.N.Y. 2011) ("[D]iligent pursuit of settlement negotiations can justifY delay (but

9

Defendants served their motion to dismiss upon plaintiff on or about December 1,
2014, (Doc. No. 42), and plaintiff filed its response thereto on or about December 12, 2014,
(Doc. ·No. 43), yet plaintiff never indicated a need for, nor an intention to seek, a preliminary
injunction at that time. Likewise, in the six ( 6) pretrial conferences held before me in this case
between September 24, 2014 and March 18, 2015, plaintiff never indicated a need for, nor an
intention to seek, a preliminary injunction in this case.
61

* * * extensive delay after negotiations break down will still defeat [a finding of irreparable
harm]).")
Moreover, the withdrawal of defendants' counsel on August 22, 2014, and defendants'
subsequent delay in retaining new counsel on behalf of BMA and in filing an answer to the
complaint until October 28, 2014, does not excuse plaintiffs delay in seeking a preliminary
injunction. See, M:. Silber, 950 F. Supp. 2d at 442 (finding the five (5) month delay between the
commencement of the action and plaintiffs' motion for a preliminary injunction to be
unreasonable because the plaintiffs "were under no obligation to await defendant's answer before
moving.") In any event, plaintiff still unreasonably waited approximately six (6) months after
defendants retained new counsel and filed an answer before seeking a preliminary injunction.
Furthermore, plaintiffs delay cannot be attributed to defendants' filing of the motion to dismiss,
~'

M:. Environmental Servs., 7 F. Supp. 3d at 280, because, inter alia, plaintiff responded to

the motion on December 12, 2014, only eleven (II) days after the motion had been served upon
it, and more than four (4) months before it moved for a preliminary injunction. See, M:.
Vantone Grp. Ltd. Liab. Co. v. Yangpu NGT Indus. Co., Ltd., No. 13-cv-7639, 2015 WL
1055933, at* 4 (S.D.N.Y. Mar. 11, 2015) ("Courts typically decline to grant preliminary
injunctions in the face of unexplained delays of more than two months." (quoting Gidatex, S.r.L.
v. Campaniello Imports, Ltd., 13 F.Supp.2d 417, 419 (S.D.N.Y.l998))).
In any event, plaintiff cannot establish irreparable harm with respect to its remaining
claims of copyright and trademark infringement, unfair competition and cybersquatting relating

62

to the parties' websites because, inter alia, (1) it is undisputed (a) that defendants' allegedly
infringing websites are no longer active and (b) that defendant has been operating a website since
at least November 2014 that plaintiff does not claim infringes upon any of its copyrights,
trademarks or trade dress; and (2) Burke has represented in a sworn declaration that he will not
operate the allegedly infringing websites during the pendency of this litigation. 10 See, ~
Stokely-Van Camp, Inc. v. Coca-Cola Co., 646 F. Supp. 2d 510, 524-25 (S.D.N.Y. 2009)
(fmding that the defendant's cessation of the allegedly infringing conduct and commitment not to
continue such conduct during the pendency of the lawsuit obviated the need for a preliminary
injunction because the plaintiff could not show any likelihood of irreparable injury without the
preliminary injunction); Kuklachev v. Gelfman, 629 F. Supp. 2d 236, 249 (E.D.N.Y. 2008),
affd, 361 F. App'x 161 (2d Cir. Oct. 16, 2009) (holding that the irreparable harm factor requires
a showing of a "real or immediate threat that the plaintiff will be wronged again"); American
Express Travel Related Servs. Co. v. MasterCard Int'l Inc., 776 F. Supp. 787,791 (S.D.N.Y.
1991) ("When a defendant revises an allegedly infringing commercial and represents that the
original commercial will not be broadcast in the future, the need for injunctive relief as to the
original commercial is moot.") Specifically, Burke avers, inter alia, (1) that "[j]ust a few weeks
after [he]launched [<ilove2k:ickbox.com>]

* * * [p]laintiffsent a 'take down' notice to the host

ofth[at] []website, shutting the website down[,]" (Declaration of John Jacob Burke in

10

Burke also contends that "since it started this lawsuit, Plaintiff has also changed the
design and layout of its I Love Kickboxing website[,] [which] * * * looks nothing like the
website [it] claims is protected in its complaint," (Burke PI Dec!.,~ 15), further undermining
plaintiffs claim of irreparable harm.
63

Opposition to Plaintiffs Motion for Preliminary Injunctive Relief ["Burke PI Dec!."], "jjlO); (2)
that "[t]he <www.ilove2kickbox.com> website remains shut down and is not operative[,]" (ish, "jj
11); (3) that "[p]laintiffalso sent a 'take down' notice to the host of the
<www.atomickickboxing.com> website, shutting th[at] website down as well[,]" (ish, "i\12); (4)
that "[a]s a result, and given [p]laintiff s coercive position, for the pendency of this litigation, as
a sign of good faith [he] ha[ s] taken the step of temporarily using the website on which [he]
normally advertise[s] [his] martial arts training services, <www.burkesmartialarts.com>,to host
the Atomic Kickboxing website and advertise the kickboxittg services[,]" (ish, "jj13) (emphasis
added); and (5) that "the Burke's Martial Arts website has a look and feel that is unquestionably
distinct from that of Plaintiffs I Love Kickboxing website* * *[and] the content on the Burke's
Martial Arts site, which is not in dispute, bears no similarity to the content on Plaintiffs
website." ili!,, "i\14). 11 Accordingly, plaintiffs motion for a preliminary injunction is denied in

11

During the pretrial conferences held before me on November 12, 2014 and February
25, 2015, plaintiffs counsel conceded that defendants' allegedly infringing websites are inactive
and represented that plaintiff has no issue with respect to defendants' present website. In
addition, in their memorandum oflaw in support of their motion for preliminary injunction,
plaintiff contends, inter alia, that"[ d]efendants' ILove2Kickbox.com website included content
consisting of original constituent elements of [plaintiffs] Work[,]" (Plf. PI Mem. at 6) (emphasis
added); that plaintiff"had the ILove2Kickbox.com website taken down* **[,]"(ish); that
"[ d]efendants' earlier infringing website ILove2Kickbox.com included literal copying of* * *
[plaintiffs Website Trade Dress]," (ish) (emphasis added); that "the trade dress Defendants
initially released on the second website, 'atomickickboxing.com' also mimicked completely the
trade dress of [plaintiffs] Work[,]" (ish at 7) (emphasis added); that "the Infringing Doman
[ILove2Kickbox.com] was taken down * * * [,]" (ish at 12); and that "[d]efendants' egregious
copying [is] demonstrated by the website previously located on the Internet at
www.atomickickboxi.ng.com * **[,]"(ish at 13) (emphasis in original).
64

its entirety. 12

Ill.

CONCLUSION
For the foregoing reasons, (1) the branch of defendants' motion seeking dismissal of

plaintiffs trade dress claim pertaining to its Website pursuant to Rule 12(b)(6) of the Federal
Rules of Civil Procedure is granted and so much of plaintiffs trade dress claim as pertains to its
Website is dismissed in its entirety with prejudice for failure to state a claim for relief; (2) the
branch of defendants' motion seeking dismissal of plaintiffs trade dress claim as pertains to its
Store Trade Dress pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is treated as
a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure and
summary judgment is granted dismissing plaintiffs trade dress claim as pertains to its Store
Trade Dress in its entirety with prejudice; (3) defendants' motion pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure is otherwise denied; and (4) plaintiffs motion for a preliminary
injunction pursuant to 17 U.S.C. § 502, 15 U.S.C. § 116 and Rule 65 of the Federal Rules of
Civil Procedure is denied in its entirety.
SO ORDERED.

Is!
Sandra J. Feuerstein
United States District Judge
Dated: July 8, 2015
Central Islip, New York
12

As plaintiffs trade dress claims have been dismissed in their entirety with prejudice,
plaintiff clearly cannot establish a likelihood of success on the merits with respect those claims.
Thus, it is unnecessary to consider plaintiffs contentions with respect to those claims.
65