Eliya, Inc., 128 Engle Street, Englewood, NJ 07631 v. STEVEN MADDEN, LTD., 5216 Barnet Avenue, Long Island City, NY 11104

Filing 68

ORDER ADOPTING REPORT AND RECOMMENDATIONS : Having considered all the arguments raised in Eliya's objections and having reviewed the R& R de novo, the Court adopts Judge Locke's January 11, 2018 Report and Recommendation in its entirety. Accordingly, Defendant's motion to dismiss is granted. The Clerk of Court is directed to enter judgment accordingly and to close this case. See attached Memorandum & Order. Ordered by Judge Denis R. Hurley on 2/22/2018. (Gapinski, Michele)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
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ELIYA, INC.,
Plaintiff,

MEMORANDUM & ORDER
Civil Action No. 15-1272 (DRH)(SIL)

-againstSTEVEN MADDEN, LTD., a Delaware
Corporation, J&L, a Peoples Republic of
China Company, and Does 1-10.
Defendants.
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APPEARANCES:
The Law Offices of Tedd S. Levine, LLC
Attorneys for Plaintiff
1305 Franklin Avenue, Suite 300
Garden City, NY 11530
By:
Tedd S. Levine, Esq.
Osterlenk Faber LLP
Attorneys for Defendant
1180 Avenue of the Americas
New York, NY 10036-8403
By:
Douglas A. Miro, Esq.
Alan Federbush, Esq.

HURLEY, Senior District Judge:
Presently before the Court are objections by plaintiff, Eliya, Inc. (“Plaintiff” or “Eliya”)
to the Report and Recommendation, dated January 11, 2018 (“R&R”), of Magistrate Judge
Steven I. Locke insofar as it recommends granting the motion of defendant Steven Madden, Ltd.
(“Defendant” or “Madden”) to dismiss the First Amended Complaint (“FAC”) with prejudice for
failure to state a claim upon which relief can be granted. For the reasons set forth below, the
objections are rejected, the R&R is adopted in toto, and the motion to dismiss is granted.
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I.

Standard of Review
Federal Rule of Civil Procedure 72(b) provides that when a magistrate judge issues a

report and recommendation on a matter “dispositive of a claim or defense of a party,” the district
court judge shall make a de novo determination of any portion of the magistrate judge’s
disposition to which specific written objection has been made. Fed. R. Civ. P. 72(b). Here,
Plaintiffs objects to the R&R asserting that the Magistrate Judge erred in recommending
dismissal by (1) “[p]roperly citing but misapplying the proper legal standard to survive a motion
to dismiss;” (2) “[i]ncorrectly determining that the FAC should articulate those features of
Eliya’s trade dress that make it distinctive and the FAC lacks requisite specificity;” (3)
“[i]ncorrectly determining that the FAC does not set forth a plausible assertion that Eliya’s trade
dress is non-functional but is instead ‘conclusory’:” and (4) “[i]ncorrectly concluding that Eliya’s
trade dress infringement claim independently fails because it has not pled facts that plausibly
show a likelihood of confusion.” (Pl.’s Objections at 1-2.) Given the breath of Plaintiff’s
objections, the Court shall conduct a de novo review of the entire R & R.
II.

Nature of this Action
At issue in this case are three shoes created by Eliya. They are the Lulia shoe, the Comfi

shoe and the Catwalk shoe (collectively the “Berni Mev shoes”). According to Eliya, each shoe
has unique trade dress formed by “the aggregate of the specific features of such shoes.” (FAC ¶
11.) As alleged in the relevant pleading, these three shoes have “[a]pproximately 1/4 inch multicolor or multi-shaded wide straps that form a woven distinctive alternating pattern on the upper
portion of the shoe,” and “an appendage on the heel that extends higher than the weave portion
and includes cutouts th[r]ough which the weave can be seen.” (Id. ¶¶ 12, 15, 18.) The Lulia and

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Comfi shoes both have a “mary jane strap.” The Comfi shoe has an “open toe with an angular cut
out shape,” while the other two shoes have “closed toes with an angular shape on the top front
portion of the shoe.” The sole portion of the Lulia shoe has “horizontal grooves” on and “weaved
notches extending up from the bottom.” The Catwalk shoe has a flat sole and the Comfi shoe has
“[a]n angular-like shape on the top portion” and “vertical grooves” on the sole. (Id. ¶¶ 12, 15,
18.)
It is alleged that by combining the above enumerated feature, Eliya has given these shoe
an “innovative and unique look;” consumers have come to identify Eliya as their source and their
“trade dress is well known to the consuming public and the trade” as identifying “Eliya as the
exclusive and unique source that use such trade dress.” It is the trade dress in the Bernie Mev
shoes that Madden is accused of copying. 1
III.

Judge Locke’s Report and Recommendation
In his report, Judge Locke recommends that the complaint be dismissed pursuant to Fed.

R. Civ. P. 12(b)(6) for a number of reasons. First, Plaintiff has failed to sufficiently describe the
character and nature of its claimed trade dress. Second, even if the character and nature of the
trade dress was adequately alleged, there was a failure to adequately plead that the features at
issue are non-functional. Finally, the trade dress infringement claim independently fails because
facts plausibly alleging likelihood of confusion were not pled. 2

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Additional allegations in the FAC will be discussed as relevant to the topic at hand.

Because Madden’s motion did not address whether the FAC adequately alleged secondary meaning, neither did
Judge Locke. Similarly, this Court need not address this aspect of the infringement claim.

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IV.

The Report is Adopted
A.

Principles Regarding Trade Dress Infringement Claims

In conducting a de novo review, the Court is guided by the following principles regarding
trade dress infringement claims.
The Lanham Act protection extends to a product’s trade dress which “encompasses the
overall design and appearance that make the product identifiable to consumers.” Nora
Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 118 (2d Cir. 2001). However, caution
must be exercised where a party seeks trade dress protection for the design of a product, rather
than the product’s packaging, because consumers do not associate the former with a particular
manufacturer as readily as they do the latter. See Yurman Design Inc, Inc. v. PAJ, Inc., 262 F.3d
101, 114-16 (2d Cir. 2001); EFS Mktg., Inc. v. Russ Verrie & Co., Inc., 76 F.3d 487, 491 (2d Cir.
1996). Thus, in this Circuit, a party alleging trade dress infringement of a product design must
allege “a precise expression of the character and scope of the claimed trade dress,” and facts that
plausibly demonstrate “the claimed trade dress in non-functional,” “the claimed trade dress has
acquired secondary meaning” and “there is a likelihood of confusion between the plaintiff’s
goods and the defendant’s.” Sherwood 48 Assocs. v. Sony Corp. of Am., 76 Fed. App’x 389, 391
(2d Cir. 2003).
B.

The FAC Fails to Set Forth A Precise Expression of the
Character and Scope of the Claimed Trade Dress

A plaintiff must articulate the “elements of their product design with specificity to be
afforded trade dress protection.” Shevy Custom Wigs, Inc. v. Aggie Wigs, 2006 WL 3335008, at
*4 (E.D.N.Y. Nov. 17, 2006). Although “there is no question that trade dress may protect the
‘overall look’ of a product” since “each element of a trade dress individually might not be
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inherently distinctive . . . the combination of elements may be indicative of source.” Landscape
Forms Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997) (internal quotation marks
and citations omitted). However, “focus on the overall look of a product does not permit a
plaintiff to dispense with an articulation of the specific elements which comprise its distinct
dress. Without such a precise expression of the character and scope of the claimed trade dress,
litigation will be difficult, as courts will be unable to evaluate how unique and unexpected the
design elements are in the relevant market. Courts will also be unable to shape narrowly-tailored
relief if they do not know what distinctive combination of ingredients deserves protection.
Moreover, a plaintiff's inability to explain to a court exactly which aspects of its product
design(s) merit protection may indicate that its claim is pitched at an improper level of
generality, i.e., the claimant seeks protection for an unprotectable style, theme or idea.” Id.
Viewed against this standard, the FAC fails to contain a precise expression of the
character and scope of the claimed trade dress. Rather, its description is akin to a laundry list of
the elements that constitute a shoe’s features. For example, as Judge Locke aptly stated, the
description “distinctive alternating pattern with 1/4 inch multi-color or multi-shaded wide straps”
“still fails to explain the scope or character of the pattern or specify what colors or shades are
covered.” (R&R at 5.) Similarly, “closed or open toe,” “flat heel,” and “vertical” and “horizontal
grooves on the sole” are generic categories. Absent are precise descriptions of the “angular
shape” and how the vertical or horizontal grooves on its shoes are distinctive. See Nat’l Lighting
Co. v. Bridge Metal Indus., LLC, 601 F. Supp. 2d 556, 562 (S.D.N.Y. 2009) (trade dress
infringement claim failed as it did not contains “ a description of which of plaintiff’s trade dress
design elements are distinctive and how they are distinctive”) (emphasis added); accord Tracey
Tooker v. Whitworth, 212 F. Supp.3d 429, 434 (S.D.N.Y. 2016) (trade dress protection requires a

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plaintiff to plead “which features are distinctive and how they are distinctive”) (internal quotation
mark omitted).
In sum, as the thorough, well-reasoned R&R of Judge Locke concludes, the FAC fails to
set forth with specificity the nature and scope of the claimed trade dress and thus is dismissable
on that basis alone. 3
C.

The FAC Fails to Set Forth Facts That Plausibly Demonstrate
that the Claimed Trade Dress is Non-Functional

“The functionality doctrine prevents trademark law, which seeks to promote competition
by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.” Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159,
164, 115 S. Ct. 1300, 1304 (1995). “There is a ‘statutory presumption that features are deemed
functional until proved otherwise by the party seeking trade dress protection.’” Carson Optical,
Inc. v. Prym Consumer USA, Inc., 11 F. Supp. 3d 317, 340 (E.D.N.Y. 2014) (quoting TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30, 121 S. Ct. 1255, 1260, 149 (2001)). There
are two types of functionality: “traditional” (also called “utilitarian”) and “aesthetic.” Christian
Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 219 (2d Cir. 2012). “[A]
product feature is considered to be functional in a utilitarian sense if it is . . . essential to the use
or purpose of the article, or if it . . . affects the cost or quality of the article.” Id. (citations and

In its objections, Eliya cites to three cases from district courts outside the Second Circuit for
the proposition that the description of its trade dress “far exceeds details articulated in other
trade dress cases involving shoes that were permitted to proceed to either the next phase of
the litigation or to trial.” Pl.’s Obj. at 5-8. An examination of the docket for each of these cases
reveals that no motions to dismiss for failure to state a claim, or other motion addressed to the
sufficiency of the pleadings, were filed. Thus, that these cases may have proceeded to the “next
phase” provide no support for the sufficiency of Eliya’s pleading.
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internal quotation marks omitted). “[W]here an ornamental feature is claimed as a trademark
and trademark protection would significantly hinder competition by limiting the range of
adequate alternative designs, the aesthetic functionality doctrine denies such protection.” Id. at
217 (internal quotation marks omitted). “But on the other hand, distinctive and arbitrary
arrangements of predominantly ornamental features that do not hinder potential competitors from
entering the same market with differently dressed versions of the product are non-functional, and
are hence eligible for trademark protection.” Id. at 220 (internal quotation marks omitted).
Here, as detailed in Judge Locke’s Report, no specific facts are plead that plausibly
support the non-functionality of the claimed trade dress. In fact, features such as the strap, the
raised heel appendage and woven uppers are functional in that such features help the user put
them on and keep them on; similarly, grooved soles provide traction for the wearer. Moreover,
the ornamental features of the claimed trade dress, such as the shoes’s multi-colored or multishaded straps “serve to enhance the aesthetic appeal of the shoes, rather the to identify [their]
source . . . .” Accord Bubble Genius LLC v. Smith, 239 F. Supp. 3d 586, 595 (E.D.N.Y. 2017).
The FAC’s depiction of what are claimed to be “alternative constructions performing the same
functions” are, as Judge Locke concluded, different categories of shoe features which do not
perform the same function.
C.

The FAC Fails to Set Forth Facts That Plausibly
Show a Likelihood of Confusion

Conspicuously absent from the FAC is a written description of the Madden shoes or their
resemblance to the Bernie Mev shoes. Rather, Plaintiff relies upon photographs which frankly,
“to the Court’s eye” fail to support a likelihood of confusion. Whether viewed independently or
coupled with the earlier noted failure to adequately articulate the distinctive features of the

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claimed trade dress, the result is a failure to adequately plead facts that plausible assert a
likelihood of confusion.
V.

Conclusion
Having considered all the arguments raised in Eliya’s objections and having reviewed the

R& R de novo, the Court adopts Judge Locke’s January 11, 2018 Report and Recommendation
in its entirety. Accordingly, Defendant’s motion to dismiss is granted. The Clerk of Court is
directed to enter judgment accordingly and to close this case.
SO ORDERED.
Dated: Central Islip, New York
February 22, 2018

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/s/ Denis R. Hurley
Denis R. Hurley
United States District Judge