The Diamond Collection, LLC v. Underwraps Costume Corporation
Filing
47
MEMORANDUM & ORDER granting in part and denying in part 37 Motion to Dismiss for Failure to State a Claim; For the foregoing reasons, Diamond's motion is GRANTED IN PART and DENIED IN PART. Underwraps' second and third counterclaims f or trade dress infringement, false designation of origin, unfair competition, and trademark dilution are DISMISSED WITH PREJUDICE. Underwraps' first counterclaim for copyright infringement and fourth counterclaim for false endorsement remain. Th e Clerk of the Court is directed to docket Exhibits A, B, C, D, E, F, G, and H (1-8) from Underwraps' Amended Answer (D.E. 35) with this Order for reference. So Ordered by Judge Joanna Seybert on 1/22/2019. C/ECF (Attachments: # 1 Exhibit A; # 2 Exhbit B; # 3 Exhibit C; # 4 Exhibit D; # 5 Exhibit E; # 6 Exhibit F; # 7 Exhibit G; # 8 Exhibit H) (Valle, Christine)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
-------------------------------------X
THE DIAMOND COLLECTION, LLC,
Plaintiff,
MEMORANDUM & ORDER
17-CV-0061(JS)(SIL)
-against–
UNDERWRAPS COSTUME CORPORATION,
Defendant.
-------------------------------------X
APPEARANCES
For Plaintiff:
Lynn Marcy Brown, Esq.
Kevin Schlosser, Esq.
Meyer Suozzi English & Klein P.C.
990 Stewart Avenue, Suite 300
Garden City, NY 11530
For Defendant:
Bryan A. McKenna, Esq.
1270 Avenue of the Americas
16th Floor
New York, NY 10020
Stewart L. Levy, Esq.
Eisenberg Tanchum & Levy
675 Third Avenue
New York, NY 10017
SEYBERT, District Judge:
Before the Court is a motion by Plaintiff the Diamond
Collection,
LLC
(“Plaintiff”
or
“Diamond”)
to
dismiss
counterclaims (Pl.’s Mot., D.E. 37) in the Amended Answer of
Defendant
Underwraps
Costume
Corporation
(“Defendant”
or
“Underwraps”) (Am. Answer, D.E. 35).
For the following reasons, Plaintiff’s motion is GRANTED
IN PART and DENIED IN PART.
BACKGROUND
Diamond and Underwraps sell Halloween costumes.
December 2016, both companies attended a trade show.
observed
Diamond
Underwraps
distributing
believes
that
a
the
catalog
catalog
(the
itself
In
Underwraps
“catalog”).
looked
like
Underwraps’ catalog, and that the costumes in the catalog looked
like Underwraps’ costumes.
This action concerns allegations of
copyright and trade dress infringement with the catalog and the
costumes.
I.
Relevant Procedural History
Diamond filed a complaint in January 2017, seeking a
declaratory judgment that Diamond had not and is not infringing on
Underwraps’
D.E. 1.)
claimed
intellectual
property
rights.
(Compl.,
Diamond filed an Amended Complaint in February 2017.
(Am. Compl., D.E. 13.)
Underwraps filed its First Answer to the
Amended Complaint in August 2017.
(First Answer, D.E. 28.)
The
First Answer contained counterclaims for copyright infringement,
trade dress infringement, false designation of origin, unfair
competition, and trademark dilution under the Lanham Act, 16 U.S.C.
§ 1051 et seq., and the New York General Business Law § 360-1
(NYGBL);
false
endorsement
under
the
Lanham
Act;
deceptive
practices under the NYGBL § 349; misappropriation; and common law
trademark
infringement.
counterclaims.
Diamond
moved
(Pl.’s First Br., D.E. 29-6.)
2
to
dismiss
the
The
Court
(Spatt,
dismiss in its entirety.
J.)
granted
Diamond’s
motion
to
Diamond Collection, LLC v. Underwraps
Costume Corp., No. 17-CV-0061, 2018 WL 1832928 (E.D.N.Y. April 16,
2018) (Diamond 1, D.E. 32).
The Court dismissed Underwraps’ NYGBL
counterclaims with prejudice, finding them “preempted by federal
and trademark and copyright law.”
Id. at *8.1
As to the remaining
claims, however, the Court granted Underwraps leave to replead by
filing an amended answer.
As to copyright infringement, the Court observed that
Underwraps’ First Answer did not describe any of its copyrighted
patterns or Diamond’s allegedly similar costumes and it was “left
to speculate as to what [they] look like.”
Diamond 1, at *1.
The
Court also noted that the First Answer did not describe how the
parties’ catalogs were substantially similar.
Though Underwraps
had attached pages from the catalogs to its opposition to the
motion
to
dismiss,
the
Court
did
not
consider
them
because
Underwraps, “as a represented party, should have attached the
exhibits to its answer, not to its opposition to the motion to
dismiss.”
Id. at *3.
In any event, Underwraps had not stated
that the pictures attached represented the copyrighted patterns.
The first answer also contained counterclaims for
misappropriation of skill and labor. The Court deemed them
abandoned and in any event, not sufficiently supported by the
pleadings. Diamond 1, at *8-9. Underwraps does not revisit
these claims or arguments in its Amended Answer or opposition.
1
3
The Court could not “even begin to make the evaluation because
[Underwraps] ha[d] neither described the patterns at issue nor .
. . supplied photographs of those patterns to the Court.”
at *5.
Id.
“Simply stating that the costumes [and catalog] were
‘identical or substantially similar’ is a legal conclusion that
[the] Court need not accept as true.”
Id. at *4.
With respect to trade dress, the Court noted that “when
amending [Underwraps’] answer,” images alone would not suffice,
and that Underwraps must “‘ultimately point to the distinctive
elements,’” which it had not done.
Id. at *6 (quoting Classic
Touch Décor, Inc. v. Michael Aram, Inc., No. 15-CV-0453, 2015 WL
6442394, at *5 n.2 (E.D.N.Y. Oct. 23, 2015)).
found
that
Underwraps
“failed
to
allege
The Court further
how
its
marks
are
distinctive” and thus “failed to state claims for false designation
of origin, unfair competition, or trademark dilution under the
Lanham Act, and for trademark infringement under New York common
law upon.”
Id. at *7.
Underwraps’
Amended
Answer
contains
four
amended
counterclaims, again alleging: (1) copyright infringement under 17
U.S.C. § 501 (the Copyright Act); (2) trade dress infringement,
false designation of origin, unfair competition and trademark
dilution under the Lanham Act; (3) false designation of origin
and
unfair
competition
under
the
Lanham
Act;
and
(4)
false
endorsement under the Lanham Act. (See Am. Answer.) Diamond again
4
moves to dismiss the counterclaims.
D.E. 39.)
(See Pl.’s Mot.; Pl.’s Br.,
For the following reasons, Diamond’s motion is GRANTED
IN PART and DENIED IN PART.
DISCUSSION
I.
Standard for Motions to Dismiss Counterclaims
“A motion to dismiss a counterclaim is evaluated under
the same standard as a motion to dismiss a complaint.”
2018 WL 1832928, at *3.
dismiss
for
failure
to
Diamond 1,
In deciding Rule 12(b)(6) motions to
state
a
which
claim,
is
the
guided
Court
by
applies
“[t]wo
a
“plausibility
standard,”
working
principles.”
Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct.
1937, 1949, 173 L. Ed. 2d 868 (2009); accord Harris v. Mills, 572
F.3d 66, 71–72 (2d Cir. 2009).
First, although the Court must
accept all allegations as true, this “tenet” is “inapplicable to
legal conclusions;” thus, “[t]hreadbare 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. at 1949 (citing
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955,
1965, 167 L. Ed. 2d 929 (2007)); see Harris, 572 F.3d at 72.
Second, only complaints that state a “plausible claim for relief”
can survive a Rule 12(b)(6) motion to dismiss.
679 (citing Twombly, 550 U.S. at 556).
Iqbal, 556 U.S. at
Determining whether a
complaint does so is “a context-specific task that requires the
5
reviewing court to draw on its judicial experience and common
sense.”
Id. (citation omitted); accord Harris, 572 F.3d at 72.
In deciding a motion to dismiss, the Court is confined
to “the allegations contained within the four corners of [the]
complaint,” Pani v. Empire Blue Cross Blue Shield, 152 F.3d 67, 71
(2d Cir. 1998), but this has been interpreted broadly to include
any document attached to the complaint, any statements or documents
incorporated in the complaint by reference, any document on which
the complaint heavily relies, and anything of which judicial notice
may be taken.
See Chambers v. Time Warner, Inc., 282 F.3d 147,
152–52 (2d Cir. 2002); Kramer v. Time Warner, Inc., 937 F.2d 767,
773 (2d Cir. 1991).
II.
Underwraps’ Counterclaims
A.
Copyright Infringement (First Counterclaim)
“To
successfully
plead
a
claim
for
copyright
infringement, ‘a plaintiff with a valid copyright must demonstrate
that: (1) the defendant has actually copied the plaintiff’s work;
and (2) the copying is illegal because a substantial similarity
exists between the defendant’s work and the protectable elements
of plaintiff’s.’” Diamond 1, 2018 WL 1832928, at *4 (quoting Peter
F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63
(2d Cir. 2010) (further quotation omitted).
“Rule 8 requires that
the alleged infringing acts be stated with some specificity.”
6
Palmer Kane LLC v. Scholastic Corp., No. 12-CV-3890, 2013 WL
709276, at *2 (S.D.N.Y. Feb. 27, 2013) (citation omitted).
Where a party claiming infringement attaches the works
to its pleadings, “the works themselves supersede and control
contrary descriptions of them, including any contrary allegations,
conclusions
or
descriptions
of
the
works
contained
in
the
pleadings.”
Wager v. Littell, No. 12-CV-1292, 2013 WL 1234951, at
*2 (S.D.N.Y. Mar. 26, 2013) (aff’d 549 F. App’x 32 (2d Cir. 2014));
see also Well-Made Toy M’fg. Corp. v. Flowers, Inc., No. 16-CV1380, 2016 WL 6537673, at *2 (E.D.N.Y. Nov. 3, 2016).
It is “entirely appropriate for the district court to
consider the similarity between works [attached to the pleadings]
in connection with a motion to dismiss” and properly resolve the
issue at this stage.
64).
“If
the
Peter F. Gaito Architecture, 602 F.3d at
court
considers
the
complaint
and
the
works
themselves and determines that ‘the similarity between two works
concerns only non-copyrightable elements of the plaintiff’s work,
or . . . no reasonable jury, properly instructed, could find that
the two works are substantially similar,’ the court may dismiss
the
complaint
infringement.”
for
failure
to
state
a
claim
for
copyright
Kimberley v. Penguin Random House, No. 17-CV-5107,
2018 WL 1918614, at *2 (S.D.N.Y. Apr. 19, 2018) (quoting Peter F.
Gaito Architecture, 602 F.3d at 63) (ellipsis in original).
7
Here,
however, in making the evaluation, the Court finds that the works
are similar enough to survive a motion to dismiss.
At the outset, this time, Underwraps has attached photos
of its copyrighted costumes and Diamond’s costumes for comparison
as exhibits to the Amended Answer.
While Diamond makes much of
the
pleaded,
fact
that
Underwraps
has
not
in
writing,
“how
[Diamond’s] costumes are substantially similar to [Underwraps’]
copyrighted patterns,” (Pl.’s Br., at 2 (citing Diamond 1, 2018 WL
1832928, at *1)), the Court believes that in this case, photos are
a more accurate and efficient way to demonstrate the similarities.
Indeed, attaching photos of the copyrighted costume designs along
with the allegedly infringing costumes was expressly contemplated
by the prior order (see Diamond 1, 2018 WL 183298, at *5).
It is
certainly more effective here to show how two things look the same
than to tell how two things look the same.
As Diamond observes,
“the works themselves supersede . . . any contrary allegations,
conclusions
or
pleadings.”
(Pl.’s Br. at 6 (quoting Wager, 2013 WL 1234951, at
*5).)
A
pleading).2
descriptions
picture
is
worth
of
a
the
works
thousand
contained
words
(in
an
in
the
amended
With the Amended Answer and the attached photos, the
Court can consider, as discussed herein, the claimed protectable
In any event, Underwraps describes in writing, in great detail,
the features and similarities of its costumes and Diamond’s in
its trade dress infringement counterclaim.
2
8
elements, whether those elements are separable from the useful
articles, and issues of access and substantial similarity.
1. Valid Copyright; Registration and Pending Application
Copyright infringement requires ownership of a valid
copyright.
See Wager, 2013 WL 1234951, at *2.
At the time it
filed its Amended Answer, Underwraps had applied for but not
received registrations for its Skeletal Bones Print (Ex. B-1,
D.E. 35-2 at 1) and Skull and Crown Material (Ex. E-1, D.E. 35-5
at 1).
Though Diamond is correct that some courts have held that
a pending application fails to satisfy Copyright Act requirements,
the Second Circuit “has not yet determined . . . whether a merely
pending
application
for
registration
satisfies
the
Act’s
requirement that a work be registered before a related infringement
suit is filed.”
A Star Grp., Inc. v. Manitoba Hydro, 621 F. App’x
681, 683 (2d Cir. 2015) (citing 17 U.S.C. § 411(a).
At least one
Court has recently cited A Star Group and allowed a party alleging
infringement to proceed when its application is still pending.
See Chevrestt v. Am. Media, Inc., 204 F. Supp. 3d 629, 631
(S.D.N.Y. 2016) (“It is hard to see what public, private, or
statutory interest is served or harmed by requiring [plaintiff] to
wait, and re-file his action after his application is approved or
denied, when he has already done everything he can to obtain that
result.”).
Even where a Court dismisses an action because an
application is pending and the copyright is not yet registered, it
9
may do so without prejudice to refile.
See Rudkowski v. MIC
Network, Inc., No. 17-CV-3647, 2018 WL 1801307, at *3 (S.D.N.Y.
March 23, 2018). This Court agrees that “[g]iven that the claimant
who has submitted an application that has yet to be acted upon at
that juncture has done all that she can do, and will ultimately be
allowed to proceed regardless of how the Copyright Office treats
her application, it makes little sense to create a period of “legal
limbo” in which suit is barred.” Chevrestt, 204 F. Supp. 2d. at
631.
Underwraps may proceed on its counterclaims for the pending
applications.
2. Separability
Underwraps does not claim copyright protections in its
costumes, but in the “designs as depicted on some of its costumes.”
(Def.’s Br., D.E. 44, at 7 (emphasis in original).)
Both parties
appear to agree (Def.’s Br. at 7-8; Pl.’s Br. at 10-12) that the
costumes
are
“‘useful
article[s]’”
that
have
“‘an
intrinsic
utilitarian function that is not merely to portray the appearance
of the article or to convey information.’”
Star Athletica, L.L.C.
v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008, 197 L. Ed. 2d 354
(2017) (quoting 17 U.S.C. § 101); see also Whimsicality, Inc. v.
Battat, 27 F. Supp. 2d 456, 463 (S.D.N.Y. 1998) (costumes are
useful articles only copyrightable “to the extent that the article
‘incorporates pictorial, graphic or sculptural features that can
be
identified
separately
from,
10
and
are
capable
of
existing
independently
of,
the
utilitarian
(quoting 17 U.S.C. § 101).
aspects
of
the
article’”)
This necessitates a separability
analysis.
In Star Athletica, the Supreme Court looked to the
Copyright Act and held that “a feature of the design of a useful
article is eligible for copyright if, when identified and imagined
apart from the useful article, it would qualify as a pictorial,
graphic, or sculptural work either on its own or when fixed in
some
other
tangible
medium.”
137
S.
Ct.
at
1012.
The
“decisionmaker” must first “look at the useful article and spot
some
two-
or
three-dimensional
element
that
pictorial, graphic, or sculptural qualities.”
appears
to
Id. at 1010.
have
Next,
“the decisionmaker must determine that the separately identified
feature has the capacity to exist apart from the utilitarian
aspects of the article.”
Id.
In applying this test, the Supreme
Court found that the “arrangement of colors, shapes, stripes, and
chevrons
on
the
surface
of
[
]
cheerleading
separable and entitled to copyright protection.
uniforms”
were
Id. at 1012.
A recent District Court decision applying Star Athletica
to the alleged copyright infringement of a banana costume is
instructive.3
The court found “a likelihood that [the plaintiff
At the time of this writing, the Second Circuit has not written
on Star Athletica, and few District Courts in the Circuit have
cited it.
3
11
could]
prove
that
the
banana
design
can
both
be
identified
separately from and can exist independently from the utilitarian
aspects of the article.” Silvertop Assocs., Inc. v. Kangaroo Mfg.,
Inc., 319 F. Supp. 3d 754, 764 (D.N.J. 2018). The Court identified
the length, shape, curvature, jet black color of both ends,
location of the head and arm holes, the soft and shiny look of the
fabric, the lines on the banana, and the bright golden yellow as
separable features having “a pictorial, graphic, or sculptural
quality.”
Id.
It concluded that “although [the costume used]
elements that might in and of themselves not be protectable
standing alone, that the design when considered as a whole is
separable and eligible for copyright protection.”
Id. at 765.
Applying the two-part Star Athletica test, this Court
finds that the Underwraps costumes have design elements separable
from their utilitarian bases.
At the first step, which is “not
onerous,” the Court can “spot some two– or three-dimensional
element[s] that appear[ ] to have pictorial, graphic, or sculptural
qualities.”
Star Athletica, 137 S. Ct. at 1010.
For example,
there are ruffles and bowties on the Dia de los Muertos costumes
with clear graphic and artistic qualities.
at 1.)
(Ex. B-1, D.E. 35-2,
There are graphic skeleton patterns on the lace poncho.
(Ex. D-1, D.E. 35-4, at 1.)
The Evil Harlequin has a pattern of
nefarious looking jesters interposed with diamonds.
D.E. 35-7, at 1.)
(Ex. G-1,
Underworld has the graphic of a skeleton rising
12
out of burning flames.4
(Ex. H-1, D.E. 35-8, at 1.)
At the second
step, all of these features could be removed from the costumes.
Their “primary purpose . . . is artistic; once [the features] are
removed, the remainder is a functioning but unadorned [article of
clothing].”
Jetmax Ltd. v. Big Lots, Inc., No. 15-CV-9597, 2017
WL 3726756, at *6 (S.D.N.Y. Aug. 28, 2017) (applying Star Athletica
to decorative light strings and denying cross motions for summary
judgment).
The Amended Answer “pleads separability in including
. . . picture[s] of the [costumes], which allows the Court to
determine that a pictorial, graphic, or sculptural feature can be
identified
separately
utilitarian aspects.”
from
and
exist
independently
of
the
Silvertop, 319 F. Supp. 3d at 770 n.13.
Thus, these elements are protectable, and the Court turns to
whether they were copied.
3. Access and Substantial Similarity
“In the absence of direct evidence, copying is proven by
showing (a) that the defendant had access to the copyrighted work
and (b) the substantial similarity of protectible material in the
two works.”
Williams v. Crichton, 84 F.3d 581, 587 (2d Cir. 1996)
To the extent Diamond argues that there is essentially no other
way to depict or convey a skeleton, “[t]o prove that a work is
original, it must . . . possess at least some minimal degree of
creativity.” Jetmax Ltd. v. Big Lots, Inc., No. 15-CV-9597,
2017 WL 3726756, at *6 (S.D.N.Y. Aug. 28, 2017) (internal
quotation marks and citations omitted). The Court finds that
Underwraps’ conception of a skeleton on a suit displays, at
least at the pleadings stage, originality and creativity.
4
13
(internal quotation marks and citation omitted).
“Access means
that the alleged infringer had an opportunity to [actually] view
or copy [a copyright holder’s] work.”
Wager, 2013 WL 1234951, at
*3 (internal quotation marks and citation omitted).
“As an
alternative to showing direct or indirect access, a plaintiff may
prove
access
works.”
and
by
striking
similarity
between
the
Wager, 2013 WL 1234951, at *3 (internal quotation marks
citations
copying
establishing
by
omitted)
(emphasis
circumstantial
added).
evidence,
“When
‘there
is
establishing
an
inverse
relationship between access and probative similarity such that the
stronger the proof of similarity, the less the proof of access is
required.’”
L.A. T-Shirt & Print, Inc. v. Rue 21, Inc., No. 16-
CV-6400, 2017 WL 3575699, at *3 (S.D.N.Y. Aug. 17, 2017) (quoting
Jorgensen v. Epic/Sony Records, 351 F.3d 46, 56 (2d Cir. 2003)).
Underwraps alleges that it observed costumes at a trade
show that were “substantially similar, if not identical, to the
costumes
depicted
in
the
catalog
of
costumes
distributed
Underwraps . . . which was readily available to [Diamond].”
Answer ¶ 151.)
by
(Am.
It further states that its costumes and catalogs
were marketed and used at “trade shows, direct mail, online, and
otherwise.”
(Am. Answer ¶ 159.)
The Court finds that while the pleadings may not have
sufficiently alleged access by simply stating that Underwraps
distributed its catalogs (with the implication being that Diamond
14
saw the catalogs before it came out with the works at issue),5
“[v]iewed in the light most favorable to [Underwraps], it is . .
. plausible that [Diamond’s] designs are strikingly similar to the
protected elements of [Underwraps’] works.”
2017 WL 3575699, at *7.
L.A. T-Shirt & Print,
“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.”
Schleifer
v.
Berns,
No.
17-CV-1649,
2017
WL
3084406,
at
*3
(S.D.N.Y. July 19, 2017) (quoting Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101, 111 (2d Cir. 2001)).
“[T]he threshold required to
establish striking similarity is stringent, and it requires more
than a showing of substantial similarity.
To show striking
similarity, the works must be so identical as to preclude any
reasonable
possibility
of
independent
creation.”
Webb
v.
Stallone, 910 F. Supp. 2d 681, 687 (S.D.N.Y. 2012) (aff’d 555 F.
App’x 31 (2d Cir. 2014)) (internal quotation marks and citations
The Court does not find this implication to be unreasonable.
“Access may be established directly or inferred from the fact
that a work was widely disseminated or that a party had a
reasonable possibility of viewing the prior work.” Boisson v.
Banian, Ltd., 273 F.3d 262, 270 (2d Cir. 2001); see also Nobile
v. Watts, 289 F. Supp. 3d 527, 533 (S.D.N.Y. 2017) (“all that is
required is that the plaintiff have circumstantial evidence that
the alleged infringer had ‘access’ to the allegedly infringed
work.”). Because the Court finds the works strikingly similar,
however, it need not decide whether Underwraps has alleged
access.
5
15
omitted).
Here, in viewing the photos, the Court finds that most
of the costumes at issue are not merely substantially similar, but
strikingly similar.6
For example, Underwraps’ Lace Poncho Skeleton (VA-2-047251, Ex. D-1, D.E. 35-4, at 1) is nearly identical to Diamond’s
White Skeleton Poncho (Ex. B-3, D.E. 35-2, at 3).
Both are sheer
white ponchos designed to be worn over an undergarment (the
catalogs both depict the poncho worn over a black shirt).
each
have
the
image
of
a
skeletal
torso
down
the
They
front.
Additionally, both are edged in a design that alternates a skull
and crossbones to form a chain around the entire hem.
nearly
identical
necklines
and
are
the
same
They have
length.
Next,
Underwraps’ Dia de los Muertos Material Pattern (VA 2-047-234, Ex.
B-1, D.E. 35-2, at 1) is difficult to distinguish from Diamond’s
Senor Muerto and Queen Corpse (Ex. B-2, D.E. 35-2, at 2).
The
female costumes have a black top imprinted with a skeletal torso.
The skirts are black with two ruffles. The material of the ruffles
has red roses and skulls and is positioned on the skirts in the
same manner, hitched up on the side with what appears to be a slit
over the thigh.
The material from the ruffles appears on the male
costume, as both a cummerbund and necktie. Underwraps’ Jester/Evil
Some of the costumes may only be substantially similar.
However, the striking similarity of the majority of the costumes
is enough for this Court to plausibly infer that Diamond had
access to Underwraps’ copyrighted works.
6
16
Harlequin
(VA
2-047-242,
Ex.
G-1,
D.E.
35-7,
at
1)
closely
resembles Diamond’s Wicked (Ex. G-2, D.E. 35-7, at 2).
Both
feature a short top coat with two buttons, wide black lapels, and
tails.
The coat has vertical black and white stripes down the
right side.
The left side is covered in a diamond pattern that
includes jesters in the black diamonds.
The pants each alternate
the vertical stripes with the diamond pattern--stripes down the
left leg, diamonds down the right.
Underwraps’ Underworld (VA 2-
046-593,
1)
Ex.
H-2,
D.E.
35-8,
at
is
almost
impossible
to
distinguish from Diamond’s Flaming Demon (Ex. H-2, D.E. 35-8,
at 2).
Both are loose hooded garments that come down to the
wearer’s feet.
Each is imprinted with a skeleton that appears to
be rising from, or walking through, flames.
The flames are placed
similarly near the bottom of the garment, the hems of the draped
sleeves, and the hood. The Court would be hard pressed to conclude
the
Diamond
designers
envisioned
and
created
these
works
independently of and with no reference to Underwraps’ designs.
Because “where the works in question are so strikingly
similar as to preclude the possibility of independent creation,
copying may be proved without a showing of access,” Jorgensen v.
Epic/Sony Records, 351 F.3d 46, 56 (2d Cir. 2003), the Court finds
that
Underwraps
has
plausibly
copyright infringement.
17
pleaded
its
counterclaim
for
B.
Trade Dress Infringement, False Designation of Origin,
Unfair Competition, and Trademark Dilution under the
Lanham Act (Second and Third Counterclaims)
Underwraps next claims that Diamond has infringed upon
the trade dress of its catalog and costumes.
¶ 158.)
(See Am. Answer
“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.”
Yurman
Design, 262 F. 3d at 114 (internal quotation marks and citation
omitted).
presented
container,
It “‘encompasses a broad concept of how a product
to
the
and
appearance.’”
public
all
the
looks,
including
elements
that
its
make
color,
up
its
design,
total
GeigTech East Bay LLC v. Lutron Elecs. Co., Inc.,
No. 18-CV-5290, 2018 WL 6518858, at *2 (S.D.N.Y. Nov. 29, 2018)
(quoting Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d
993, 1001 (2d Cir. 1997)).
“Catalogs, like packaging, can also
dress products by promoting and displaying them for sale to
potential customers.”
Gerffert Co., Inc. v. Dean, 41 F. Supp. 3d
201, 210 (E.D.N.Y. 2014) (citing Abercrombie & Fitch Stores, Inc.
v. Am. Eagle Outfitters, Inc., 280 F. 3d 619, 630 (6th Cir. 2002)
(“trade dress has been held to include . . . the layout and
appearance of a mail-order catalog”) (internal quotation marks
omitted); Hofmann v. Kleinhandler, No. 93–CV–5638, 1994 WL 240335,
at *4 (S.D.N.Y. May 31, 1994) (“courts in this Circuit have held
18
that
brochures
and
catalogues
can
constitute
trade
dress”)
(collecting cases)).
To
state
a
claim
for
trade
dress
infringement,
Underwraps must first “offer a precise expression of the character
and scope of the claimed trade dress.”
GeigTech, 2018 WL 6518858
at *2 (quoting Urban Grp. Exercise Consultants, Ltd. v. Dick’s
Sporting Goods, Inc., No. 12-CV-3599, 2012 WL 3240442, at *3
(S.D.N.Y. Aug. 12, 2012).
It must identify specific trade dress
elements and explain why they are distinctive.
See id. at *4; see
also Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210, 120
S. Ct. 1339, 1343, 146 L. Ed. 2d 182 (2000) (“nothing in [the
Lanham Act] explicitly requires a producer to show that its trade
dress is distinctive, but courts have universally imposed that
requirement, since without distinctiveness the trade dress would
not ‘cause confusion . . . as to the origin, sponsorship, or
approval of [the] goods,’ as the [Act] requires.”) (quoting The
Lanham Act § 43(a).
which
aspects
indicate
that
generality.”
of
its
“[I]nability to explain to a court exactly
its
product
claim
is
design(s)
pitched
at
merit
an
protection
improper
level
may
of
Yurman Design, 262 F. 3d at 117.
Once Underwraps has identified the character and scope
of its purported its trade dress, it must plausibly allege “(1)
that the mark is distinctive as to the source of the good; (2) a
likelihood of confusion between its good and [Diamond’s]; and, (3)
19
that the trade dress is not functional.”
Vedder Software Grp.
Ltd. v. Ins. Servs. Office, Inc., 545 F. App’x 30, 33 (2d Cir.
2013) (summary order) (citing Yurman Design, 262 F.3d at 115-16.
“The non-functionality and distinctiveness elements relate to the
protectability
of
[Underwraps’]
trade
dress,
whereas
the
likelihood of confusion element relates to whether [Diamond is]
liable for copying it.”
These
elements
requirement
can
Gerffert Co., 41 F. Supp. 3d at 211.
intertwine:
substantially
overlaps
“‘[t]he
with
the
overbroad [i.e., generic [nondistinct]] marks.”
nonfunctionality
prohibition
on
Gerffert Co., 41
F. Supp 3d at 211 n.24 (quoting Yurman Design, 262 F.3d at 116
n.5).
1. Non-Functionality
Under the Lanham Act, “the person who asserts trade dress
protection has the burden of proving that the matter sought to be
protected is not functional.”
15 U.S.C. 1125(a)(3).
“A product
feature is functional, . . . if it is essential to the use or
purpose of the article or if it affects the cost or quality of the
article.
And in cases involving an aesthetic feature, the dress
is also functional if the right to use it exclusively would put
competitors at a significant non-reputation-related disadvantage.”
Yurman Design, 262 F.3d at 116 (internal quotation marks and
citations omitted).
20
2. Distinctiveness
“Distinctiveness requires a showing that the mark has
secondary meaning, so 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.”
33.
(internal
determine
quotations
whether
Vedder Software, 545 F. App’x at
marks
secondary
and
meaning
citation
has
omitted).
attached,
the
“To
court
considers six factors: ‘(1) advertising expenditures, (2) consumer
studies linking the mark to a source, (3) unsolicited media
coverage of the product, (4) sales success, (5) attempts to
plagiarize the mark, and (6) length and exclusivity of the mark’s
use.’”
Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App’x 615,
618 (2d Cir. 2008) (summary order) (quoting Mana Prods., Inc. v.
Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1070 (2d Cir. 1995)).
3. Likelihood of Confusion
In Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492
(2d Cir. 1961), the Second Circuit listed “nonexclusive factors of
the Polaroid test to analyze whether Defendant’s trade dress is
likely to cause confusion as to the source of its product: ‘(1)
the strength of the plaintiff’s mark; (2) the similarity of the
parties’ marks; (3) the proximity of the parties’ products in the
marketplace; (4) the likelihood that the plaintiff will bridge the
gap between the products; (5) actual consumer confusion between
the two marks; (6) the defendant’s intent or any bad faith in
21
adopting its mark; (7) the quality of the defendant’s product; and
(8) the sophistication of the relevant consumer group.’” GeigTech,
2018 WL 6518858 at *11 (quoting Cartier, Inc., 294 F. Appx at 619).
4. Underwraps has not Sufficiently Alleged Trade Dress
Infringement in the Catalog
Underwraps
has
expanded
upon
its
trade
dress
infringement counterclaims and includes many facts that were not
in the First Answer.
Answer, ¶¶ 157-67.
(Compare First Answer, ¶¶ 157-62, with Am.
However, the Court finds that the claims are
still “pitched at an improper level of generality” and Underwraps
has not identified the character and scope of its claimed trade
dress.
Yurman Design, 262 F. 3d 17 117; see also Vedder Software,
545 F. App’x at 33 (allegations of “a ‘distinctive interface’ of
‘non-functional elements’ with a ‘secondary meaning’” . . . and
“conduct [that] is ‘likely to cause confusion or mistake’” . . .
were “bare assertions ‘amount[ing] to nothing more than a formulaic
recitation of the elements” of a trademark infringement claim”)
(quoting
Iqbal,
556
U.S.
at
661,
129
S.
Ct.
1937).
The
photographs, which the Court notes would not be sufficient standing
alone, do not adequately demonstrate trade dress even when coupled
with the written pleadings (see Diamond 1, at *6 (“images alone do
not
satisfy
the
plaintiff’s
obligation
to
articulate
the
distinctive features of the trade dress”) (internal quotation
marks and citation omitted).
Merely describing its products and
22
providing pictures of them does not distinguish a particular trade
dress.
The Court additionally finds most of the catalog trade
dress elements listed by Underwraps to be non-distinct. It alleges
that Diamond copied its (1) listing of the prices next to the
costumes; (2) using only two sizes for costumes (Underwraps’ being
“one size” and “XXL” and Diamond’s being “standard” and “XXL”);
(3) binding the catalogs with a glue bound edging; (4) featuring
only one or two models per page; and (5) the specific posing of
the models.
(See Am. Answer ¶ 161.)
The Court recognizes that
“[a] unique combination of elements may make a dress distinctive,”
(Yurman Design, 262 F. 3d at 118), but the elements listed by
Underwraps, even all together, are so commonplace and prevalent
among mail order catalogs that the catalog simply cannot be viewed
as distinctive trade dress.
To hold that these elements together
are distinct would make it difficult for other costume companies
to display and advertise their goods in catalog form and seriously
undermine
the
“strong
competitive markets.”
federal
policy
in
favor
of
vigorously
Id. (internal quotation marks and citation
omitted).
The Court also finds that many of these features are
functional, and thus the trade dress infringement claim as to the
catalog is insufficient on that basis.
For example, listing a
price next to an item in a catalog is a common function to let
23
consumers know how much it costs.
Binding a catalog on the side
has the function of keeping the pages together.
Further, to the
extent Underwraps alleges customer confusion, the Court finds that
this likely results from the costumes themselves, and not the
generic manner of displaying them in the catalog.
Underwraps also alleges that its catalog has acquired
secondary meaning in the minds of consumers through “longstanding
and continuous marketing, promotion and use of its costumes and
inherently distinctive [c]atalog [t]rade [d]ress.”
¶ 159.)
(Am. Answer
Underwraps has not, however, specifically referenced
advertising
expenditures,
consumer
studies,
unsolicited
media
coverage, sales success, or the length of the use. The Court finds
that these allegations are not sufficient to plausibly allege that
the
catalog
has
acquired
secondary
meaning.
“Because
[the]
catalog[ ] . . . [is] not inherently distinctive and did not become
distinctive
by
acquiring
protectable trade dress.”
secondary
meaning,
[it
is]
not
Gerffert Co., 41 F. Supp. 3d at 210
(internal quotation marks omitted).
Underwraps’ counterclaim for
catalog trade dress infringement is DISMISSED.
5. Underwraps Has Not Sufficiently Alleged Trade Dress
Infringement in the Costumes
Underwraps alleges that “[t]he total image and design of
Underwraps’
costumes
include
primarily
non-functional
and
inherently distinctive elements of size, shape, color, or color
24
combinations, texture, and graphics.”
(Am. Answer ¶ 158.)
It
appears that Underwraps seeks trade dress protection for its entire
costume line and uses the specific costumes listed in its pleadings
as “examples.”
(Am. Answer ¶ 164.)
The Second Circuit has noted
that when a plaintiff seeks protection for “an entire product line
. . . concern for protecting competition is . . . particularly
acute.”
Yurman Design, 262 F. 3d at 116 (internal quotation marks
and citations omitted).
“[T]he focus on the overall look of a
product [or products] does not permit a plaintiff to dispense with
an
articulation
of
the
specific
elements
which
comprise
its
distinct dress.” Id. at 117 (internal quotation marks and citation
omitted) (emphasis deleted; second alteration in original).
While
Underwraps may have plausibly alleged copyright infringement for
the individual costumes described and depicted in its Amended
Answer, it does not automatically follow that it has plausibly
alleged trade dress infringement for its entire costume line.
Though the costumes themselves are strikingly similar,
Underwraps has not adequately alleged that they are so distinct as
to
automatically
consumers.
be
associated
with
the
Underwraps
brand
by
While consumers could easily conclude, after viewing
each set side by side, that the costumes were made by the same
company, it is less clear that they would immediately conclude
that the company was Underwraps.
Underwraps has demonstrated that
its costumes are similar to Diamond’s; it has not, however,
25
identified the particular character and scope of its purported
costume trade dress.
Again, the photographs of the costumes do
not change the Court’s conclusion.
Underwraps’ counterclaim for
costume trade dress infringement is DISMISSED.
6. Underwraps has not Adequately Pled False Designation
of Origin, Unfair Competition, or Trademark Dilution
“Courts
employ
substantially
similar
standards
when
analyzing claims for trademark infringement under the Lanham Act
. . .; false designation of origin under the Lanham Act . . .;
trademark infringement under New York common law; and unfair
competition under New York common law . . . [t]hat standard is the
same as the one employed for Lanham Act trade dress claims.”
Diamond 1, at *7 (internal quotation marks and citations omitted;
first and second ellipses in original). Therefore, for the reasons
already
discussed
counterclaims
for
with
respect
false
to
trade
designation
dress,
of
origin
Underwraps’
and
unfair
competition are DISMISSED as they have not been plausibly alleged.
Furthermore,
“[t]o
prevail
on
a
federal
trademark
dilution claim, a plaintiff must prove that (1) its mark is famous
and distinctive, (2) its mark is used in commerce by the defendant,
and (3) the defendant’s use is likely to cause dilution through
either ‘blurring’ or ‘tarnishment.’”
Underwraps
has
not
adequately
alleged
26
Id. (citation omitted).
trademark
dilution
and
indeed, does not argue in its opposition that it has.
This
counterclaim is DISMISSED.
C.
False Endorsement (Fourth Counterclaim)
A claim for false endorsement requires that the claimant
allege “that the defendant, (1) in commerce, (2) made a false or
misleading representation of fact (3) in connection with goods or
services (4) that is likely to cause consumer confusion as to
origin, sponsorship, or approval of the goods or services.”
Burck
v. Mars, Inc., 571 F. Supp. 2d 446, 455 (S.D.N.Y. 2008) (citations
omitted).
Underwraps
has
attached
emails
from
customers
as
exhibits to its Amended Answer.
The “likelihood of confusion is
a
on
factual
question,
centering
the
probable
reactions
of
prospective purchasers of the parties’ goods,” and these emails
demonstrate actual consumer confusion.
894 F.2d 579, 584 (2d Cir. 1990).
Pirone v. MacMillan, Inc.,
Underwraps has also alleged
that an online search for “Pizazz costumes” (Pizazz being a
division of Diamond) actually returns Underwraps costumes and
attached
screen
shots
of
(Screen Shots, D.E. 35-10.)
Diamond
specifically
the
relevant
searches
and
results.
While it remains to be seen whether
intended
this
result,
at
this
stage,
Underwraps has alleged that Diamond made a false or misleading
representation of fact.
Thus, the Court finds that Underwraps has
plausibly stated a claim for false endorsement.
27
III. Leave to Replead
Although leave to replead is freely given when justice
requires, Underwraps has not demonstrated how the “deficiencies
[in its Amended Answer] may be cured with the addition of factual
allegations.”
Diamond 1, at *10.
Further, Underwraps has already
been given an opportunity to amend its pleadings and shore up the
deficiencies.
Underwraps request for further leave to amend its
counterclaims is DENIED.
CONCLUSION
For the foregoing reasons, Diamond’s motion is GRANTED
IN
PART
and
DENIED
IN
PART.
Underwraps’
second
and
third
counterclaims for trade dress infringement, false designation of
origin, unfair competition, and trademark dilution are DISMISSED
WITH PREJUDICE.
Underwraps’ first counterclaim for copyright
infringement and fourth counterclaim for false endorsement remain.
The Clerk of the Court is directed to docket Exhibits A, B, C, D,
E, F, G, and H (1-8) from Underwraps’ Amended Answer (D.E. 35)
with this Order for reference.
SO ORDERED.
/s/ JOANNA SEYBERT______
Joanna Seybert, U.S.D.J.
Dated:
January
22 , 2019
Central Islip, New York
28
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