Car-Freshner Corporation et al v. Sun Cedar, Inc.

Filing 30

DECISION AND ORDER denying Deft's 8 Motion to Dismiss for Failure to State a Claim or, in the alternative, to transfer the action to the District of Kansas. Signed by Senior Judge Thomas J. McAvoy on 7/13/16. (sfp, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________________
CAR-FRESHNER CORPORATION,
and JULIUS SÄMANN LTD.,
Plaintiffs,
v.

7:15-CV-1463

SUN CEDAR, INC.,
Defendant.
_________________________________________
THOMAS J. McAVOY,
Senior United States District Judge

DECISION & ORDER
I.

INTRODUCTION
Plaintiffs CAR-FRESHNER Corporation (“CFC”) and Julius Sämann Ltd. (“JSL”)

(collectively, “Plaintiffs”) commenced this action asserting claims sounding in violations
of (1) Lanham Act § 32, 15 U.S.C. § 1114 (infringement of a registered trademark); (2)
Lanham Act § 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A) (infringement of common law
trademark); (3) Lanham Act § 43(a)(1)(c) , 15 U.S.C. § 1125(a)(1)(c) (dilution of a
famous trademark); (4) N.Y. Gen. Bus. Law § 360-1 (state law dilution); and (5) New
York state common law (unfair competition). Compl. dkt. # 1.
Defendant Sun Cedar, Inc. (“Sun Cedar” or “Defendant”) moves to dismiss the
action pursuant to Fed. R. Civ. P. 12(b)(6) or, in the alternative, to transfer the action to
the District of Kansas pursuant to 28 U.S.C. § 1404(a). Dkt. # 8. For the reasons that
follow, the motion is denied.
1

II.

BACKGROUND1
For over sixty years, Plaintiffs have used trademarks comprising or containing a

distinctive abstract tree design (the “Tree Design Marks”) in connection with various
products and services, including its famous air fresheners sold under the LITTLE
TREES brand (“LITTLE TREES Air Fresheners”). Compl. ¶¶ 2, 8-10. Among many
other uses, the Tree Design Marks appear on the packaging for Plaintiffs’ products, in
various forms of advertising and promotions for Plaintiffs and their products, throughout
websites operated by Plaintiffs, and as the shape of the LITTLE TREES Air Fresheners.
Id. ¶ 10. Plaintiffs’ Tree Design Marks and LITTLE TREES Air Fresheners have
become staples of American commerce, familiar to millions of consumers who
encounter these products and marks in a variety of contexts. Id. ¶ 11.
In addition to the LITTLE TREES Air Fresheners, Plaintiffs have used the Tree
Design Marks in connection with other goods and services, including t-shirts. Id. ¶ 12.
Many of Plaintiffs’ products bearing the Tree Design Marks are marketed for use and
are used by consumers in automobiles and in a hanging manner. Id. ¶ 13. Because of
the fame and public recognition of the Tree Design Marks, Plaintiffs have licensed the
Tree Design Marks to several third parties for various goods and services. Id. ¶ 16.
As a result of this widespread and longstanding use and promotion of the Tree
Design Marks and the products they designate, Plaintiffs’ products sold in connection
with those marks have been a commercial success and have acquired significant

1

For the purposes of this motion, the factual allegations in the Complaint are
assumed to be true. See Fahs Constr. Group, Inc. v. Gray, 2011 U.S. Dist. LEXIS 7822, at
*5-6 (N.D.N.Y. Jan. 27, 2011).
2

goodwill and secondary meaning among the consuming public, which recognizes the
Tree Design Marks as exclusively associated with Plaintiffs. Id. ¶¶ 17-19, 24-25.
JSL owns numerous federal trademark registrations for the Tree Design Marks,
many of which are incontestable, including:
Mark
Registration No.
Registration Date
Goods/Services
_____________________________________________________________________

1,781,016

July 13, 1993

1,791,233

September 7, 1993

4,096,100

February 7, 2012

Air freshener, in Class 5

Air freshener, in Class 5

Air fresheners, in Class 5

Id. ¶¶ 21-23.
Defendant manufactures, markets, promotes, advertises, distributes and sells
abstract tree shaped air fresheners (referred to the Complaint as the “Infringing Air
3

Fresheners”) in a design that mimics and is nearly identical to Plaintiffs’ registered Tree
Design Marks and the source-identifying appearance of the LITTLE TREES Air
Fresheners (referred to in the Complaint as the “Infringing Tree Design”), including:

Id. ¶¶ 26, 38. Defendant’s Infringing Air Fresheners are pre-scented and are intended
to be hung, including in automobiles. Id. ¶¶ 27, 38. Defendant, its consumers, and the
media have referred to the Infringing Air Fresheners as “air fresheners.” Id. ¶ 28.
Defendant also sells t-shirts (referred to in the Complaint as the “Infringing T-Shirts”)
4

bearing the Infringing Tree Design:

(collectively, with the Infringing Air Fresheners, referred to in the Complaint as the
“Infringing Goods”). Id. ¶ 29.
Defendant is using the Infringing Tree Design as a trademark to indicate the
source of the Infringing Goods as well as other goods and services offered, marketed,
promoted, advertised and sold by Defendant. Id. ¶ 30. The Infringing Tree Design
surrounds nearly every aspect and is the most prominent feature of Defendant’s
marketing and promotion of its goods and services. Id. ¶ 31. By way of example,
Defendant uses the Infringing Tree Design as its primary profile picture on its Twitter,
Instagram and Facebook accounts:
Twitter

5

Instagram

Facebook

6

Id. ¶ 32. The Infringing Tree Design and Infringing Air Freshener are the primary focus
in the above-the-fold portion of the home page of Defendant’s website and Defendant
also uses the Infringing Tree Design in point-of-sale (“POS”) displays for its Infringing
Air Fresheners:

Id. ¶ 33-34.
Defendant frequently and prominently uses the Infringing Tree Design without
other terms and words, such as for its Twitter and Instagram profile pictures and POS
displays. Id. Defendant also uses the Infringing Tree Design without other terms and
words in connection with advertising employment opportunities at the company,
including via Facebook:
/

7

Id. ¶ 36. Plaintiffs assert that consumers generally are not familiar with the name “Sun
Cedar” and would attribute no source indicative meaning to Defendant’s use of the
script “Sun” on its Infringing Air Fresheners. Id. ¶ 37. Defendant markets and promotes
its Infringing Air Fresheners to be used in automobiles:

Id. ¶ 38.
Defendant adopted the Infringing Tree Design for its Infringing Air Fresheners to
be a substitute for and direct competitor with Plaintiffs’ famous hanging air freshener
products. Id. ¶ 47. Defendant’s founder, Shine Adams, admitted in a radio interview
that he conceived of his tree-shaped Infringing Air Fresheners after he “had just bought
a car and I really wanted something to hang from the rearview mirror, but didn’t want to
hang a piece of cardboard that was scented,” referring to Plaintiffs’ Tree Design Marks
and LITTLE TREES Air Fresheners. Id. Defendant was aware of Plaintiffs’ Tree Design
Marks and LITTLE TREES Air Fresheners, and the fame thereof, prior to the time
Defendant adopted its Infringing Tree Design, but nevertheless recklessly disregarded
Plaintiffs’ rights. Id. ¶ 48.
Defendant adopted the Infringing Tree Design with the intent to cause consumer
8

confusion and to usurp Plaintiffs’ goodwill in their marks. Id. ¶ 46. Plaintiffs notified
Defendant on multiple occasions of their rights in the Tree Design Marks and
Defendant’s violation of those rights, but Defendant has willfully disregarded those
rights and continued to use the Infringing Tree Design. Id. ¶ 48. Plaintiffs have not
given permission to Defendant to manufacture, market, promote, advertise, distribute or
sell the Infringing Goods or utilize the Infringing Tree Design or Plaintiffs’ Tree Design
Marks in any manner. Id. ¶ 40.
Plaintiffs assert that based on Defendant’s alleged intentional violation of
Plaintiffs’ trademark rights, they filed the instant suit for trademark infringement, false
designations of origin, trademark dilution and unfair competition under the Lanham Act,
15 U.S.C. § 1051 et seq., and corresponding state law.
In response, Defendant Sun argues that it makes descriptive fair use of a tree
shape, which it asserts is a complete defense against all federal causes of action and,
because New York unfair competition law tracks federal law, a complete defense
against the state law claims as well. In the alternative to dismissal, Defendant argues
that the matter should be transferred to the District of Kansas pursuant to 28 U.S.C. §
1404(a).
III.

STANDARDS OF REVIEW
a. Rule 12(b)(6) motion to dismiss
On a Rule 12(b)(6) motion, the Court must accept “all factual allegations in the

complaint as true, and draw[] all reasonable inferences in the plaintiff's favor." Holmes
v. Grubman, 568 F.3d 329, 335 (2d Cir. 2009) (internal quotation marks omitted). This
tenet does not apply to legal conclusions, non-factual matter, or “conclusory
9

statements” set forth in a complaint. Ashcroft v. Iqbal, 556 U.S. 662, 678 -79 (2009).
"To survive a motion to dismiss, a complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its face." Id.
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim will have “facial
plausibility when the plaintiff pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the misconduct alleged.” Id.
“In considering a motion to dismiss for failure to state a claim pursuant to Rule
12(b)(6), a district court may consider the facts alleged in the complaint, documents
attached to the complaint as exhibits, and documents incorporated by reference in the
complaint.” DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d Cir. 2010). The
Court may also review “documents that the plaintiffs either possessed or knew about
and upon which they relied in bringing the suit.” Rothman v. Gregor, 220 F.3d 81, 88
(2d Cir. 2000) (citation omitted); see Jenkins v. Cnty of Washington, No. 1:14-CV-0064,
2015 U.S. Dist. LEXIS 113516, *46-47 (N.D.N.Y. Aug. 27, 2015);2 Pierce v. Monell,
2007 WL 2847317, at *5 & n.21 (N.D.N.Y. 2007)(“[T]he court may [also] . . . consider . .
. any documents relied on and/or referenced in the complaint (even if those documents
are not attached to the complaint, if those documents are provided by defendants in
their motion to dismiss)[.]”) (citing Chambers v. Time Warner, 282 F.3d 147, 153 & n.3
(2d Cir. 2002)).

2

(“The following matters outside the four corners of the complaint may be
considered without triggering the standard governing a motion for summary judgment: (1)
documents attached as an exhibit to the complaint or answer, (2) documents incorporated
by reference in the complaint (and provided by the parties), (3) documents that, although
not incorporated by reference, are ‘integral’ to the complaint, or (4) any matter of which the
court can take judicial notice for the factual background of the case.” )
10

b. 28 U.S.C. §1404(a) motion to transfer venue
Under 28 U.S.C. § 1404(a), "[f]or the convenience of parties and witnesses, in
the interest of justice, a district court may transfer any civil action to any other district or
division where it might have been brought." 28 U.S.C. § 1404(a). The movant bears the
burden of establishing the propriety of transfer by a clear and convincing showing.
Wilson v. DirectBuy, Inc., 821 F. Supp. 2d 510, 513-14 (D. Conn. 2011). " Among the
factors to be considered in determining whether to grant a motion to transfer venue are,
inter alia: (1) the plaintiff’s choice of forum, (2) the convenience of witnesses, (3) the
location of relevant documents and relative ease of access to sources of proof, (4) the
convenience of the parties, (5) the locus of operative facts, (6) the availability of
process to compel the attendance of unwilling witnesses, and (7) the relative means of
the parties." New York Marine & Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102,
112 (2d Cir. 2010) (internal quotation omitted). However, there is no strict formula for
the application of these factors, and no single factor is determinative. Ward v. Stewart,
133 F. Supp. 3d 455, 460 (N.D.N.Y. 2015)(interior quotation marks and citation
omitted). Instead, these factors should be applied and weighed in the context of the
individual circumstances of the particular case. Id. “Section 1404(a) reposes
considerable discretion in the district court to adjudicate m otions for transfer according
to an individualized, case-by-case consideration of convenience and fairness." Red Bull
Associates v. Best Western Int'l, 862 F.2d 963, 967 (2d Cir.1988) (internal citation
omitted).

11

IV.

DISCUSSION
a. Statutory Fair Use
Plaintiffs bring this suit pursuant to, inter alia, §§ 32 and 43 of the Lanham Act.

15 U.S.C. §§ 1114, 1125. Section 32(1)(a) of the Lanham Act prohibits any person
from “us[ing] in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark in connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Section
43(a) similarly prohibits any person from “us[ing] in commerce,” in connection with any
goods or services, “any word, term, name, symbol, or device, or any combination
thereof ... which ... is likely to cause confusion, or to cause mistake, or to deceive ... as
to the origin, sponsorship, or approval of his or her goods [or] services ... by another
person....” 15 U.S.C. § 1125(a)(1). Plaintiffs contend that they “filed this action to
protect their valuable intellectual property and to prevent consumer confusion and
dilution that erodes and damages Plaintiffs’ reputation and goodwill.” Pl. MOL, p. 1; see
Kelly-Brown v. Winfrey, 717 F.3d 295, 304-05 (2d Cir. 2013). 3

3

(“[I]t is helpful as background to observe that the Lanham Act protects marks from
two kinds of confusion. It protects against direct confusion, where there is a likelihood that
consumers will “believe that the trademark owner sponsors or endorses the use of the
challenged mark.” EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228
F.3d 56, 62 (2d Cir. 2000). It also protects against so-called “reverse confusion,” where
the consumer will believe “that the junior user is the source of the senior user's goods.”
Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490 (2d Cir.1988). In reverse
confusion cases, consumers may believe that the senior user is “an unauthorized infringer,
and the [junior user's] use of the mark may in that way injure [the senior user's] reputation
and impair its good will.” Id. )

12

Defendant does not argue that Plaintiffs fail to adequately allege the elements of
an infringement claim, but rather that its use of a cedar tree shape is lawful under the
Lanham Act’s fair use statute, 15 U.S.C. § 1115(b)(4). This fair use, Defendant argues,
constitutes “a complete defense against federal infringement of a registration mark,
federal unfair competition under Sections 32 and 43(a), and f ederal dilution under
Section 43(c) [, as well as against the state law claims.]” Def. MOL, p. 7, see also id., p.
20.4 Plaintiffs counter that Defendant is using an infringing tree design as a trademark
to indicate the source of Defendant’s infringing goods as well as other goods and
services offered, marketed, promoted, advertised and sold by Defendant, and thus
does not constitute statutory fair use. Pl. MOL, pp. 10-21.
Statutory fair use under the Lanham Act is the use “otherwise than as a mark . . .
of a term or device which is descriptive of and used fairly and in good faith only to
describe the goods or services of such party.” 15 U.S.C. § 1115(b)(4). 5 This defense
“permits others to use protected marks in descriptive ways, but not as marks identifying
their own products.” Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co.,

4

(“As fair use is a complete defense against the three federal causes, is a complete
defense against the New York state causes as well.” (citing ESPN, Inc. v. Quiksilver, Inc.,
586 F. Supp. 2d 219, 230 (S.D.N.Y. 2008)(“The elements necessary to prevail on causes
of action for trademark infringement and unfair competition under New York common law
mirror the Lanham Act claims.”); Twentieth Century Fox Film Corp., v. Marvel Enters., Inc.,
220 F. Supp. 2d 289, 297 (S.D.N.Y. 2002) (“the standards for trademark infringement and
dilution under New York common law are essentially the same as under the Lanham
Act.”))
5

Statutory fair use is different from “nominative” fair use, which permits in certain
non-misleading circumstances a defendant to use the plaintiff’s trademark to refer to
plaintiff itself or plaintiff’s own product. See Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102
(2d Cir. 2010).
13

125 F.3d 28, 30 (2d Cir. 1997); see Kelly-Brown, 717 F.3d at 308. 6
Statutory fair use is an affirmative defense on which Defendant bears the burden
of establishing each of the following three elements: (1) it uses the cedar tree shape
other than as a mark, (2) it uses the cedar tree shape descriptively, and (3) it uses the
cedar tree shape in good faith. See Kelly-Brown, 717 F.3d at 308. In rebutting
Defendant’s fair use arguments on this Rule 12(b)(6) motion, Plaintiffs “are held only to
the usual burden of a motion to dismiss . . . which is to say they must plead sufficient
facts to plausibly suggest that they are entitled to relief.” Id.
“Because fair use is an affirmative defense, it often requires consideration of
facts outside of the complaint and thus is inappropriate to resolve on a motion to
dismiss.” Id.; see A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, 131 F. Supp. 3d 196,
210 (S.D.N.Y. Sept. 18, 2015); 7 see also Frye v. Lagerstrom, 2016 WL 3023324, at *4
(S.D.N.Y. May 24, 2016).5 While affirmative defenses may be adjudicated on Rule
12(b)(6) motions where the facts necessary to establish the defense are evident on the
face of the complaint, Kelly-Brown, 717 F.3d at 308; see Capitol Records, Inc. v.

6

(“[T]he owner's rights in a mark extend only to its significance as an identifying
source, not to the original descriptive meanings of a mark, and so where another person
uses the words constituting that mark in a purely descriptive sense, this use may qualify as
permissible fair use.”)(internal quotation marks and citation omitted)
7

(“According to X One X, the use of the word Marilyn is descriptive, and thus the fair
use doctrine precludes the Monroe Estate's trademark infringement claim. However, this
argument is misdirected, as the invocation of the fair use doctrine necessarily raises
questions of fact that cannot be resolved on a motion to dismiss.”)
5

(affirmative defenses that rely on facts outside the complaint are not appropriate
for resolution on a Rule 12(b)(6) motion)
14

MP3tunes, LLC, 2009 WL 3364036, at *3 (S.D.N.Y. Oct. 16, 2009), 6 the motion must be
denied where the allegations in the complaint are insufficient to establish the defense.
1. Defendant uses the cedar tree shape other than as a mark
In determining the first fair use element, whether the cedar tree shape was used
other than a mark, the Court must make a “detailed determination of the particular
manner in which the mark was used.” Kelly-Brown, 717 F.3d at 306. A defendant uses
a challenged design as a mark for purposes of statutory fair use when it attempts to
create an association with consumers between itself and the challenged design. See
id., at 308. The Court asks whether the defendant uses the mark “as a symbol to
attract public attention,” examining factors such as the size, stylization, placement,
consistency, frequency and nature of the uses of the design. Id. at 306 (citing JA
Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d Cir. 2009)); see also J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition § 11:46 (4th ed. 2015). Because
statutory fair use focuses on the defendant’s good faith intent and actions, the proper
inquiry on the first factor is whether the defendant is “attempting to build an association
with consumers” between the allegedly infringing design and the defendant.
Kelly-Brown, 717 F.3d at 308 (emphasis added).
Accepting the allegations contained in the Complaint as true, the Court must
conclude that Defendant uses the cedar tree shape, at least in part, as a m ark to attract
public attention. Defendant’s cedar tree shape symbol is used prominently across

6

(“While a complaint can be dismissed for failure to state a claim pursuant to a
Rule 12(b)(6) motion raising an affirmative defense if the defense appears on the face of
the complaint, the complaint itself must establish the facts necessary to sustain
defendant's defense.”)(internal quotation marks, brackets, and citations omitted)
15

multiple advertising platforms, such as Defendant’s website and social media accounts;
is used on Defendant’s POS displays; is used in Defendant’s employment recruitment
efforts; and is central to and surrounds nearly every aspect of Defendant’s marketing
efforts. Drawing reasonable inferences in Plaintiffs’ favor, a reasonable fact finder
could conclude that Defendant is attempting to create an association with consumers
between itself and the challenged design.
Although Defendant’s air fresheners have the word “Sun” written on them on the
base of the cedar tree shape, 7 consumers not familiar with Defendant’s name might fail
to attribute a source indicative meaning to the use of the script “Sun,” a term with
ordinary meaning. Moreover, the word “Sun” does not appear on Defendant’s use of
the cedar tree shape used in connection with its Twitter and Instagram social media
profile picture logos, POS displays, and other marketing and sales materials.
On this motion, it is difficult if not impossible to weigh such factors as the size,
placement, consistency, frequency and nature of the uses of the challenged design.
Based on the allegations in the Complaint - particularly the allegation that Defendant
uses of the cedar tree shape without the word “Sun” in instances such as its Twitter and
Facebook profile pictures and in its POS displays,8 Plaintiffs have pled sufficient facts to

7

Plaintiffs argue that the term is written in a script that is much less prominent than
the tree design itself and not prominently displayed on the product.
8

The Court has considered Defendant’s uncropped version of Defendant’s POS
display picture depicted in paragraph 34 of the Complaint. While both versions of the
picture depict Defendant’s air fresheners hanging in clear packages presumably bearing
the word “Sun” (the picture’s quality is not sufficient to make out the lettering), and while
the uncropped picture shows Defendant’s founder Shine Adams seated at a table
containing Defendant’s other products and literature, both show air fresheners hanging
from a cedar tree shape that contains no writing and that is nearly identical in shape to
Plaintiffs’ Tree Design Marks.
16

plausibly suggest that Defendant is attempting to build an association with consumers
between the allegedly infringing design and itself. Thus, Defendant fails to meet its
burden on the first element of the statutory fair use test.
2. Defendant uses the cedar tree shape only descriptively
Statutory fair use also requires that the challenged design be “used . . . only to
describe the goods or services of” the defendant. 15 U.S.C. § 1115(b)(4)(emphasis
added). Although designs can serve both descriptive and source indicative functions,
see J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 15:6 (4th ed.
2015), the use of a design other than descriptively defeats statutory fair use. See
Kelly-Brown, 717 F.3d at 308. 9
“Whether [a] mark is classed as descriptive (and thus ineligible for protection
without secondary meaning) depends on the relationship between the mark and the
product described.” Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269
(2d Cir. 1995). “Thus words like SWEET or CHEWY would be descriptive for a candy,
but would be suggestive, or even arbitrary or fanciful, if used in connection with bed
sheets, a computer, or an automobile.” Id. “[F]air use permits others to use a protected
mark to describe aspects of their own goods, provided the use is in good faith and not
as a mark.” Id., at 270.
While Defendant, like the defendant in Car-Freshner Corp., surely uses the
cedar tree shape to refer to the pine scent of its air fresheners, see Car-Freshner Corp.

9

(“[T]he owner's rights in a mark extend only to its significance as an identifying
source, not to the original descriptive meanings of a mark, and so where another person
uses the words constituting that mark in a purely descriptive sense, this use may qualify as
permissible fair use.”)(emphasis added)
17

v. S.C. Johnson & Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995); see also Cosmetically
Sealed Indus., Inc. v. Chesebrough-Pond's USA Co. , 125 F.3d 28, 30 (2d Cir. 1997), 10
Plaintiffs present a plausible allegation that Defendant uses the cedar tree shape - a
design nearly identical to Plaintiffs’ long-established mark - as its own mark to indicate
the source of its products, some of which (car air fresheners & t-shirts) are the same as
Plaintiffs’ products. Accordingly, Defendant fails to meet its burden on the second
element of the statutory fair use test. See Kelly-Brown, 717 F.3d at 312. 11
3. Defendant uses the cedar tree shape in good faith
The third element is whether the defendant uses the design in question in good
faith. “The good faith requirement has not been litigated frequently[,] [but c]ourts and
commentators who have considered the question equate a lack of good faith with the
subsequent user's intent to trade on the good will of the trademark holder by creating
confusion as to source or sponsorship.” EMI Catalogue P'ship v. Hill, Holliday, Connors,
Cosmopulos Inc., 228 F.3d 56, 66 (2d Cir. 2000)(citation omitted). While a party that
lawfully uses a design does so in good faith, see Car-Freshner Corp. v. S.C. Johnson &
Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995), 12 “a plaintiff may . . . show absence of good

10

(In Car-Freshner, though the image of a pine-tree shape communicated an
aspect of the product, its pine scent, use of the image was also approved because the
image referred to the Christmas season in which the product was sold. See id. at 270.
This description (by the suggestive use of the image) of the period in which the product
was sold was deemed to be a ‘description of the goods’ within the meaning of the fair use
defense.”)
11

(“It is the defendants' burden here to show that their use of the phrase ‘Own Your
Power’ was descriptive. At this stage in the litigation, defendants have not made that
showing.”)
12

("Johnson was fully entitled to use a pine-tree shape descriptively notwithstanding
Car-Freshener's use of a tree shape as a mark, the fact that it did so without consulting
18

faith where a junior user had knowledge or constructive knowledge of the senior user's
mark and chose to adopt a similar mark.” Kelly-Brown, 717 F.3d at 313.
Plaintiffs assert that they contacted Defendant on multiple occasions of their
rights in the Tree Design Marks and Defendant’s violation of those rights, but Defendant
willfully disregarded those rights and continued to use the allegedly infringing tree
design. Compl. ¶ 48. At this stage of the litigation, Defendant has not established its
lawful use of the cedar tree design. Further, Plaintiffs have presented a plausible claim
that, by adopting a cedar tree design nearly identical to Plaintiffs’ Tree Design Marks,
Defendant intended to trade on the good will of the trademark holder by creating
confusion as to source or sponsorship. Thus, Defendant fails to establish the third
element of the statutory fair use test.
Accordingly, Defendant’s motion based upon the statutory fair use defense is
denied.
b. First Amendment
Defendant also contends that the action m ust be dismissed because it sells tree
shaped ornaments that serve as symbols of Sun’s founder’s mission to employ
recovering alcoholics, recovering drug addicts, and former convicts. Def. Mem. L. pp.
1, 19. Defendant provides an exhibit that displays a tree “bearing different
decorations,” and argues that in Sun’s founder’s full interview referenced in part in

counsel has no tendency to show bad faith.”)(citing United States Shoe Corp. v. Brown
Group, Inc., 740 F. Supp. 196, 199 n. 3 (S.D.N.Y.1990)(defendant's knowledge of
plaintiff's success with mark is insufficient to show bad faith); Restatement (Third) of Unfair
Competition § 28 cmt. d (1995) (describing examples of bad faith)).
19

paragraph 47 of the Complaint,13 he stated that he wanted the trees to be the symbol of
“the discouraged worker” and the “symbol of a new life.” Def. Reply MOL, p. 9.
Defendant argues that “[i]t is not relevant whether [the tree ornaments] are artistically
profound or not: Sun’s trees are clearly artistic objects whose expression comprises
protected First Amendment speech.” Def. MOL., p. 19.
In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989), the Second Circuit instructed
that “courts must construe the Lanham Act narrowly where necessary to avoid conflict
with the First Amendment right to artistic expression.” Beastie Boys v. Monster Energy
Co., 66 F. Supp. 3d 424, 447-48 (S.D.N.Y. 2014)(citing Rogers, 875 F.2d at 998).
However, Rogers also instructed that courts are to construe the Lanham Act “to apply to
artistic works only where the public interest in avoiding consumer confusion outweighs
the public interest in free expression.” Rogers, 875 F.2d at 999.
While the Court may examine documents that Plaintiffs either possessed or
knew about and upon which they relied in bringing this suit, the Court declines to
engage in a Rogers balancing test on the instant motion. See Car-Freshner Corp. v.
Getty Images, Inc., 822 F. Supp. 2d 167, 176 n. 14 (N.D.N.Y. 2011).14 Thus,

13

(“47. On information and belief, Sun Cedar adopted the Infringing Tree Design for
its Infringing Air Fresheners to be a substitute for and direct competitor with Plaintiffs’
famous hanging air freshener products. Sun Cedar’s founder, Shine Adams, admitted in
radio interview that he conceived of his abstract tree-shaped Infringing Air Fresheners
after he “had just bought a car and I really wanted something to hang from the rearview
mirror, but didn’t want to hang a piece of cardboard that was scented,” undoubtedly
referring to Plaintiffs’ Tree Design Marks and LITTLE TREES Air Fresheners.
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(“At this stage of the proceeding, the Court declines to apply the Rogers balancing
test . . . which requires courts to construe the Lanham Act “to apply to artistic works only
where the public interest in avoiding consumer confusion outweighs the public interest in
free expression.”)(citing World Championship Wrestling v. Titan Sports, Inc., 46 F.Supp.2d
118, 123 (D. Conn.1999) (declining to apply the Rogers balancing test, noting that the test
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Defendant’s motion on this ground is denied.
c. Motion to Transfer Venue
A defendant seeking to transfer for alleged convenience under 28 U.S.C. §
1404(a) must proffer “detailed” affidavits and other tangible proof “relevant to the factors
to be considered by the court in its transfer decision, including the potential principal
witnesses expected to be called and a general statement of the substance of their
testimony.” Orb Factory, Ltd. v. Design Science Toys, Ltd., 6 F. Supp. 2d 203, 208
(S.D.N.Y. 1998). This is especially so where, as here, Defendant is suggesting
“inadequate means.” See Federman Assocs. v. Paradigm Medical Indus., Inc., 1997
U.S. Dist. LEXIS 23685, at *12 (S.D.N.Y. Apr. 8, 1997) (“[a] party arguing against or for
transfer because of inadequate means must offer documentation to show that transfer
(or lack thereof) would be unduly burdensome to his finances”).
Defendant’s motion to transfer venue must be denied because it has not
proffered an affidavit or other evidence pertinent to any of the relevant convenience
factors, including its alleged inadequate means or who the relevant witnesses will be
and the nature of their testimony. See Peterman v. United States, 2006 U.S. Dist.
LEXIS 70407, at *7-8 (N.D.N.Y. Sept. 28, 2006) (denying transfer motion unsupported
by affidavit).
V.

CONCLUSION
For the reasons set forth above, Defendant’s motion to dismiss the action

“involves factual and legal issues which cannot be disposed of at [the pleading] stage [of]
the case”); Pirone v. MacMillan, Inc., 894 F.2d 579, 584 (2d Cir.1990) (noting that
“[n]ormally, the likelihood of confusion is a factual question” [citing Am. Int'l Group, Inc. v.
London Am. Int'l Corp., 664 F.2d 348, 351 (2d Cir.1981) ] ).”))
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pursuant to Fed. R. Civ. P. 12(b)(6) or, in the alternative, to transfer the action to the
District of Kansas pursuant to 28 U.S.C. § 1404(a) [Dkt. # 8], is DENIED.
IT IS SO ORDERED.
Dated: July 13, 2016

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