Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC et al

Filing 176

OPINION re: 165 MOTION to Dismiss Second Amended Complaint filed by Assara Laser, Assara I LLC, David Tayer, Sam Tayer, Will Shuman, Jay Shuman. As set forth within, defendants' motion to dismiss is denied with regard to c ounts one, two, four, five, six, seven, eight, and nine. The motion to dismiss is granted with regard to counts three, ten, and eleven. This opinion resolves the motion listed as document number 165 in this case. SO ORDERED. (See Order.) (Signed by Judge Thomas P. Griesa on 9/23/2014) (ajs)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
ROMEO & JULIETTE LASER HAIR
:
REMOVAL, INC.,
:
Plaintiff,
:
:
– against –
:
:
ASSARA I LLC, et al.,
:
:
Defendants.
:
:
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08-CV-442 (TPG)(FM)
OPINION

This case involves rival hair-removal businesses. Plaintiff Romeo &
Juliette Laser Hair Removal, Inc. alleges that defendants Assara I, LLC and
its principals used plaintiff’s marks, purchased deceptive search-result
advertisements through Google Inc., and posted fraudulent reviews to
consumer websites to divert customers away from plaintiff’s business to
defendants’ business. Plaintiff sued defendants asserting false designation
of origin, unfair competition, trademark infringement, and other claims
brought under the Lanham Act and New York law. Defendants have filed
a motion to dismiss. For the following reasons, the Court will deny the
motion in part and grant the motion in part.
Procedural Background
On January 17, 2008, plaintiff served defendants with a complaint
(“Original Complaint” or “OC”) asserting five causes of action for trademark
infringement and unfair competition. The Original Complaint survived

cross motions for summary judgment. However, on April 1, 2009 plaintiff
amended the Original Complaint (“First Amended Complaint” or “FAC”) to
include federal-law claims for unfair competition and state-law claims for
defamation, unfair competition, and disparagement. In February of 2013,
defendants filed a motion to dismiss the First Amended Complaint.
At a hearing on the motion to dismiss the First Amended Complaint,
plaintiff indicated that it sought injunctive relief against defendants.
However, plaintiff did not include a claim for injunctive relief in the First
Amended Complaint. Consequently, the Court granted defendants’ motion
to dismiss, but sua sponte gave plaintiff leave to amend the complaint a
second time. Plaintiff filed a second amended complaint (“Second Amended
Complaint” or “SAC”) on October 1, 2013. Defendants have moved to
dismiss the Second Amended Complaint.
The Complaint
Plaintiff provides laser hair-removal services in the New York City
area. Defendants operate a competing laser hair-removal business.
Plaintiff uses the names and marks “Romeo & Juliette” and “Romeo &
Juliette Laser” to advertise its services on the internet. Plaintiff claims that
in 2007, defendants purchased the search phrase 1 “Romeo & Juliette”
from Google Inc. so that whenever the public searched for “Romeo &

A search phrase is a word or set of words a user types into an internet search engine
to find the content the user hopes to access.
1

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Juliette” a sponsored link 2 to defendant Assara’s website would appear.
Plaintiff also claims that defendants used its name and mark “Romeo
Juliette Laser” in hidden links and text on its websites in order to deceive
the public into believing plaintiff sponsored defendants’ hair-removal
services. Finally, plaintiff alleges that defendants published defamatory
statements about plaintiff and its services on public websites hosting
customer reviews and evaluations.
Plaintiff asserts eleven counts in the Second Amended Complaint:
(1) use of a false designation of origin or false and misleading
representation of fact in violation of 15 U.S.C. § 1125(a)(1); (2) dilution of
a famous mark in violation of 15 U.S.C. § 1125(c); (3) engaging in unfair
business practices in violation of New York General Business Law § 349;
(4) trademark infringement in violation of New York common law; (5) unfair
competition in violation of 15 U.S.C. § 1125(a); (6) common law
defamation; (7) unfair competition under New York State law; (8) common
law disparagement; (9) making false, misleading, and defamatory
statements concerning plaintiff’s business in violation of the Lanham Act,
15 U.S.C. §§ 1116 and 1125; (10) making false and misleading statements
about Plaintiff’s business in violation of New York General Business Law

2 Sponsored links operate in the following manner. An advertiser pays a search company,
such as Google, for a brief advertisement that appears on the screen in response to a
relevant search query and includes a link to the advertiser’s website.

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§ 349; and (11) “a claim for injunctive relief for under [sic] New York
common law.” Plaintiff seeks damages, fees, costs, and injunctive relief.
Discussion
A. Whether Plaintiff Has Sufficiently Stated its Claims.
To survive a motion to dismiss under Federal Rule of Civil Procedure
12(b)(6), a complaint must plead sufficient facts to state a claim for relief
that is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007); Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). The plaintiff must show
“more than a sheer possibility that a defendant has acted unlawfully.”
Iqbal, 556 U.S. at 678. In deciding the motion, the court accepts as true
all well-pleaded allegations contained in the complaint and draws all
reasonable inferences in favor of the plaintiff. See Twombly, 550 U.S. at
555-56. However, “threadbare recitals of the elements of a cause of action,
supported by mere conclusory statements, do not suffice.” Iqbal, 556 U.S.
at 678.
1. Count One: False Designation of Origin in Violation of the
Lanham Act; Counts Four, Five, Seven, and Nine:
Trademark Infringement and Unfair Competition Under
Federal and State Law.
Defendants argue that plaintiff has failed to state its claims under
the Lanham Act and New York common law. The purpose of the Lanham
Act is to “make actionable the ‘deceptive and misleading use of marks’ and
to ‘protect those engaged in commerce from unfair competition.’” Dastar
Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (quoting

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15 U.S.C. § 1127). A “false designation of origin” claim under Section 43(a)
allows a plaintiff to recover where a defendant uses false or misleading
representations of fact so as to cause confusion between the defendant’s
goods or services and the plaintiff’s goods or services. See 15 U.S.C. §
1125(a). Claims under New York common law for trademark infringement
and unfair competition mirror claims under the Lanham Act. Lorillard
Tobacco Co. v. Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y.
2005).
Because of this similarity, courts use matching tests in analyzing
claims for false designation of origin, trademark infringement, and unfair
competition under the Lanham Act and New York common law. See, e.g.,
Richemont N. Am., Inc. v. Huang, No. 12-CV-4443, 2013 WL 5345814, at
*5 n.15 (S.D.N.Y. Sept. 24, 2013). Each of these claims requires a plaintiff
to show: (1) the existence of a valid mark that is entitled to protection; and
(2) that the defendant’s actions are likely to cause confusion with the
plaintiff’s mark. Morningside Grp. Ltd. v. Morningside Capital Grp., LLC,
182 F.3d 133, 137 (2d Cir. 1999). A claim for unfair competition under
New York common law requires the plaintiff to satisfy an additional
element and show that the defendant’s conduct was in bad faith. Lorillard,
378 F. Supp. 2d at 456.
A mark is “valid” if it is inherently distinctive, or if it has acquired
some secondary meaning rendering the mark and the business
synonymous in the eyes of the public. Time, Inc. v. Petersen Pub. Co.

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L.L.C., 173 F.3d 113, 117 (2d Cir. 1999). With regard to whether the
defendant’s actions are likely to cause confusion, courts apply an eight
factor, factually-intensive inquiry. Polaroid Corp. v. Polarad Elecs. Corp.,
287 F.2d 492, 495 (2d Cir. 1961). This lengthy factual analysis does not,
of course, lend itself to review of a motion to dismiss. See The Name LLC
v. Arias, No. 10-CV-3212, 2010 WL 4642456, at *5 (S.D.N.Y. Nov. 16,
2010). At this stage, courts confine their review to a more general analysis
of whether a defendants’ use of the plaintiff’s marks is likely to cause
confusion. See, e.g., Van Praagh v. Gratton, 993 F. Supp. 2d 293, 303
(E.D.N.Y. 2014).
Here, plaintiff has alleged sufficient facts to show it held a valid mark
entitled to protection. For many years, plaintiff offered laser hair-removal
services under the mark “Romeo & Juliette Laser Hair Removal” and
marketed its service using those terms. SAC ¶¶ 12-13. Plaintiff also made
“considerable” investments in online advertisements using those terms.
SAC ¶ 13. Taken together, these facts suggest that the terms “Romeo &
Juliette Laser Hair Removal” were distinctive enough to warrant protection
under the Lanham Act, or to render them synonymous with plaintiff’s
business in the eyes of the public. Thus, plaintiff has made a plausible
showing with regard to the first element of its false designation of origin,
trademark infringement, and unfair competition claims.
Plaintiff has also alleged sufficient facts to satisfy the confusion
element of the claims. Plaintiff alleges that defendants purchased the

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search phrase “Romeo & Juliette” from Google Inc., so that whenever the
public searched for plaintiff’s mark a sponsored link to defendants’ website
would appear. SAC ¶ 17. Moreover, plaintiff alleges defendants used its
name and marks on hidden links on Assara’s website. SAC ¶ 18. This
alleged conduct was likely to confuse the public as to whether Assara I,
LLC and Romeo and Juliette Laser Removal Inc. were connected, because
a person searching on the internet for hair-removal services using
plaintiff’s marks stood a strong chance of being directed to defendants’
website.
Moreover, plaintiff has sufficiently alleged that defendants’ actions
were willful and in bad faith. Defendants’ conduct in posting negative
reviews to consumer websites would harm plaintiff’s business. See SAC
¶ 25. Thus, plaintiff has made a sufficient showing with regard to the final
element of its claims for false designation of origin and unfair competition
under the Lanham Act, and trademark infringement and unfair
competition under New York common law. Defendants’ motion to dismiss
is denied with regard to counts one, four, five, seven, and nine of the
Second Amended Complaint.
2. Count Two: Dilution of a Famous Mark in Violation of
Section 43(c) of the Lanham Act.
Defendants argue that plaintiff has failed to state a claim for dilution
under Section 43(c) of the Lanham Act. To state a claim for dilution, a
plaintiff must allege facts showing: (1) ownership of a famous mark; and

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(2) that the defendant’s use of the mark risks “diluting” its distinctiveness.
15 U.S.C. § 1125(c)(1). A mark is famous if it is “widely recognizable by the
general consuming public of the United States.” 15 U.S.C. § 1125(c)(2).
Dilution may occur through “tarnishment” or “blurring,” whereby the
defendant either harms the mark’s reputation or risks associating the
famous mark with less famous marks. 15 U.S.C. § 1125(c)(2). A plaintiff
who prevails on a dilution claim will be entitled to injunctive and other
relief. 15 U.S.C. § 1125(c)(5).
The Second Amended Complaint alleges facts showing plaintiff held
a famous mark. Plaintiff asserts that its marks were used widely in
advertisements on the internet and that its services were readily
searchable through internet search engines. SAC ¶¶ 13-15. Moreover,
plaintiff claims that defendants’ purchase of sponsored links of the terms
“Romeo & Juliette Laser” and use of the marks in hidden links and texts
on Assara’s website deceived the public as to the origin of defendants’ hairremoval services. SAC 17-18. Finally, plaintiff asserts that defendants
used the marks in posting negative reviews on consumer review websites
which were likely to harm plaintiff’s online reputation. SAC ¶ 25.
This is all a sufficient allegation that defendants used the plaintiff’s
famous mark in a manner that damaged its reputation and inappropriately
associated it with defendants’ rival hair-removal service. Thus, plaintiff
has adequately stated its claim for dilution under Section 43(c) of the

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Lanham Act. Defendants’ motion to dismiss is denied with regard to count
two of the Second Amended Complaint.
3. Counts Three and Ten: Deceptive Business Practices and
False and Misleading Statements Under § 349 of the New
York General Business Law.
Plaintiff asserts claims for deceptive business practices and false
and misleading statements under Section 349 of the New York General
Business Law. Section 349 makes unlawful “Deceptive acts or practices in
the conduct of any business, trade or commerce or in the furnishing of
any service.” N.Y.G.B.L. § 349(a). To state a claim under Section 349, a
plaintiff must show (1) that the challenged act or practice was consumer
oriented; (2) that it was misleading in a material way; and (3) that plaintiff
suffered injury as a result of the deceptive act. Stutman v. Chem. Bank,
95 N.Y.2d 24, 29 (2000).
Section 349 is, at its core, a consumer protection law. Securitron
Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995). As such,
where a corporation brings a Section 349 claim, “the gravamen of the
complaint must be consumer injury or harm to the public interest.”
MyPlayCity, Inc. v. Conduit Ltd., No. 10-CV-1615, 2012 WL 1107648, at
*15 (S.D.N.Y. Mar. 30, 2012). Consequently, the prevailing view in the
Second Circuit is that “trademark infringement claims are not cognizable
under § 349 unless there is specific and substantial injury to the public
interest over and above the ordinary trademark infringement.” Perfect
Pearl Co. v. Majestic Pearl & Stone, Inc., 887 F. Supp. 2d 519, 543
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(S.D.N.Y. 2012) (internal marks omitted). The critical question, then, is
whether the matter affects the public interest. Securitron, 65 F.3d at 264.
To satisfy this standard, the injury must include some potential danger to
the public health or safety. La Cibeles, Inc. v. Adipar, Ltd., No. 99-CV4129, 2000 WL 1253240, at *15 (S.D.N.Y. Sept. 1, 2000).
Here, plaintiff has alleged sufficient facts to satisfy the first three
elements of a Section 349 claim. Defendants’ alleged conduct was
consumer oriented because it sought to divert consumers who searched
online for plaintiff’s hair-removal service to defendants’ website. SAC ¶ 20.
This conduct was, by its nature, misleading and likely to injure plaintiff’s
business reputation. See SAC ¶ 22.
A more difficult question is whether the Second Amended Complaint
shows that the public interest was affected by defendants’ conduct. Most
of plaintiff’s allegations concern injury to its marks and business. SAC ¶¶
12-24. Plaintiff has not in any way cast its claims as injuring the public
interest. It does allege that defendants posted negative reviews of its
business to public consumer-review websites. SAC ¶ 25. This conduct
could arguably affect the public interest in an abstract sense, but the
plaintiff provides no facts showing the public health or safety were injured.
If plaintiff had alleged that defendants’ rival laser hair-removal services
were unsafe or caused injuries, then the Section 349 claim would be
sufficiently stated. However, plaintiff provides no facts showing how
defendants’ conduct injured the public interest, as opposed to simply

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injuring its own business reputation. Thus, while plaintiff’s burden at this
stage is low, it has failed to allege sufficient facts to create a plausible claim
for relief on its Section 349 claims. Counts three and ten are dismissed.
4. Counts Six and Eight: Common Law Defamation and
Disparagement.
Plaintiff asserts claims for defamation and disparagement in
violation of New York common law. The elements of a defamation cause of
action are: (1) a defamatory statement of fact concerning the plaintiff; (2)
publication to a third party by the defendant; (3) falsity of the defamatory
statement; (4) some degree of fault; and (5) special damages or per se
actionability. Chamilia, LLC v. Pandora Jewelry, LLC, No. 04-CV-6017,
2007 WL 2781246, at *12 (S.D.N.Y. Sept. 24, 2007). With minor
differences, the same elements apply to a claim for disparagement. Kirby
v. Wildenstein, 784 F. Supp. 1112, 1115 (S.D.N.Y. 1992).
The first element of the claims requires the statement to have been
defamatory or disparaging. A statement is defamatory if it would “tend to
expose one to public hatred, shame, obloquy, contumely, odium,
contempt, ridicule, aversion, ostracism, degradation or disgrace.” Stern v.
Cosby, 645 F. Supp. 2d 258, 272 (S.D.N.Y. 2009). A statement is
disparaging if it reflects negatively on the quality of a business’s products
or services. See Kirby, 784 F. Supp. at 1115.
The second, third, and fourth elements of the claims require that the
statement be published to a third party, that the statement be false, and

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that there be some degree of fault on the defendant’s part. A statement is
published if it is communicated to a third party. Medcalf v. Walsh, 938 F.
Supp. 2d 478, 485 (S.D.N.Y. 2013). Of course, a statement is false if it is
not true. Under New York law, the degree of fault required is one of malice,
meaning the defendant made the statement with “with deliberate intent to
injure,” “out of hatred, ill-will or spite” or “with willful, wanton or reckless
disregard of another's rights.” Celle v. Filipino Reporter Enterprises Inc.,
209 F.3d 163, 174 (2d Cir. 2000); Alternative Electrodes, LLC v. Empi,
Inc., 597 F. Supp. 2d 322, 337 (E.D.N.Y. 2009).
The final element of the claims requires the plaintiff to show special
damages or per se actionability. “Special damages consist of the loss of
something having economic or pecuniary value which must flow directly
from the injury.” Celle v. Filipino Reporter Enterprises Inc., 209 F.3d 163,
179 (2d Cir. 2000). There are exceptions to the special damages
requirement for both defamation and disparagement claims. With regard
to defamation, a statement is defamatory per se if it impugns “the basic
integrity” of a business. Boule v. Hutton, 328 F.3d 84, 94 (2d Cir. 2003).
With regard to product disparagement, a plaintiff need not plead specific
damages if the nature of the plaintiff’s business makes it difficult, if not
impossible, to identify which customers have been lost. Charles Atlas, Ltd.
v. Time-Life Books, Inc., 570 F. Supp. 150, 156 (S.D.N.Y. 1983).
Here, plaintiff alleges that defendants posted disparaging and false
reviews of its business on consumer-review websites including “Yelp.com”

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and “HairTell.com.” SAC ¶ 25. This alleged conduct satisfies the first three
elements of the claims. The statements were defamatory and disparaging
since they maligned plaintiff’s business and undermined the quality of its
services. A consumer who visited a public website such as “Yelp.com” to
ascertain the quality of plaintiff’s hair-removal services would view
defendants’ negative reviews and conclude that plaintiff’s services were
substandard. See SAC ¶ 25. These same facts satisfy the publication and
malice elements, in that the statements were published to third party
visitors to the websites and were ostensibly made by defendants as part of
its strategy to divert customers away from plaintiff’s business. SAC ¶ 20.
With regard to the special damages component of its claims, plaintiff
has not alleged how much money it lost or the number of customers that
were diverted from its website. Since all of defendants’ alleged misconduct
occurred online, SAC ¶¶ 13-25, it is impossible at this stage to determine
which customers plaintiff actually lost. Nonetheless, plaintiff alleges that
defendants’ conduct resulted in “lost sales and diminution of goodwill and
business reputation.” SAC ¶ 22. This is sufficient to satisfy the damages
requirement of the claims. Furthermore, it is plausible that defendants’
conduct in posting negative reviews on consumer websites maligned the
basic integrity of plaintiff’s business and thus amounted to defamation per
se. Consequently, plaintiff has satisfied the final element of its defamation
and disparagement claims.

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Plaintiff has alleged sufficient facts to state a plausible claim for
relief on its defamation and disparagement claims. Thus, defendants’
motion to dismiss is denied with regard to counts six and eight of the
Second Amended Complaint.
5. Count Eleven: A Claim for Injunctive Relief Under the
Common Law.
Count eleven of the Second Amendment Complaint is labeled “a
claim for injunctive relief for under [sic] New York common law.” It is
unclear what claims plaintiff is asserting under this count. Count eleven
essentially restates claims previously asserted for unfair competition,
defamation, and disparagement. SAC ¶¶ 90-96.
While a complaint is to be construed liberally in the plaintiff’s favor,
the court may reject allegations that are not well-pleaded. See Twombly,
550 U.S. at 555-56. Thus, district courts will dismiss claims alleged in a
complaint that are redundant of other claims. See, e.g., Cruz v.
FXDirectDealer, LLC, 720 F.3d 115, 125 (2d Cir. 2013). Here, plaintiff has
already asserted numerous federal and state law claims for deceptive
business practices (count three); unfair competition (counts five and
seven); defamation (count six); disparagement (count eight); and false and
misleading statements (count ten). SAC ¶¶ 26-69. Plaintiff’s claim “for
injunctive relief for under [sic] New York common law” simply reasserts
these claims, and is therefore redundant. Defendants’ motion to dismiss
is granted with regard to count eleven.

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B. Whether Plaintiff Abandoned Its Claims.
Defendants argue that plaintiff has abandoned its claims arising
under the Lanham Act and New York common law. A plaintiff abandons a
claim where he raises it in the complaint but remains silent on the issue
elsewhere in the record. Dineen v. Stramka, 228 F. Supp. 2d 447, 454
(S.D.N.Y. 2002). At the motion to dismiss stage, where review is limited to
the pleadings, a plaintiff abandons a claim by failing to address the
defendant’s arguments in support of dismissing that claim. See Martinez
v. Sanders, No. 02-CV-5624, 2004 WL 1234041, at *2–3 (S.D.N.Y. June 3,
2004). While review of a motion to dismiss is limited to the four corners of
the complaint, the fact that a complaint has been amended will be relevant
if the plaintiff attempts to revive causes of action that were removed from
previous versions of the complaint. See Ping Tou Bian v. Taylor, 23 F. App’x
75, 76 (2d Cir. 2001) (affirming dismissal of causes of action that had been
pleaded in the original complaint, omitted from the amended complaint,
and reasserted in another amended complaint).
Defendants argue that plaintiff abandoned its claims for trademark
infringement. However, these claims are clearly presented in the Second
Amended Complaint. Moreover, comparing the Original Complaint, the
Amended Complaint, and the Second Amended Complaint reveals that at
no point were these claims excised from the pleadings and then reinserted.
See OC ¶¶ 29-32. While the Second Amended Complaint does omit one

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count arising under 15 U.S.C. § 1114, it preserves claims arising under
Section 43 of the Lanham Act and New York common law.
Defendants suggest plaintiff abandoned its claims for damages on
these claims at a hearing before Magistrate Judge Maas on January 10,
2013. This argument alleges facts outside of the pleadings. Nonetheless,
even if the Court were to consider the hearing, it appears that plaintiff
merely abandoned its claims for monetary damages for trademark
infringement, but preserved its claims for attorneys’ fees and costs. See Tr.
Civ. Cause Disc. Disputes. 45:8-16, Jan. 10, 2013.
Thus, defendants’ argument that the claims were abandoned is
without merit. Plaintiff has consistently pleaded claims under the Lanham
Act and New York common law. At no point did plaintiff abandon these
claims and then attempt to reinsert them into a new complaint.
C. Whether the Statute of Limitations Bars Plaintiff’s State Law
Claims.
Defendants argue that the statute of limitations has run on several
of plaintiff’s state-law claims. Count three, claiming deceptive business
practices under New York General Business Law § 349, is subject to a
three-year statute of limitations. Gaidon v. Guardian Life Ins. Co. of Am.,
96 N.Y.2d 201, 207 (2001). Counts six and eight, claiming common law
defamation and disparagement, are subject to one-year statutes of
limitation. N.Y. C.P.L.R. § 215(3); Ramsay v. Mary Imogene Bassett Hosp.,
113 A.D.2d 149, 151 (N.Y. 1985). Count seven, claiming common law

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unfair competition, is subject to a three year statute of limitations.
Norbrook Labs. Ltd. v. G.C. Hanford Mfg. Co., 126 F. App’x 507, 509 (2d
Cir. 2005).
A new claim in an amended pleading relates back to the original
pleading if it arose out of the same conduct, transaction, or occurrences.
Fed. R. Civ. P. 15(c)(1)(B). The central inquiry is whether the facts alleged
in the original pleading gave the defendant adequate notice of the claim
within the period of the statute of limitations. Stevelman v. Alias Research
Inc., 174 F.3d 79, 86 (2d Cir. 1999). A similar standard applies under New
York law. See N.Y. C.P.L.R. 203(f).
The facts alleged in the Original Complaint and First Amended
Complaint are roughly identical to the facts alleged in the Second Amended
Complaint. There are minor differences in sentence structure. Compare
OC ¶¶ 16-17 with SAC ¶¶ 17-18. However, the only significant difference
is the addition of a paragraph alleging that defendants published false
statements about plaintiff and its business on public websites that host
customer reviews. SAC ¶ 25. Since the facts contained in all three
complaints are substantially identical, with the exception of paragraph 25,
it is apparent that the allegations in the Second Amended Complaint arose
out of the same transaction and occurrences alleged from the start. Each
of the claims concerns what plaintiff characterizes as “conduct . . .
specifically initiated to divert consumers and customers of Plaintiff’s
business to that of the defendants.” OC ¶ 19; SAC ¶ 20. Defendants have

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had adequate notice of these facts since 2008. Thus, the claims asserted
in the Second Amended Complaint relate back to the filing of the Original
Complaint in January of 2008. As such, none of plaintiff’s claims are time
barred.
D. Whether the Complaint Should Be Dismissed as to the
Individual Defendants.
Defendants argue that the conduct alleged in this case does not
warrant disregarding Assara I, LLC’s corporate form. Courts are reluctant
to disregard the corporate form, generally doing so only where there are
allegations of fraud, or under an alter-ego theory. Wm. Passalacqua
Builders, Inc. v. Resnick Developers S., Inc., 933 F.2d 131, 139 (2d Cir.
1991). However, it is well established in the Second Circuit that under the
Lanham Act, a corporate officer may be held personally liable for
trademark infringement and unfair competition if the officer is a moving,
active,

and

conscious

force

behind

the

defendant

corporation’s

infringement. KatiRoll Co. v. Kati Junction, Inc., No. 14-cv-1750, 2014 WL
3533963, at *4 (S.D.N.Y. July 16, 2014).
Here, plaintiff alleges that each of the individual defendants is a
principal of Assara I, LLC and participated in infringing plaintiff’s marks.
See SAC ¶¶ 3-6; 14-23. There is a sufficient pleading as to the individual
defendants.

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Conclusion
For the reasons given above, defendants' motion to dismiss is denied
with regard to counts one, two, four, five, six, seven, eight, and nine. The
motion to dismiss is granted with regard to counts three, ten, and eleven.
This opinion resolves the motion listed as document number 165 in
this case.
SO ORDERED
Dated: New York, New York
September 23, 2014

r;Z::0~Zt~
Thomas P. Griesa
U.S. District Judge

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