Coty Inc. et al v. Excell Brands, LLC

Filing 156

OPINION AND ORDER re: 95 MOTION in Limine, filed by Vera Wang Licensing LLC, Coty B.V., Coty Inc., Calvin Klein Cosmetics Corporation, Ate My Heart Inc., Calvin Klein Trademark Trust, Calvin Klein, Inc., V.E.W., Ltd., [ 90] MOTION in Limine, filed by Excell Brands, LLC. The Court concludes that Excell's knockoff fragrances "poach upon the commercial magnetism" of Coty's fragrances. More specifically, the Court finds that Coty has established its claims of trademark infringement, trademark dilution, and false advertising under both New York and federal law and is entitled to injunctive relief, an award of Excell's profits (including its profits for the period from Apr il 2016 until the last infringing fragrances were sold, as to which Excell is to provide an accounting), and reimbursement of its reasonable costs. The parties shall promptly meet and confer with respect to both Excell's accounting of its pro fits for the period from April 2016 until the last infringing fragrances were sold and Coty's reasonable costs. No later than two weeks from the date of this Opinion and Order, the parties shall submit a joint letter advising the Court of any disputes on either score and, in the case of a dispute, proposing a process to resolve it. By the same date, Coty shall submit a proposed judgment consistent with this Opinion and Order, including among other things the proposed terms of the in junction granted above. Excell shall have one week from the submission of Coty's proposed judgment to submit any objections in a letter brief, not to exceed three pages. The parties should advise the Court if there is any need for a conference. The Clerk of Court is directed to terminate Docket Nos. 90 and 95, and as further set forth herein. (Signed by Judge Jesse M. Furman on 9/18/2017) (ras)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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COTY INC., et al.,
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Plaintiffs,
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-v:
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EXCELL BRANDS, LLC,
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Defendant.
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09/18/2017

15-CV-7029 (JMF)
OPINION AND ORDER

JESSE M. FURMAN, United States District Judge:
Imitation may well be the sincerest form of flattery, but if taken too far it can also be
costly. Plaintiffs in this case — Coty, Inc., Coty B.V., Calvin Klein Trademark Trust, Calvin
Klein, Inc., Calvin Klein Cosmetic Corporation, Vera Wang Licensing LLC, V.E.W., Ltd., and
Ate My Heart Inc. (collectively, “Coty”) — are the producers or distributors of high-quality
fragrances associated with well-known brands, including Calvin Klein, Vera Wang, and Lady
Gaga. Defendant, Excell Brands, LLC (“Excell”), seeking to capitalize on the success of Coty’s
well-known fragrances, produced cheap “versions” of Coty’s fragrances, with similar names (for
example, “Possession” for “Obsession”) and nearly identical packaging. Compounding matters,
Excell prominently included on its packaging Coty’s own marks, albeit under words to the effect
of “Our Version Of” in comparatively smaller text.
Embittered rather than flattered, Coty brought various intellectual property claims — for
trademark infringement and unfair competition, trademark dilution, and false advertising, under
federal and New York law — against Excell. In March 2017, the Court held a three-day bench
trial on Coty’s claims and Excell’s defenses, after which the parties submitted additional post-

trial materials. In this Opinion and Order, the Court provides its findings of fact and conclusions
of law. At bottom, the Court concludes that Excell’s imitation crossed the line from flattery to
infringement, dilution, unfair competition, and false advertising — but did not cross the line far
enough to constitute counterfeiting within the meaning of federal law. Further, the Court finds
that Coty is entitled to both injunctive relief and monetary relief — in the form of Excell’s
profits — but not to enhanced monetary relief. Finally, the Court concludes that the case is not
an “exceptional” one warranting attorney’s fees and prejudgment interest.
FINDINGS OF FACT
Based on the evidence and testimony presented at trial, the Court makes the following
findings of fact by way of background. The Court includes additional factual findings in the
context of the legal analysis below.
A. Coty’s Fragrances
Coty manufactures, distributes, and markets high-end fragrances and other beauty
products. (Pls.’ Ex. 252 (“Tuil-Torres Direct”) ¶¶ 7, 10; Pls.’ Ex. 82). To the extent relevant
here, Coty is either the owner or the exclusive licensee of a fragrance portfolio that includes the
Calvin Klein, Vera Wang, Lady Gaga, and Joop! fragrance brands. (Docket No. 91 (“Stipulated
Facts”) ¶¶ 6, 8-10; Pls.’ Ex. 253 (“Conklin Direct”) ¶¶ 2, 11). In total, there are twenty-one
specific fragrances at issue in this case, each of which is branded with a house mark (such as
Calvin Klein, Vera Wang, Lady Gaga, and Joop!), as well as a product mark (such as
ETERNITY, Lovestruck, and FAME) that distinguishes the fragrances sold under a particular
house mark. (Conklin Direct ¶ 11). 1 In addition to the house and product marks, each of Coty’s

1

Specifically, Coty manufactures, distributes, and markets the following fragrances at
issue: Calvin Klein Eternity Women (Pls.’ Ex. 34); Calvin Klein Eternity Men (Pls.’ Ex. 35);

2

fragrances can be identified by its packaging features, or trade dress, which also serves to
identify the source of the product. Collectively, the house mark, product mark, and trade dress
indisputably serve as source identifiers for Coty’s products.
Coty has invested — and continues to invest — a significant amount of time and money
creating, branding, launching, and marketing each of the fragrances in its portfolio. (See Pls.’
Ex. 251 (“Singer Direct”) ¶¶ 4-29 (detailing the lengthy process for developing and launching a
fragrance and its packaging)). For example, developing a fragrance’s “juice” — the scented
liquid applied to the skin — is a laborious process that involves sourcing the proper essential oils
from fragrance houses and extensive laboratory testing. (Id. ¶¶ 15-16). In addition, development
of a fragrance’s packaging can be a multi-year process, as Coty tries to create new designs that
will differentiate its fragrances from those of its competitors. (Id. ¶ 11). Once the fragrance and
packaging are produced, Coty also engages in significant and expensive marketing and
advertising campaigns for each of its fragrances. (Id. ¶¶ 18-24). For example, between 2002 and
2015, Coty spent over $658 million advertising and promoting its Calvin Klein fragrances, over
$114 million advertising and promoting its Vera Wang fragrances, over $14 million advertising
and promoting its Lady Gaga fragrances, and over $13 million advertising and promoting its
Joop! fragrances. (Pls.’ Ex. 78).

Calvin Klein Eternity Aqua (Pls.’ Ex. 36); Calvin Klein Euphoria Women (Pls.’ Ex. 38); Calvin
Klein Euphoria Men (Pls.’ Ex. 37); Calvin Klein Obsession Women (Pls.’ Ex. 42); Calvin Klein
Obsession Men (Pls.’ Ex. 43); Calvin Klein Dark Obsession (Pls.’ Ex. 44); CK One (Pls.’ Ex.
41); CK One Shock Women (Pls.’ Ex. 39); CK One Shock Men (Pls.’ Ex. 40); CK IN2U
Women (Pls.’ Ex. 45); CK IN2U Men (Pls.’ Ex. 52); Downtown Calvin Klein (Pls.’ Ex. 50); CK
One Summer (Pls.’ Ex. 51); CK Be (Pls.’ Ex. 53); Vera Wang Princess (Pls.’ Ex. 48); Vera
Wang Lovestruck (Pls.’ Ex. 49); CKfree Blue (Pls.’ Ex. 54); Lady Gaga Fame (Pls.’ Ex. 46); and
Joop! Homme (Pls.’ Ex. 47).

3

As a result of these efforts, Coty’s fragrances are some of the most popular and
recognizable in the fragrance market. Between 2002 and 2015, Coty’s net sales for its Calvin
Klein fragrances totaled over $2.2 billion, for its Vera Wang products over $296 million, for its
Lady Gaga products over $28 million, and for its Joop! line over $188 million. (Pls.’ Ex. 78).
Coty’s products have also received significant media attention. (See, e.g., Pls.’ Exs. 100-5
through 100-9, 122, 138-3). Some of Coty’s products are so successful that the company has
produced “flankers” for the products — that is, new fragrances that share certain characteristics
and branding with the original fragrance. (Singer Direct ¶¶ 30-32). For example, Coty has
produced flankers for several of Calvin Klein’s pillar fragrances: Dark Obsession (flanking
Obsession), Eternity Aqua (flanking Eternity), CK One Shock (flanking CK One), and CK Free
Blue (flanking CK Free). (Id.).
B. Excell’s Fragrances
Excell’s business model is, to put it mildly, a bit different. Until December 2016, Excell
concededly manufactured and distributed knockoff fragrances. To the extent relevant here, one
of its collections — designated the “Diamond Collection” — offered “versions” of Calvin Klein,
Vera Wang, Lady Gaga, and Joop! fragrances. (Stipulated Facts ¶ 33). Excell did not receive
authorization from Coty to sell any of its fragrances, and it has not paid Coty any royalties or
other payments in connection with its sale of those fragrances. (Id. ¶¶ 29-30).
Excell explained the process by which it decided which branded fragrances to mimic for
its Diamond Collection as follows: “First, it [sought] original fragrances with a high retail price
to create a differential between the retail prices of its alternative fragrance and the original
product. Second, it [sought] a product that [would] be understood by its customer base of ‘lower
income, sometimes ethnic customers.’” (Id. ¶ 38). After selecting a fragrance to emulate, Excell

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then chose a product name for its alternative fragrance that would evoke the name of the original
fragrance. (Ferullo Dep. 107 (“We choose names that are similar but different obviously from the
original, we want to have the customer understand what they are buying.”)). In creating the juice
for its alternative fragrances, Excell did not make any meaningful effort to replicate the scent of
Coty’s products. Instead, using only their own noses and reviews of the original fragrances,
Excell employees made broad recommendations to the company’s supplier in India, which then
manufactured the alternative fragrances and packaging. (Ferullo Dep. 228 (“If an item is citrusee
or if it is sweet we want the version of to be citrusee or sweet.”)). Excell often sent its suppliers
the original fragrance (or a picture of the fragrance) it sought to emulate along with instructions
on how to emulate it. (Ferullo Dep. 33-36; Pls.’ Exs. 190, 198). Before a fragrance went into
production, however, Excell typically reviewed, revised, and approved the bottle, box, and juice.
(Ferullo Dep. 130-31, 134). Indeed, the company frequently made changes to the products so
that the packaging of its knockoffs would more closely resemble Coty’s original branded
fragrances. (See, e.g., Pls.’ Exs. 190, 194; Stipulated Facts ¶ 28). Notwithstanding its
involvement in the process, however, Excell had no first-hand knowledge of the chemical
composition or ingredients of its products; nor did it have any meaningful quality assurance
program. (Docket No. 65 at 6-7, 10; Ferullo Dep. 181 (“The salespeople will decide whether or
not the product matches the design that we had discussed, if the box has a nice appearance to it,
if the bottle looks great, if the juice smells good. That is it really.”)).
Appendix A depicts the packaging of each Diamond Collection fragrance at issue in this
case alongside the packaging of the Coty fragrance Excell sought to emulate. Significantly, on
the front of each of its Diamond Collection fragrance boxes, Excell included a legend stating that

5

the fragrance was “Our Version Of” the relevant Coty product. (Stipulated Facts ¶ 20). For
example, Excell’s Serenity fragrance had the following legend on its front:

(Pl.’s Ex. 56). Relatedly, on the back of each Excell box appeared the words “Not Associated
With The Makers Of,” followed by reference to the relevant Coty product. (Stipulated Facts
¶ 39). Again, by way of example, the following is a picture of the text from the Serenity
fragrance packaging:

6

(Pl.’s Ex. 56). Significantly, in both legends, Excell replicated Coty’s relevant house and
product marks. Moreover, Coty’s marks were depicted more prominently than the other text.
On the top of each box, in comparatively smaller lettering, Excell included its own brand name:
Diamond Collection Luxurious Fragrances. (See id.).
As a general matter, Excell did not advertise or market its products directly to consumers.
(See Pls.’ Ex. 174). Instead, the company sold its Diamond Collection products primarily to
traditional retailers and discount chains, such as Kmart, Dollar General, and Ross Stores.
(Conklin Direct ¶¶ 25, 28). Its products can also be purchased through online marketplaces,
including Amazon and eBay. (Id. ¶ 26).
C. Excell’s Current Status
In 2015, several of Excell’s principals and employees were indicted in the United States
District Court for the District of New Jersey with money laundering and other offenses. (See
Pls.’ Ex. 171 (“Criminal Complaint”)). The gravamen of the charges is that the defendants
laundered money through Excell for the benefit of certain Latin American drug cartels.
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(Bronsnick Dep. Resp. 73; Criminal Complaint). One former Excell employee, Wayne
Bronsnick, pleaded guilty. (Bronsnick Dep. Resp. 121). As of the trial in this matter, charges
remained pending against, among others, Excell’s President, Wayne Hamerling, and its
Wholesale Sales Manager, Luis Rodriguez. (See Criminal Complaint). Not surprisingly,
therefore, all three invoked their privilege against self-incrimination in these proceedings and
refused to answer any substantive questions, either during discovery or at trial. (See, e.g.,
Bronsnick Dep. Resp. 37, 43; Rodriguez Dep. 29-53; Hamerling Dep. 40-45).
In part because of these criminal charges, Excell shut down its business operations and
ceased selling its fragrances in December 2016. (Tr. 383-84 (testimony of Andrew Pfau that,
“[s]ince early December [Excell] has . . . no inventory, has not sold anything, has not conducted
any business other than winding down operations”); Tr. 391 (Pfau acknowledging that the
criminal charges influenced the decision to shut down the company)). It is allegedly now in the
process of “winding down operations,” although it has not yet fully dissolved. (Id. at 383-84).
Notably, the company’s decision to cease its business operations was entirely unrelated to the
instant lawsuit. (Id. at 384-85 (testimony of Pfau that “[the lawsuit] really didn’t have any
[impact on the decision to cease operations]. It would have happened regardless.”)).
CONCLUSIONS OF LAW
Coty presses three categories of claims against Excell. First, Coty brings trademark
infringement claims under both federal and New York law. (Docket No. 92 (“Pls.’ Mem.”) 317). Second, Coty alleges that Excell’s use of its marks constitutes trademark dilution under
both federal and New York law. (Id. at 17-20). And third, Coty contends that Excell’s use of the
“Our Version Of” Legend on its fragrance packaging gives rise to a false advertising claim under

8

federal and New York law. (Id. 20-23). 2 Excell, for its part, invokes the doctrine of nominative
fair use, and claims the affirmative defense of laches. (Docket No. 98 (“Def.’s Mem.”) 14, 36).
Because the latter is Defendant’s sole affirmative defense, the Court pauses briefly to address it
first. The Court then turns to Coty’s claims, followed by a discussion of remedies.
A. Excell’s Laches Defense
The basic elements of laches are well established: “(1) the plaintiff knew of the
defendant’s misconduct; (2) the plaintiff inexcusably delayed in taking action; and (3) the
defendant was prejudiced by the delay.” Ikelionwu v. United States, 150 F.3d 233, 237 (2d Cir.
1998). Applying those elements here, Excell’s laches argument fails for three reasons. First, “it
is well established that laches is not a defense against injunctive relief when the defendant
intended the infringement.” Hermes Int’l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d 104, 107
(2d Cir. 2000) (internal quotation marks omitted); Victorinox AG v. B & F Sys., Inc., 114 F.
Supp. 3d 132, 136 (S.D.N.Y. 2015) (“[A] laches defense is not available to a defendant who
intentionally traded off the plaintiff’s name and protected products.” (internal quotation marks
and brackets omitted)). This “good-faith component of the laches doctrine is part of the
fundamental principle that he who comes into equity must come with clean hands.” Hermes, 219
F.3d at 107 (internal quotation marks omitted). As discussed in more depth below, the Court
finds that Excell acted in bad faith and set out to intentionally infringe Coty’s source identifiers.
(See Section B.2.e). It follows that laches is not available to Excell as a defense.
Second, and in any event, the Court finds that Coty did not unreasonably delay in seeking
to enforce its rights, as required for the laches defense. Significantly, Coty’s lawsuit was
2

Coty also alleged violations of Section 349 and 350 of the New York General Business
Law in its Complaint, but it agreed not to pursue those claims. (Docket No. 143). Accordingly,
they are dismissed as withdrawn.

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initiated on September 4, 2015, well within the applicable six-year statute of limitations. (See
Docket No. 1 (“Complaint”); Def.’s Mem. 4 (noting that Excell was founded in April 2010)).
Thus, “there is no presumption of laches and the burden remains on the defendant to prove the
defense.” Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 191 (2d Cir. 1996); see also Gross
v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175, 196 (S.D.N.Y. 2008) (“Since there is no
statute of limitation in the Lanham Act, courts apply the analogous statute of limitations from the
forum state. . . . New York’s analogous state statute is the six-year statute of limitations for
fraud.” (citation omitted)); cf. SCA Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC,
137 S. Ct. 954, 959 (2017) (“Laches . . . cannot be invoked to bar legal relief in the face of a
statute of limitations enacted by Congress.” (internal quotation marks and brackets omitted)).
Moreover, Coty had “no obligation to sue until the likelihood of confusion loom[ed] large and
[its] right to protection [had] clearly ripened.” ProFitness Physical Therapy Ctr. v. Pro-Fit
Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62, 68 (2d Cir. 2002) (internal quotation
marks omitted). Here, Coty demonstrated that Excell’s sales were relatively insignificant during
its first few years of operation and that Excell’s marketing efforts to its retailers were less
focused on the Coty knockoffs during that time. (Pls.’ Exs. 244). Put another way, Coty was
not aware of the full scope of Excell’s allegedly infringing conduct until later (and then
reasonably delayed bringing suit in part to see how a related lawsuit, Polizzi v. Excel Brands
LLC, 13-CV-6146 (S.D.N.Y.), proceeded. (Conklin Direct ¶ 39). 3 Accordingly, the Court finds
that Coty did not unreasonably delay bringing suit.

3

For reasons that are not clear, Excell’s name was spelled with only one “l” in the Polizzi
case. There is no dispute, however, that the parties are one and the same.

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Finally, even if Excell could show unreasonable delay, it failed to produce evidence of
prejudice. Prejudice “may be found where the junior user took affirmative steps to increase its
use of the mark during and in reliance on the senior user’s period of delay, and that unwinding
those actions would require it to reorganize its business or reeducate the public as to its product
if restrained from using the mark.” Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 244
(S.D.N.Y. 2012) (internal quotation marks omitted); see also Conopco, 95 F.3d at 192 (noting
that prejudice may be found “when a defendant has changed his position in a way that would not
have occurred if the plaintiff had not delayed” (internal quotation marks omitted)). In this case,
Excell did not “change its position” in any manner due to Coty’s lawsuit. Indeed, by its own
admission, the filing of the lawsuit had no effect on its operations. Excell continued to sell its
knockoffs long after Plaintiffs filed suit. (Ferullo Dep. 79-80). And while it did cease producing
the products at issue in December 2016, and is now in the processing of “winding down,” those
developments were due to the criminal charges in New Jersey and the breakdown of negotiations
to be acquired by a third party; as Excell conceded, this lawsuit had nothing to do with them.
(See Docket No. 81; Tr. 384-85 (testimony of Pfau noting that Coty’s lawsuit had no effect on
Excell’s decision to shut down its operations)). Put simply, any conceivable prejudice was
mooted when Excell decided, for reasons unrelated to this case, to cease its operations and stop
using its brands.
B. Trademark Infringement and Unfair Competition
The Court turns, then, to Coty’s trademark infringement claims under Sections 32(1) and
43(a) of the Lanham Act, 15 U.S.C. §§ 1114(a), 1125(a), and its unfair competition claim under
New York law. Section 32(1) of the Lanham Act prohibits the “use in commerce . . . of a
registered mark in connection with the sale, offering for sale, distribution, or advertising of any

11

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) prohibits the “use[] in
commerce [of] any word, term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of fact, or false or misleading
representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services, or commercial activities by another
person.” 15 U.S.C. § 1125(a)(1)(a). In this case, Coty alleges that Excell violated these
provisions and the New York law of unfair competition by misappropriating, for each fragrance
involved, Coty’s (1) house mark (e.g., Calvin Klein); (2) its product mark (e.g., OBSESSION);
and (3) its trade dress, which “encompasses the design and appearance of the product together
with all the elements making up the overall image that serves to identify the product presented to
the consumer.” Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2d Cir.
1997). (Docket No. 105 (“Pls.’ Resp. Mem.”) 1).
Courts analyze claims under Sections 32(1) and 43(a) of the Lanham Act by applying a
“familiar two-prong test.” Gucci, 868 F. Supp. 2d at 237 (internal quotation marks omitted).
Courts use the same standards to evaluate unfair competition claims under New York law, except
that a plaintiff must prove “bad faith” in order to prevail under New York common law. See,
e.g., U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 538 (S.D.N.Y.
2011); Twentieth Century Fox Film Corp. v. Marvel Enters., Inc., 155 F. Supp. 2d 1, 25
(S.D.N.Y. 2001). The first prong of the test asks “whether the plaintiff’s mark is entitled to
protection.” Gucci, 868 F. Supp. 2d at 237 (internal quotation marks omitted). A mark is
entitled to protection if it is either inherently distinctive or has acquired distinctiveness through

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secondary meaning. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
In the case of trade dress, the plaintiff must also demonstrate that the trade dress at issue is
nonfunctional. See Fun-Damental, 111 F.3d at 999. Under the Lanham Act, an incontestable
registration — defined as a mark that “has been in continuous use for five consecutive years”
after the date of registration and is still being “use[d] in commerce” — is conclusive evidence of
a plaintiff’s exclusive right to use the specific mark or trade dress, unless the defendant can
establish one of the statute’s affirmative defenses (none of which, in light of the Court’s decision
above regarding laches, is relevant here). 15 U.S.C. § 1065; see id. § 1115(b). Meanwhile,
registrations that are not incontestable are still “prima facie evidence of the validity of the
registered mark and . . . of the registrant’s exclusive right to use the registered mark,” subject to
defenses also not relevant here. Id. § 1115(a).
Absent federal registration, courts must assess where a particular mark or trade dress falls
on Judge Friendly’s ascending spectrum of distinctiveness: generic, descriptive, suggestive, and
arbitrary or fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.
1976); accord Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir.
1986). Suggestive and arbitrary or fanciful marks are considered inherently distinctive and
protected, but a descriptive mark will “be protected only if it has acquired secondary meaning.”
Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir. 1993). Secondary
meaning attaches to a mark when “the consuming public primarily associates the term with a
particular source.” Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d
Cir. 1992). In analyzing secondary meaning, courts generally consider six factors: “(1) the
senior user’s advertising and promotional expenses; (2) consumer studies linking the name to the
source; (3) the senior user’s sales success; (4) third-party uses and attempts to plagiarize the

13

mark; (5) length and exclusivity of the mark’s use; and (6) unsolicited media coverage of the
products at issue.” Mobileye, Inc. v. Picitup Corp., 928 F. Supp. 2d 759, 779 (S.D.N.Y. 2013)
(internal quotation marks omitted).
The second prong of the infringement test asks whether the defendant’s “use of the mark
is likely to cause consumer confusion as to the origin or sponsorship of the defendant’s goods.”
Gucci, 868 F. Supp. 2d at 237 (internal quotation marks omitted). Indeed, “[t]he crucial issue in
an action for trademark infringement is whether there is any likelihood that an appreciable
number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to
the source of the goods in question.” Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir.
2004) (internal quotation marks and alterations omitted). Significantly, in addition to confusion
arising at the point of sale, courts recognize, and Coty alleges, two other types of confusion:
initial-interest and post-sale confusion. The former occurs when “potential consumers initially
are attracted to the junior user’s mark by virtue of its similarity to the senior user’s mark, even
though these consumers are not actually confused at the time of purchase.” Jordache Enters.,
Inc. v. Levi Strauss & Co., 841 F. Supp. 506, 514-15 (S.D.N.Y. 1993). That is, initial-interest
confusion “creates initial customer interest, even if no final sale is completed as a result.”
Clinique Labs., Inc. v. Dep Corp., 945 F. Supp. 547, 551 (S.D.N.Y. 1996); accord Mobil Oil
Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 260 (2d Cir. 1987); see also, e.g., Grotrian,
Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707, 717 (S.D.N.Y.
1973) (finding the value of Steinway’s trademark to be harmed where potential purchasers of
Steinway pianos were initially interested in Grotrian-Steinweg pianos because of the name), aff’d
523 F.2d 1331, 1342 (2d Cir. 1975). By contrast, post-sale confusion occurs (as its name
suggests) after a sale is completed. See, e.g., Clinique, 945 F. Supp. at 551. Post-sale confusion

14

may be present “when a manufacturer of knockoff goods offers consumers a cheap knockoff
copy of the original manufacturer’s more expensive product, thus allowing a buyer to acquire the
prestige of owning what appears to be the more expensive product.” Hermes, 219 F.3d at 108.
To determine whether there is a likelihood of confusion, courts in this Circuit have long
applied the eight-factor balancing test first articulated by Judge Friendly in Polaroid Corp. v.
Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). The eight so-called Polaroid factors are:
(1) the strength of the trademark; (2) the similarity of the marks; (3) the proximity of the
products and their competitiveness with one another; (4) evidence that the senior user may
“bridge the gap” by developing a product for sale in the market of the alleged infringer’s
product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was
adopted in bad faith; (7) the respective quality of the products; and (8) the sophistication (or lack
thereof) of consumers in the relevant market. See Star Indus., Inc. v. Bacardi & Co. Ltd., 412
F.3d 373, 384 (2d Cir. 2005). Application of the Polaroid test is “not mechanical, but rather,
focuses on the ultimate question of whether, looking at the products in their totality, consumers
are likely to be confused.” Id.
1. Protection of Coty’s Source Identifiers
As an initial matter, Coty’s source identifiers are plainly entitled to protection under the
first prong of the infringement test. Notably, Excell concedes that — with one exception — all
of “Plaintiff’s marks are distinctive.” (Def.’s Mem. 29). The one exception is the mark
HOMME, a fragrance produced by Joop!, which, Excell argues, “means” men in French “and is
descriptive.” (Def.’s Mem. 6). But Coty does not allege infringement of the HOMME mark on
its own; instead, it alleges impermissible use of the HOMME mark in conjunction with the house
mark Joop! and the cologne’s trade dress. Regardless, Excell’s descriptiveness argument falls

15

short. The Second Circuit has explained that “[a] term is suggestive” — and thus inherently
distinctive — “if it requires imagination, thought and perception to reach a conclusion as to the
nature of goods.” Bernard v. Commerce Drug Co., 964 F.2d 1338, 1341 (2d Cir. 1992) (internal
quotation marks omitted). By contrast, “[a] term is descriptive” — and thus not inherently
distinctive — “if it forthwith conveys an immediate idea of the ingredients, qualities or
characteristics of the goods.” Id. (internal quotation marks omitted) The fact that HOMME is
French for “man” may or may not be known to the general consumer encountering the cologne,
but either way it does not convey “an immediate idea of the ingredients, qualities or
characteristics” of the fragrance at issue. Id. Instead, it “requires imagination, thought and
perception to reach [the] conclusion” that HOMME is not just a cologne, but a cologne targeting
men. French Transit, Ltd. v. Modern Coupon Sys., Inc., 818 F. Supp. 635, 637 (S.D.N.Y. 1993)
(finding suggestiveness when “there is no evidence in the record that the term ‘LE CRYSTAL
NATUREL’ conveys the character or quality of plaintiff’s product to persons who have never
seen the product and who do not know what it is. We believe that the average consumer who has
never heard of plaintiff’s product would have to use his or her imagination to determine that LE
CRYSTAL NATUREL is a body deodorant.”). The Court therefore concludes that all of Coty’s
marks qualify for trademark protection.
Even without Excell’s concession as to the marks, Coty has established the
distinctiveness of both the marks and trade dresses it seeks to protect in this case. Coty is
seeking to enforce its exclusive rights in twenty-eight registered trademarks and trade dresses,
twenty-one of which are the subject of incontestable registrations. 4 Meanwhile, Coty’s seven

4

Specifically, Coty’s incontestable registrations are as follows: OBSESSION (Reg. No.
0,407,245), CALVIN KLEIN (Reg. No. 1,086,041), CALVIN KLEIN (Reg. No. 1,226,396),

16

registered trademarks that are not incontestable 5 are presumed to be distinctive and, given that
Excell does not present any evidence to rebut the presumption, are protected. See, e.g., Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986) (“[R]egistered
trademarks are presumed to be distinctive and should be afforded the utmost protection.”). In
addition to these twenty-eight registered trademarks, Coty seeks to enforce its rights in two
unregistered marks and thirteen unregistered trade dresses. (Pls.’ Mem. 5; Pls.’ Ex. 1). The two
unregistered marks — LADY GAGA and LADY GAGA FAME — are descriptive marks that
have plainly achieved secondary meaning as they function as distinctive source identifiers for the
eponymous entertainer Lady Gaga and her fragrance line. That secondary meaning has attached
to the Lady Gaga marks is not — and cannot be — disputed. (Def.’s Mem. 6; see also Tr. 83
(testimony of Robert Campbell, manager for Lady Gaga, describing her fame)).
Finally, contrary to Excell’s assertions, Coty’s thirteen unregistered trade dresses also
satisfy the first prong of the infringement test. Courts assess a product’s “trade dress
distinctiveness by looking at all its elements and considering the total impression the trade dress
gives to the observer.” Fun-Damental, 111 F.3d at 1001. Because “the varieties of labels and

OBSESSION (Reg. No. 1,347,076), OBSESSION (Stylized) (Reg. No. 1,435,231), ETERNITY
(Stylized) (Reg. No. 1,608,723), ETERNITY Bottle Design (Reg. No. 1,608,753), CK ONE
(Stylized) (Reg. No. 1,946,318), CK ONE CALVIN KLEIN & Design (Reg. No. 1,969,912), CK
(Stylized) (Reg. No. 2,064,064), CK (Stylized) (Reg. No. 2,234,623), CK FREE (Stylized) (Reg.
No. 3,756,039); CK ONE (Reg. No. 3,916,700), EUPHORIA BLOSSOM (Reg. No. 3,455,523),
EUPHORIA (Reg. No. 3,786,226), IN2U (Reg. No. 3,804,964), VERA WANG (Reg. No.
1,797,058), VERA WANG & Design (Reg. No. 3,110,991), VERA WANG PRINCESS (Reg.
No. 3,184,309), LADY GAGA (Reg. No. 3,695,038), and LADY GAGA (Reg. No. 3,695,129).
(Pls.’ Exs. 3-10, 12-17, 19-21, 27-29, 33).
5

Coty’s registered marks that are not yet incontestable are as follows: CK ONE SHOCK
(Reg. No. 4,126,963), DARK OBSESSION (Reg. No. 4,426,346), LADY GAGA (Reg. No.
3,960,468), JOOP! (Reg. No. 4,520,669), JOOP! HOMME WILD (Reg. No. 4,682,626), VERA
WANG LOVESTRUCK (Reg. No 4,032,409), and DOWNTOWN CALVIN KLEIN (Reg. No.
4,558,645). (Pls.’ Exs. 11, 18, 22, 25, 26, 30, 31).

17

packaging available to wholesalers and manufacturers are virtually unlimited . . . . , a product’s
trade dress typically will be arbitrary or fanciful and meet the inherently distinctive
requirement.” Id. at 1000. Here, Coty’s unregistered trade dresses all consist of original,
detailed, and specific fragrance packaging combinations, and thus merit trade dress protection.
For example, Coty seeks trade dress protection for its Calvin Klein ONE SHOCK fragrance,
which combines (1) an opaque black bottle; (2) a black cap; (3) a CK mark displayed in standard
Calvin Klein logo lettering in simple typeface on the center potion of both the bottle and the
packaging; and (4) the SHOCK name displayed in uppercase letter in neon green graffiti
typeface below the CK mark on both the bottle and packaging. (Pls.’ Ex. 1, at 5; see Appendix
A). Although some individual features of a given fragrance — indeed, of all the fragrances Coty
seeks to protect — may be common in the fragrance industry, “the impression given by all of
[the features] in combination” is plainly inherently distinctive. Fun-Damental, 111 F.3d at 1001.
In arguing otherwise, Excell contends that Coty’s bottles constitute product design trade
dress, not product packaging trade dress, and “are only protectable as trade dress upon a showing
of acquired distinctiveness.” (Def.’s Mem. 21). It further argues that Coty is unable to show that
the color of its bottles has acquired secondary meaning. (Id.). But, in so arguing, Excell ignores
the fact that, while any one “element of a trade dress individually might not be inherently
distinctive, it is the combination of elements that should be the focus of the distinctiveness
inquiry.” Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995); cf.
Versace v. Versace, No. 01-CV-9645 (PKL) (THK), 2003 WL 22023946, at *9 (S.D.N.Y. Aug.
27, 2003) (“Dissection of the mark into its various components is not appropriate, as it is the
impression which the mark as a whole creates on the average reasonably prudent buyer and not
the parts thereof which is important.” (internal quotation marks and brackets omitted)). More

18

fundamentally, Excell cites no support for its contention that Coty’s fragrance bottles should be
deemed product design. (Def.’s Mem. 21). See Paddington Corp. v. Attiki Imps. & Dists., Inc.,
996 F.2d 577, 584 (2d Cir. 1993) (finding the trade dress of an alcoholic beverage bottle
inherently distinctive); Clinique, 945 F. Supp. at 559 (finding the trade dress of fragrance
packaging inherently distinctive). 6 Instead, Coty’s trade dresses are plainly product packaging in
that they refer “to the manner in which [the fragrances are] ‘dressed up’ to go to market with a
label, package, display card, and similar packaging elements.” Knitwaves, Inc. v. Lollytogs Ltd.,
71 F.3d 996, 1005 (2d Cir. 1997).
Finally, even if a showing of secondary meaning were required, Coty presented evidence
of secondary meaning in the form of sales success, advertising expenditures, unsolicited media
coverage showcasing its marks and trade dresses, consumer studies linking the names to the
source, and Excell’s conscious imitation of its marks and trade dress. (See, e.g., Pls.’ Ex. 255
(“Rotter Direct”) ¶ 7 (testifying that Coty’s advertising and promotional expenditures for fiscal
years 2006 through 2015 totaled over $658 million and its net sales during that period totaled
over $2.2 billion for Calvin Klein and CK fragrances in the United States); Pls.’ Exs. 93-2, 93-7,
93-8, 121 (advertisements showcasing Coty’s trade dresses); Pls.’ Exs. 100-5 through 100-9, 122
(media coverage showcasing various trade dresses); Pls.’ Ex. 85-5 (highlighting consumer
studies that underscore Plaintiffs’ brand recognition)). See, e.g., Clinique, 945 F. Supp. at 559
(finding that a skin care product had acquired secondary meaning after concluding that, some,

6

Excell also implies that Coty’s designs may be functional (Def.’s Mem. 21), which, if
true, would preclude trade dress protection. See, e.g., Fun-Damental, 111 F.3d at 999 (“[A]n
otherwise inherently distinctive trade dress is entitled to protection only if it is also
nonfunctional.”). But Excell expressly withdrew its defense of functionality. (Compare Docket
No. 71 (“Answer to Amended Compls.”), with Docket No. 91 (“Joint Pretrial Order”) 4
(“Defendant no longer asserts defenses based on . . . the doctrine of functionality.”).

19

but not all, of these factors were present). Indeed, Excell’s entire business model rests on the
distinctiveness of Coty’s trade dress; the only reason Excell mimics Coty’s fragrances is because
the latter’s products are distinctively identifiable in the minds of consumers. See N.Y.C.
Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 330 (S.D.N.Y. 2010)
(“[I]ntentional copying is persuasive evidence of secondary meaning.”).
2. Likelihood of Confusion
Thus, the Court turns to whether Excell’s knockoffs are likely to cause consumer
confusion under the Polaroid test. Strictly speaking, that analysis calls for consideration of each
product and each mark individually. See, e.g., Gucci, 868 F. Supp. 2d at 222 (noting that in
analyzing infringement allegations, the court “must examine each mark in turn”). For purposes
of many of the Polaroid factors, however, there is no meaningful difference among the relevant
products and marks. Thus, for the sake of efficiency, the Court addresses the products and marks
together where possible, as Excell itself does (see, e.g., Def. Mem. 20-23) and other courts have
done in similar circumstances. See, e.g., Gucci, 868 F. Supp. 2d at 246 (analyzing the various
marks in tandem where the Polaroid factors were “the same with respect to each mark”).
Elsewhere, the Court considers Excell’s arguments only with respect to the least infringing of the
marks and products at issue, on the theory that if those arguments fall short as to those marks and
products, it follows that they fall short as to the more infringing marks and products as well.
a. Strength of Marks and Trade Dresses
The first Polaroid factor — the strength of Coty’s marks and trade dresses — weighs
heavily in Plaintiff’s favor, substantially for the reasons discussed above in connection with the
question of whether Coty’s marks are entitled to protection. Coty’s undisputed “commercial
success” and sizeable “advertising expenditures” only “reinforce[] the strength” of its source

20

identifiers. Charles of the Ritz Grp. Ltd. v. Quality King Distribs., Inc., 832 F.2d 1317, 1321 (2d
Cir. 1987). In arguing otherwise, Excell asks the Court to consider each of the components of
Coty’s fragrances — that is, its house marks, product marks, bottles, and trade dresses — in
isolation. (Def.’s Mem. 16-20). For example, Excell cites a nearly twenty-year-old decision,
Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242, 248 (S.D.N.Y. 1999), to contend that Coty’s
ETERNITY bottle, while being inherently distinctive, is a weak mark. (Def.’s Mem. 16-17).
But these arguments miss the forest for the trees. The strength of Coty’s ETERNITY mark alone
may be on the weak end of the spectrum, but Coty claims that Excell not only misappropriated
its bottle design, but also its house mark (Calvin Klein), its fragrance mark (ETERNITY), and
other components of its trade dress. (Pls.’ Ex. 1, at 12). Taken together, these features weigh
more heavily in Coty’s favor. Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729,
735 (2d Cir. 1991) (“[I]n determining the similarity of marks in an infringement action, a court
must examine the visual appearance of each mark in the context of its use.”). Moreover, in the
nearly eighteen years since the Court in Conopco found Coty’s ETERNITY Bottle to be a weak
mark, the mark has established significant secondary meaning. Between 2009 and 2015, for
example, Coty’s net sales of Calvin Klein ETERNITY were $322,997,895. (Pls.’ Ex. 78).
Along the same lines, Excell disputes the strength of Coty’s CK One trade dress,
contending that, notwithstanding the incontestable registration, its “basic flask shape is common
in the fragrance industry and not distinctive.” (Def.’s Mem. 18). At trial, however, Excell
provided no evidence to back up that claim. Even if it did, Excell’s argument would fail as Coty,
once again, is not claiming trademark protection for its bottle shape alone; instead, it is claiming
trademark infringement for the various components of its trade dress and for Excell’s use of its
house and product marks. And “[b]ecause in the context of trade dress the whole can be greater

21

than, or at least different from, the sum of its parts, it is necessary to consider the combined
articulated elements of [Coty’s CK One] trade dress to determine whether as an ensemble they
form a distinctive presentation to consumers.” Best Cellars, Inc. v. Wine Made Simple, Inc., 320
F. Supp. 2d 60, 71 (S.D.N.Y. 2003). Here, the bottle’s shape, in combination with the various
other facets of its trade dress, establish Coty’s CK One trade dress as distinctive.
b. Similarity of Plaintiff’s and Defendant’s Marks
The second Polaroid factor — the similarity of Coty’s and Excell’s marks — also
strongly favors Coty. Similarity is a holistic consideration that turns on the marks’ sight, sound,
and overall commercial impression under the totality of the circumstances. See, e.g., Malletier v.
Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 538 (2d Cir. 2005). Instead of merely
conducting a “[s]ide by side comparison,” a court must assess “whether a consumer who is
somewhat familiar with the plaintiff’s mark would likely be confused when presented with
defendant’s mark alone.” Clinique, 945 F. Supp. at 552. The same basic standard also applies
for the trade dresses at issue. Fun-Damental, 111 F.3d at 1003.
In the Court’s view, Coty has persuasively demonstrated that Excell’s fragrances
“blatantly cop[y]” its own in a number of ways. Clinique, 945 F. Supp. at 551 (finding similarity
when the defendant “manufactured almost identical soap, toners, eye creams, and moisturizers,
with only minuscule and insignificant changes in packaging and color”). To list just a few,
Excell’s products copy, with only slight differences, the names, typefaces, packaging, design,
coloring, and bottle shapes of Coty’s fragrances. (See Appendix A). To provide one illustrative
example: Excell’s SERENITY AQUA fragrance features a similar typeface, color, packaging,
bottle shape, and, most obviously, name, to Coty’s ETERNITY AQUA. (Pls.’ Ex. 1, at 13). In
addition, for each fragrance at issue here, Excell’s packaging includes two exact replicas of

22

Coty’s house mark (e.g., Calvin Klein) and product mark (e.g., ETERNITY AQUA) as part of
the “Our Version Of” and “Not Associated With” legends. (Id.).
These similarities, which are present (albeit in slightly varying degrees) in each of
Excell’s fragrances at issue, are more than sufficient to “illustrate a pattern of resemblance”
between the parties’ products. Bath & Body Works Brand Mgmt., Inc. v. Summit Entm’t, LLC, 7
F. Supp. 3d 385, 395 (S.D.N.Y. 2014). The Second Circuit’s analysis of two competing alcohol
brands in Paddington, 996 F.2d at 586, is instructive. In that case, the Court acknowledged
differences in the brand name, bottle shape, label design, and cap design between the two brands,
but ultimately concluded that the bottles and packaging of the two brands — specifically, their
coloration, labels, and typeface — were “sufficiently similar in overall impression to suggest that
they are made by the same manufacturer.” Id. Here too, the fragrances’ “lettering style, layout,
and coloration, taken together, convey the same impression.” Id.; see also, e.g., Clinique, 945 F.
Supp. at 560 (“The similarities of the products carry through to similarities in the boxes in which
they are packaged.”). Moreover, the similarities are no mere coincidence; by its own admission,
Excell intentionally designed, manufactured, and marketed its fragrances for this effect. (See,
e.g., Pls.’ Ex. 195 (Excell directing its manufacturer to develop a cap for its “version” of Vera
Wang Lovestruck that was the same as the original product)).
To be sure, there is a range of differences between Coty’s marks and trade dresses, on the
one hand, and Excell’s, on the other. (See Appendix A). At the less infringing end of what
could be called the “similarity spectrum” are Excell’s CITY GIRL and Love story fragrances,
which are the least similar to their counterparts, Coty’s DOWNTOWN and Lovestruck products.
For example, although the names CITY GIRL and DOWNTOWN arguably evoke similar
associations, the words do not sound in any way alike; the fragrances’ packages also have

23

notable differences, as Excell’s version includes a disco behind the CITY GIRL logo and what
appears to be a skyline at the bottom of its box. (Id.). Similarly, Coty’s Lovestruck contains a
cap adorned with a purple floral bouquet while Excell’s Love story contains a much more
understated purple cap without any obvious floral design. (Id.). At the other end of the
“similarity spectrum,” Excell’s OK ROCK and SERENITY fragrances are remarkably similar to
their counterparts, Coty’s CK SHOCK and ETERNITY, in both name and trade dress. (See
Appendix A).
Notably, however, even the two fragrances at the less infringing end of the “similarity
spectrum” contain significant similarities. For example, both Coty’s DOWNTOWN and
Excell’s CITY GIRL are contained in squat, cylindrical bottles with rounded bottoms and flat
metallic silver cylindrical caps; both contain clear glass through which a pink hue fragrance is
visible; both display the fragrance name in all uppercase letters on the center portion of the
fragrance bottle; and both are packaged in a bright pink outer carton. (See id.). Coty’s
Lovestruck and Excell’s Love story have somewhat similar names and share a rectangular bottle
with pink lettering; clear glass through which the purple hue of the fragrance is visible; a
magenta outer carton; and the fragrance name displayed in sentence case on both the outer carton
and fragrance bottle. (See id.). As with Excell’s other products, the packaging for CITY GIRL
and Love story also includes exact replicas of Coty’s marks in their “disclaimers.” In short, here,
as in Paddington, viewing all of the relevant marks and trade dresses “as a whole” — and in
tandem — leads to the conclusion that the allegedly infringing products are quite similar to their
counterparts. Id.; see also, e.g., Brennan’s, Inc. v. Brennans Rest., L.L.C., 360 F.3d 125, 133 (2d
Cir. 2004) (“[W]hen evaluating the similarity of marks, courts consider the overall impression
created by a mark. Each mark must be compared against the other as a whole; juxtaposing

24

fragments of each mark does not aid in deciding whether the compared marks are confusingly
similar.”); Giorgio Beverly Hills, Inc. v. Revlon Consumer Prod. Corp., 869 F. Supp. 176, 182
(S.D.N.Y. 1994) (criticizing the plaintiff for “creat[ing] a false, fragmentary image” by arguing
that the court should consider the house mark and the product mark separately in its analysis and
noting that “fragrance[s] [do not] bear[] a unitary mark”).
In rebuttal, Excell argues that the “Our Version Of” and “Not Associated With”
disclaimers on each of the allegedly infringing fragrances makes it “clear” that the company’s
products are not associated with Coty. (Def.’s Mem. 12). Significantly, however, Coty’s marks
are significantly more prominent and accentuated on Excell’s fragrances than both the
supposedly disclamatory language (“Our Version Of” and “Not Associated With”) and Excell’s
own marks. In similar circumstances, courts have held that disclaimers are not only ineffective,
but actually cut against the allegedly infringing party. See Cartier, Inc. v. Deziner Wholesale,
L.L.C., No. 98-CV-4947 (RLC), 2000 WL 347171, at *4 (S.D.N.Y. Apr. 3, 2000) (“Courts have
held that when a company packages its product in a wrapper that more centrally displays a
competitor’s name, or repeatedly mentions a competitor’s name, with the effect of making its
competitor’s mark the most dominant feature on the package, such packaging is likely to confuse
consumers about the product’s origin or affiliation.”); see Charles of the Ritz Group Ltd. v.
Quality King Distrib., 636 F. Supp. 433, 437 (S.D.N.Y. 1986) (Weinfeld, J.) (“The disclaimer on
the lower portion of the tab, which . . . is hidden from view when the tab is in place, suggests a
calculated effort by defendant to escape liability for infringement.”); Invicta Plastics Ltd. v.
Mego Corp., 523 F. Supp. 619, 623 (S.D.N.Y. 1981) (analyzing the defendant’s package with
repeated references to the plaintiff’s product and concluding that defendant “was deliberately
seeking to use the goodwill plaintiff has acquired in its success with [plaintiff’s product] to sell

25

its own product”). Based in part on evidence presented at trial — namely, Coty’s expert’s
surveys, discussed in detail below — the Court reaches the same conclusion here. Accordingly,
the second Polaroid factor cuts heavily in Coty’s favor.
c. Competitive Proximity of the Products and Bridging the Gap
The third and fourth Polaroid factors — the proximity of the products and likelihood that
the plaintiff will “bridge the gap” — weigh in Excell’s favor, but not as heavily as it seems to
believe. (Def.’s Mem. 7). To be sure, Coty’s products are generally sold at higher-end retailers
while Excell’s are (or were) sold at discount stores, and the companies’ products are generally
offered at different price points. (Id. 7-8). Nevertheless, these differences have “little or no
bearing on post-sale confusion as to the source of the goods.” Clinique, 945 F. Supp. at 554 ; see
also Gucci, 868 F. Supp. 2d at 248 (S.D.N.Y. 2012) (“[I]n the post-sale context, the target selling
market is of decreased importance, as the confusion that exists in the general viewing public is
what matters.”). Indeed, the fact that Excell and Coty’s products may be sold in different venues
has no effect on the possibility that “a potential purchaser, knowing that the public is likely to be
confused or deceived by the allegedly infringing product, will choose to purchase that product
instead of a genuine one in order to gain the same prestige at a lower price.” Gucci Am., Inc. v.
Guess?, Inc., 843 F. Supp. 2d 412, 418 (S.D.N.Y. 2012).
Additionally, although Excell is correct that Coty’s fragrances are generally sold in more
“upscale” establishments, Coty has presented evidence that the fragrance market is somewhat
fluid and that there are retailers and fora — both brick-and-mortar and online — that have
marketed both parties’ fragrances, including K-mart, CVS, Amazon, and eBay. (Conklin Direct
¶¶ 19, 25-26; Tuil-Torres Direct ¶¶ 31, 48 (noting that some of Coty’s fragrances are sold at CVS
and Kmart); Tr. 478 (testimony of Ferullo acknowledging Excell’s products were sold at Kmart);

26

Pls.’ Ex. 174 (listing CVS as a direct customer of Excell)). On top of that, Coty found that some
of its fragrances were diverted and sold at CVS and Dollar General, both of which sell Excell
products. (Conklin Direct ¶ 23, 28; Tr. 260 (testimony of Keegan noting that diverted goods can
be found “anytime a manufacturer/distributor has an intended channel for a product and that
product somehow ends up in a different channel.”)). In the case of Dollar General, that is hardly
surprising as discount stores often carry marked-down branded fragrances. (See Pls.’ Ex. 232;
Tr. 276 (testimony of Keegan noting that Dollar General carries branded fragrances)).
Meanwhile, Excell’s reliance on the price differences between the parties’ fragrances is
misguided for various reasons. As an initial matter, Coty and Excell are not retailers, and thus do
not control the ultimate prices of their products. (Rotter Direct ¶ 19; Ferullo Dep. 24).
Additionally, any price difference between products, like the differences between marketplaces,
has little or no bearing on the potential for post-sale confusion. Again, if anything, Excell’s
lower prices may increase the likelihood of consumers purchasing “the allegedly infringing
product, on the grounds that they can obtain the same prestige for less money.” Gucci Am., Inc.
v. Guess?, Inc., 831 F. Supp. 2d 723, 747 (S.D.N.Y. 2011). Excell’s price-point contention is
also largely immaterial to the “probability that potential purchasers would be misled into an
initial interest in” its products due to their similarity to Coty’s products. Mobil, 818 F.2d at 260.
Indeed, most purchasers of fragrances in a retail setting are likely to view the packaging before
checking the price label, which adds support to Coty’s claim of initial-interest confusion.
Finally, the price differences between the parties’ products is not nearly as significant as Excell
asserts. In 2016, for example, Coty recommended that retailers sell some of its flagship products
for prices ranging from $12.50 to $72. (See Rotter Direct ¶ 18; Tuil-Torres Direct ¶¶ 10-12).
Needless to say, the fact that the company marketed lower-priced fragrances blunts the force of

27

Excell’s pricing arguments. Cf. Charles of the Ritz, 832 F.2d at 1322 (noting that “some
question remains whether two distinct fragrance markets actually exist” and concluding that any
“barrier between the two is sufficiently porous to allow [the senior user] passage with little
difficulty”); Toni & Guy (USA) Ltd. v. Nature’s Therapy, Inc., No. 03-CV-2420 (RMB), 2006
WL 1153354, at *9 (S.D.N.Y. May 1, 2006) (“Plaintiff has presented no evidence that it is likely
to bridge the gap . . . by selling lower-priced products that would compete more directly with
Defendant’s products . . . ” (emphasis supplied) (internal quotation marks omitted)). In sum,
although Excell demonstrated that a separation exists between the market and price points for its
products and Coty’s products, the separation is not quite as stark as Excell would have it. Thus,
the third and fourth Polaroid factors — which look to the competitive proximity of the products
and “whether the two companies are likely to compete directly in the same market,” Charles of
the Ritz, 832 F.2d at 1322 — favor Excell, but only slightly.
d. Actual Confusion
The fifth factor, whether there is evidence of actual consumer confusion, weighs in
Coty’s favor. For one thing, because “evidence of intentional copying gives rise to a
presumption of actual confusion,” the burden is on Excell to demonstrate a lack of confusion,
which it failed to do. Gucci, 868 F. Supp. 2d at 240; see Mobil, 818 F.2d at 258 (“Intentional
copying gives rise to a presumption of a likelihood of confusion.”). For another, the record —
namely, survey evidence submitted by both sides — supports a finding of actual confusion.
To evaluate the validity and reliability of a survey, a court should consider whether:
(1) the proper universe was examined and the representative sample was drawn
from that universe; (2) the survey’s methodology and execution were in
accordance with generally accepted standards of objective procedure and statistics
in the field of such surveys; (3) the questions were leading or suggestive; (4) the
data gathered were accurately reported; and (5) persons conducting the survey
were recognized experts.

28

Gucci Am., Inc. v. Guess?, Inc., 831 F. Supp. 2d at 738. In general, surveys “demonstrating
confusion levels over 50% are almost always viewed by courts as persuasive evidence of likely
confusion”; in cases “[w]here other evidence is supportive, courts have found a likelihood of
confusion when survey results are between 10% and 20%.” 6 McCarthy on Trademarks and
Unfair Competition § 32:188 (4th ed.) (citing cases); see RJR Foods, Inc. v. White Rock Corp.,
603 F.2d 1058, 1061 (2d Cir. 1979) (affirming the district court’s reliance on the results of a
“consumer study showing a fifteen to twenty percent rate of product confusion”); Procter &
Gamble Co. v. Ultreo, Inc., 574 F. Supp. 2d 339, 345 (S.D.N.Y. 2008) (“Cases have held that
20% constitutes a substantial percentage of consumers.”).
Significantly, Excell’s own survey evidence supports a finding of likely customer
confusion in this case. According to Mark Keegan, Excell’s expert, 19.5% of respondents in an
Internet survey identified Calvin Klein as the source of Excell’s POSSESSION fragrance, and
15.1% identified Calvin Klein as the source of Excell’s SERENITY fragrance. (Keegan Direct
¶ 56). 7 On their face, those results are reasonably favorable to Coty. But there are several
reasons to believe that the actual likelihood of confusion is even higher. First, the universe of
participants in Keegan’s survey was limited to people who had recently shopped at a discount
store, flea market, rummage sale, or bazaar. (See Tr. 273-74). But Excell’s products are
marketed in a broader array of venues, including malls, department stores, pharmacies, and on
the Internet. Perhaps not coincidentally, the venues excluded from Keegan’s survey are the types
of venues where potential purchasers of Coty’s products are most likely to be found. Second, by
7

The Court notes that Keegan’s experience and qualifications have been questioned by
other courts. See Flushing Bank v. Green Dot Corp., 138 F. Supp. 3d 561, 582 (S.D.N.Y. 2015)
(“The Court does not find that Keegan’s background in surveys is sufficiently deep or tested to
provide a reliable basis for his criticisms.”). To the extent that Keegan’s opinions differed from
the opinions of Coty’s expert, that is another basis to credit the latter more heavily.

29

his own admission, Keegan’s survey was unsuitable for measurement of initial-interest and postsale confusion. (Tr. 339 (testimony of Keegan noting that his survey does not address initialinterest confusion and has “very little” relevance to post-sale confusion)). Third, the survey was
flawed because it prompted respondents to focus on Excell’s products in an unrealistic manner
and setting. Most notably, Excell’s boxes were displayed in a manner that allowed respondents
to see all faces of the packaging at once. (Id. Ex. 3; Def.’s Ex. ZZ). Finally, Keegan made
several coding errors — namely, by treating as “not confused” a number of respondents who
were plainly confused as to whether Excell’s fragrances were produced by Calvin Klein. (Pls.’
Ex. 256 (“Rappeport Direct”) ¶ 44 (identifying such responses including, “What a bargain for a
Calvin Klein product”; “It’s made by Calvin Klein, I like it”; and “Just the fact that it was made
by Calvin Klein is worth the $4.99”)). 8 After correcting for those errors and filtering out
“noise,” see, e.g., 6 McCarthy on Trademarks and Unfair Competition § 32:187 (4th ed.)
(explaining the concept of “noise”), Dr. Michael Rappeport, Coty’s expert, concluded that 25%
of the respondents in Keegan’s survey actually identified Calvin Klein as the source of Excell’s
POSSESSION fragrance and that 20% identified Calvin Klein as the source of Excell’s
SERENITY fragrance. (Rappeport Direct ¶ 47). In short, Keegan’s survey provides even
stronger evidence of confusion than might appear even at first glance. See Playtex Prods., LLC
v. Munchkin, Inc., No. 14-CV-1308 (RJS), 2016 WL 1276450, at *4 (S.D.N.Y. Mar. 29, 2016).

8

Excell argues that the Court should disregard Dr. Rappeport’s testimony concerning the
flaws in Keegan’s study on the ground that it included opinions that were not in his expert report.
(See Docket No. 140). In light of the fact that Dr. Rappeport’s direct testimony was disclosed to
Excell over a month and a half before he actually testified (see Docket No. 142, at 1), the Court
concludes that any violation was harmless. See Fed. R. Civ. P. 37(c)(1) (providing that a party
may not use information at trial if it failed to disclose the information as required by Rule 26,
“unless the failure was substantially justified or harmless”).

30

In any event, the Court concludes that the study conducted by Coty’s expert, Dr.
Rappeport, is more reliable than the study conducted by Keegan and firmly supports a finding of
likely customer confusion. Dr. Rappeport used the widely accepted Eveready survey format,
see, e.g., Akiro LLC v. House of Cheatham, Inc., 946 F. Supp. 2d 324, 339 (S.D.N.Y. 2013)
(describing the Eveready survey format and noting that it “is generally accepted and represents
the ‘gold standard’ for cases involving strong marks”), to conduct a consumer comparison survey
comparing Calvin Klein’s OBSESSION and ETERNITY packages to Excell’s POSESSION and
SERENITY packages in malls across the country. (Rappeport Direct ¶¶ 11, 14, 20).
Specifically, he examined a random selection of “people 18 years old and older who ha[d]
purchased a fragrance product for themselves, or for someone else, in the past six months” and
showed them versions of the Excell packages to determine if they were confused as to the
source. (Pls.’ Ex. 161-1, at 3-4). Notably, participants’ responses were “unaided,” in that neither
the participants nor the interviewers were exposed as part of the survey to the genuine Calvin
Klein OBSESSION or ETERNITY fragrances — or even to the name Calvin Klein. (See
Rappeport Direct ¶ 9). After filtering out the “noise,” Dr. Rappeport concluded that an average
of 54% of the respondents misidentified the source of Excell’s products as Calvin Klein. (Id.
¶¶ 9, 30-33).
Excell advances several arguments to undermine the reliability of Dr. Rappeport’s
survey. First, it contends that Dr. Rappeport erred by not excluding higher-end consumers to
ensure that respondents were actual or potential purchasers of Excell’s products. (Def.’s Mem.
9-10). That argument has some force. Where, as here, a junior user is alleged to be selling its
products as if they came from the senior user, “the relevant market consists of the consumers of
the junior user’s products.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994).

31

As discussed above, however, Coty’s and Excell’s markets are not quite as discrete as Excell
suggests. Moreover, it is not uncommon for higher-end fragrance companies, including Coty, to
create less expensive versions of their products — sometimes called “flankers” — for sale at
lower price points or in lower-end retail markets. (See, e.g., Singer Direct ¶¶ 30-32) (discussing
Coty’s use of “flankers” and “limited editions” to supplement its existing brands)). Cf. Lois
Sportswear, 799 F.2d at 874 (“Certainly a consumer observing [plaintiff’s] striking stitching
pattern on [defendants’] designer jeans might assume that [plaintiff] had chosen to enter that
market segment using a subsidiary corporation, or that [plaintiff] had allowed [defendants’]
designers to use [plaintiff’s] trademark as a means of reaping some profits from the designer
jeans fad without a full commitment to that market segment.”). Accordingly, although Dr.
Rappeport’s failure to exclude higher-end consumers does affect the weight to be given to his
survey results, it does not altogether strip them of probative value. See, e.g., Paco Sport, Ltd. v.
Paco Rabanne Parfums, 86 F. Supp. 2d 305, 322 (S.D.N.Y. 2000) (“The courts have held that to
be probative on the issue of actual confusion, a survey must rely on responses of prospective
purchasers of the products in question.”). 9
Next, Excell faults Dr. Rappeport for failing to provide respondents with relevant sales
channel and price information about the products they were asked to examine. (Def.’s Mem.
11). Once again, however, there is some overlap in the relevant sales channels. Additionally,

9

Excell’s other attacks on Dr. Rappeport’s sampling miss their mark. At trial, Keegan
criticized Dr. Rappeport’s study on the ground that it was “skew[ed]” in favor of “upscale”
malls. (Tr. 292). But many of the malls where Dr. Rappeport conducted his survey housed
discount stores of the sort where Excell’s fragrances were sold. (See Pls.’ Ex. 236 (highlighting
the presence of discount stores in most of the malls where Dr. Rappeport surveyed respondents)).
And while Excell questioned the decision to use the four census areas rather than the nine census
divisions to control for geographic variation (see Tr. 193), Dr. Rappeport persuasively testified
that the use of the census areas was sufficient here. (See Tr. 193-95).

32

sales channel and price information, while relevant to the proximity analysis above, is less
relevant to the basic question courts ask under this prong of the Polaroid test: whether the
defendant’s product confuses consumers as to its source. See Gucci, 868 F. Supp. 2d at 240.
(Notably, when asked at trial, Keegan was unable to cite a single survey, accepted by a court,
that included information regarding pricing and sourcing. (Tr. 267).) And it is altogether
irrelevant to Coty’s claim that Excell’s products cause initial-interest and post-sale confusion.
With respect to “initial-interest” confusion, a consumer might believe, at first glance, that one of
Excell’s fragrances is associated with one of Coty’s products, and “[m]otivated by this mistaken
notion — [Coty’s] goodwill — the consumer might then buy [Excell’s fragrance] even after
discovering his error.” Lois Sportswear, 799 F.2d at 874. And “to the extent that distinct
channels of trade between [the parties’] products exist, those channels have little or no bearing
on post-sale confusion.” Clinique, 945 F. Supp. at 554. A fortiori, the same would be true to the
extent products are sold at different prices.
Finally, Excell contends that Dr. Rappeport’s results are relevant only to the two
fragrances that he included in his study, OBSESSION and ETERNITY. (Def.’s Mem. 11). No
doubt, the surveys are more compelling with respect to the fragrances tested than they are with
respect to the other fragrances at issue in this litigation. Additionally, the survey itself provides
reason to believe that the levels of consumer confusion would vary among the fragrances. (See
Tr. 211 (testimony of Dr. Rappeport noting the 22% difference in confusion levels between the
two Excell products tested in his survey)). But Dr. Rappeport’s results are still relevant, albeit in
a more attenuated manner, to the other fragrances, given that they share “common and prominent
features” with the tested fragrances. adidas-Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp.
2d 1029, 1045 (D. Or. 2008) (“Where actually surveyed products and subsequently accused

33

products share common and prominent features, a trademark infringement plaintiff need not
create new likelihood of confusion surveys for each newly accused product.”). Specifically, each
of Excell’s products, including those that were included in the survey, adhere a specific pattern:
They and Coty’s fragrances have similar trade dresses and names (if not in sound, then in
association), and they include identical disclamatory legends that prominently feature Coty’s
house and fragrance marks. This is not by chance; as discussed above, they were all produced to
mimic Coty’s fragrances. Thus, the Court finds Dr. Rappeport’s survey to be circumstantial
evidence that each of Excell’s fragrances at issue here is likely to cause at least some level of
confusion as to source in the minds of fragrance shoppers.
To be sure, Coty did not present any “actual evidence” of confusion, which is typically
“considered a very significant deficiency” for a product that has been on the market for several
years. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 419 (S.D.N.Y.
2002) (internal quotation marks omitted). 10 But four considerations mitigate the significance of

10

Coty’s Senior Vice President and Global Deputy General Counsel, Joseph Conklin, did
attempt to offer one potential instance of actual confusion:
By way of explanation, Coty has a fragrance named Love Story in
its Chloé line, and Defendant also offers a Diamond Collection
fragrance named Love Story, its version of Lovestruck by Vera
Wang (which was one of the infringing fragrances at issue). Our
consumer inquiry log quotes the following verbatim statement
from the caller: “I bought a bottle of Love Story, I want to know if
it is counterfeit? The fragrance does not last.” While our
Consumer Affairs representative assumed this was a call about our
Chloé Love Story fragrance, the verbatim from the caller does not
mention Chloé so the caller may have been complaining about
Defendant’s Love Story fragrance. We simply do not know.
(Conklin Direct ¶ 41). Putting aside hearsay issues, that is no evidence of actual confusion,
given Coty’s own uncertainty about the nature of the customer’s confusion. Additionally, Chloé
Love Story is not one of the fragrances at issue in this litigation.

34

that deficiency here. First, Coty’s ability to obtain evidence of actual confusion was limited
because all of Excell’s long-time employees invoked the Fifth Amendment in response to Coty’s
questioning on the matter. (See, e.g., Bronsnick Dep. Resp. 37, 43; Rodriguez Dep. 29-53;
Hamerling Dep. 40-45). That may or may not call for drawing an adverse inference against
Excell, but it would certainly be unfair, under the circumstances, to hold the absence of evidence
against Coty. See, e.g., Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 98 (2d Cir.
2012) (noting that where a company’s employees “assert[] the privilege against selfincrimination[, it] must bear the consequence of lack of evidence”). Second, Coty and Excell are
manufacturers and distributors of fragrances, not retailers, and thus less likely to hear directly
from a duped consumer. (See Conklin Direct ¶ 42). Third, common sense dictates that
consumers are less likely to take the time to complain where, as here, the allegedly infringing
product is relatively inexpensive. And finally, the fact that both Coty’s and Excell’s surveys
indicated a likelihood of confusion speaks volumes even in the absence of actual confusion
evidence. Accordingly, “the combination of visual inspection and empirical evidence suffices to
find ‘actual confusion’ in this case.” Charles of the Ritz, 832 F.2d at 1322; Centaur Commc’ns,
Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987) (not requiring evidence of
actual confusion as a prerequisite to recovery); Lois Sportswear, 799 F.2d at 875 (“While the
complete absence of actual confusion evidence after a significant period of competition may
weigh in a defendant’s favor, such an inference is unjustified in the instant case in view of the
survey evidence, even with its methodological defects.” (citation omitted)).
e. Defendant’s Intent/Bad Faith
The sixth Polaroid factor (and, as noted, an element of Coty’s claim for unfair
competition under New York law) is bad faith, which concerns “whether the defendant adopted

35

its mark with the intention of capitalizing on plaintiff’s reputation and goodwill and any
confusion between his and the senior user’s product.” Lang v. Ret. Living Publ’g Co., Inc., 949
F.2d 576, 583 (2d Cir. 1991). In this case, the record is replete with evidence of bad faith. For
one thing, Excell’s business model involved little more than “capitalizing on plaintiff’s
reputation and goodwill.” Lang, 949 F.2d at 583. Indeed, in determining which fragrances to
emulate, Excell purposefully “looked to fragrances that [its] customer base would understand”
— that is, fragrances with brands that had already been established in the marketplace. (Def.’s
Ex. HHHH (“Ferullo Direct”) ¶ 5). But Excell did not stop there; it then meticulously mimicked
the external trappings of those fragrances and used Coty’s protected marks on its packaging in a
way that, even with the disclamatory language, could only have been calculated to capitalize on
Coty’s goodwill. Notably, all along, Excell knew that its business model was problematic.
Indeed, the company adhered to its business model in the face of a slew of complaints from
third-party brand owners, which also helps swing this factor in Coty’s direction. (Def.’s Mem.
36-37; see, e.g., Tr. 366 (testimony of Pfau noting a lawsuit brought by Nicole Polizzi,
professionally known as “Snooki,” against Excell in connection with its alternative to her
fragrance); Bronsnick Dep. Resp. 105 (invoking the Fifth Amendment in response to a question
regarding Victoria’s Secret’s demand that Excell cease production of allegedly infringing
fragrances)).
On top of that, Excell adopted its business model shortly after MD Distributors, a
company that used to employ various Excell employees, entered a Consent Judgment with
Calvin Klein and other fragrance producers. (Def.’s Mem. 2). The Consent Judgment enjoined
MD Distributors, and its “officers, agents, servants, representatives, [and] employees,” from
selling “Prohibited Product,” a defined term that explicitly covered infringing alternatives to

36

Calvin Klein fragrances. (Pls.’ Ex. 156-2, at Sections 1.19, 3.1). Only one week after the
Consent Judgement was signed, Wayne Hamerling founded Excell. (Def.’s Mem. 2). Not
surprisingly, Excell contends that the Consent Judgement cuts the other way, on the ground that
Calvin Klein “effectively consented to the use of the ‘Our Version’ phrase to describe
alternatives to their fragrances.” (Def.’s Mem. 1). But that contention fails for at least three
reasons. First, the MD Distributor case involved a different set of parties (except for Calvin
Klein) and different fragrances. (Pls.’ Ex. 156-2). Second, if that were not the case, Excell’s
products here would plainly qualify as “Prohibited Product[s]” within the meaning of the
Consent Judgment. 11 And third, contrary to Excell’s assertions, the Consent Judgment did not
authorize MD Distributors — let alone non-parties such as Excell — to indiscriminately sell
“Our Version Of” fragrances. Instead, it merely reserved the parties’ rights with respect to
fragrances containing the “Our Version Of” legend that are not “unlawful under the Lanham
Act” and that are not “Counterfeit” or “Knock-Off” products. (See Pls.’ Ex. 156-2, § 3.2).
In arguing against a finding of bad faith, Excell notes that “[t]here is a vast difference
between the intent to compete by imitating the successful features of another’s product and the
intent to deceive purchasers as to the source of the product.” (Def. Mem. 12 (internal quotation
marks and brackets omitted)). That is undoubtedly true, but Excell’s intent falls squarely in the
latter category. The company’s intent to deceive can be inferred from the remarkable similarities
11

Section 3.1 of the Consent Judgement expressly enjoined the sale of “Prohibited
Product,” a term defined in Paragraph 1.19 to include “Counterfeit” and “Knock-Off” fragrances.
Paragraph 1.16 defined “Counterfeit” fragrances to include “any Fragrance Product bearing a
spurious mark which is identical to, or substantially indistinguishable from, any of the . . .
CALVIN KLEIN Marks.” Notably, Paragraph 1.16 also adopted the definition of “counterfeit”
set forth in the Lanham Act, 15 U.S.C. § 1127. Paragraph 1.17 defined a “Knock-Off” fragrance
as “any Fragrance Product bearing marks that colorably imitate or are confusingly similar to . . .
the CALVIN KLEIN Marks, or copy . . . Calvin Klein’s . . . trade dress to a degree likely to
cause confusion, or to cause mistake, or to deceive.”

37

between the fragrances’ trade dresses, the prominent use of Coty’s legends on Excell’s products,
and the uncanny resemblance between the fragrance names chosen by Excell and Coty’s
products. Instead of “imitating the successful features of [Coty’s] product,” Excell imitates
Coty’s marks and trade dresses to confuse purchasers as to source and to sell its inferior quality
fragrances. (See Section B.2.f). In any event, even without the formidable evidence of Excell’s
intent to deceive, an intent to copy “creates a presumption of an intent to deceive, unless there is
evidence to the contrary.” Gucci, 843 F. Supp. 2d at 419. “Where,” as here, “the copier
references the prior dress in establishing her design with the apparent aim of securing the
customers of the other based on confusion, intentional copying may be found.” Paddington, 996
F.2d at 587. Accordingly, the Court finds that Coty has proved bad faith on the part of Excell.
f. Quality of Excell’s Products
The seventh Polaroid factor — the quality of Excell’s products — also indisputably
favors Coty. By its own admission, Excell’s products were designed to be sold at low prices and
it thus uses cheaper ingredients in its fragrances. For example, Excell uses less expensive,
synthetic oils, rather than the natural oils used in Coty’s fragrances, and it employs less
expensive packaging components than Coty does. (Ferullo Dep. 197-98, 227). Cf. Zino
Davidoff SA v. CVS Corp., No. 06-CV-15332 (KMK), 2007 WL 1933932, at *5 (S.D.N.Y. July
2, 2007) (approvingly citing the plaintiff’s expert, who found that “imperfect packaging,” among
other deficiencies, is likely to “lower[ the fragrance producer’s] brand equity”). Not
surprisingly, therefore, Excell’s fragrances do not smell the same as Coty’s perfumes and
colognes. (Pls. Ex.’ 254 (“Massaro Direct”) ¶ 7)). 12 Additionally, in contrast to Coty’s

12

Excell moved in advance of trial to exclude the testimony of Ralph Massaro on the
ground that Coty failed to comply with the disclosure requirements for expert testimony in Rule

38

fragrances, many of Excell’s Diamond Collection products were found to contain DEHP, a
potential carcinogen. (Massaro Direct ¶ 9-10 (noting that twelve of the fifteen Excell fragrances
tested by Coty’s Technical Perfumer contained more than 100 ppm of DEHP)). Notably, while
Coty spends significant time, energy, and money researching, testing, and crafting its fragrance
juices, Excell’s process is cursory and largely outsourced to its suppliers in India. (Ferullo Dep.
180-81). The lack of any meaningful quality assurance program at Excell only underscores the
quality differential between the parties’ products. (Hamerling Dep. 34 (invoking the Fifth
Amendment in response to a question regarding Excell’s lack of quality controls for its
fragrances)). Accordingly, the Court finds that the “inferior quality” of Excell’s goods could
“jeopardize[]” Coty’s reputation. Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 398 (2d
Cir. 1995).
g. Sophistication of Consumers
The eighth and final Polaroid factor is the “sophistication of the consumers and the
degree of care likely to [be] exercised in purchasing the product.” Tommy Hilfiger, 221 F. Supp.
2d at 420. Excell rightly points out that “Plaintiff’s goods are highly priced and sold in high
quality stores.” (Def.’s Mem. 13). But while “[t]he substantial price” of Coty’s fragrances
“requires buyers to exercise care before they part with their money,” and while “such
sophistication generally militates against a finding of a likelihood of confusion,” Charles of the
Ritz, 832 F.2d at 1323, “even sophisticated buyers are not always careful buyers, and their very

26(a)(2) of the Federal Rules of Civil Procedure. (Docket No. 90). Upon review of the parties’
briefing, that motion is denied. To the extent that Massaro qualified as an expert witness, he was
a non-retained expert and Coty effectively satisfied its disclosures obligations under Rule
26(a)(2)(C). (See Docket No. 107, at 16-17). In the alternative, the Court finds that preclusion
would be an unduly harsh remedy given the pretrial disclosure of Massaro’s direct testimony and
the absence of any identifiable prejudice. (See id. at 17-19).

39

awareness of status brand names and designs may make them more vulnerable to confusion,”
Krueger Int’l v. Nightingale Inc., 915 F. Supp. 595, 611 (S.D.N.Y. 1996) (Sotomayor, J.).
Moreover, if the parties’ products and marks are very similar, as they are here, “the
sophistication of buyers is less likely to prevent confusion.” Clinique, 945 F. Supp. at 556.
Additionally, it could be argued that Excell’s target demographic, “lower income, sometimes
ethnic customers” (Stipulated Facts ¶ 38), is likely to be less sophisticated about the differences
between and among fragrances and more easily confused upon seeing Excell’s cheaper
knockoffs. See, e.g., Bath & Body Works Brand Mgmt., Inc. v. Summit Entm’t, LLC, 7 F. Supp.
3d 385, 398 (S.D.N.Y. 2014) (“Where the goods are inexpensive, the reasonably prudent buyer is
less likely to exercise careful consideration when making purchases.”). Balancing these
considerations, the final Polaroid factor is a draw.
h. Weighing the Factors
Considering all eight Polaroid factors and “looking at the products in their totality,” the
Court concludes that consumers are likely to be confused by Excell’s knockoff fragrances. Star
Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005). To be sure, the Polaroid inquiry
is not a mere “mechanical counting exercise.” Bath & Body Works, 7 F. Supp. 3d at 399. But
five of the eight factors weigh in Coty’s favor. Moreover, while none of the factors strongly
favors Excell, several (namely, the first, second, fifth, sixth, and seventh factors) weigh heavily
in favor of Coty. That is not to say that each of Excell’s fragrances produces the same level of
likely confusion. To the contrary, as detailed above, some fragrances look and sound more like
their counterparts than others. But the Court finds that even those fragrances on the lessinfringing side of the “similarity spectrum” are likely to result in a meaningful level of
confusion. And, of course, all of the fragrances contain Excell’s supposedly disclamatory

40

legends (“Our Version Of” and “Not Associated With”) with their overshadowing replicas of
Coty’s marks.
3. Nominative Fair Use
One final matter remains. Excell claims that its use of Coty’s house and product marks is
protected by the doctrine of “nominative fair use.” (Def.’s Mem. 14). 13 Nominative fair use
“involves [the defendant] using the mark at issue as a mark to specifically invoke the markholder’s mark, rather than [using it] other than as a mark, to describe the alleged infringer’s
goods or services.” Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823
F.3d 153, 167 (2d Cir. 2016). Notably, the Second Circuit recently held that “nominative fair
use is not an affirmative defense to a[ trademark] infringement claim.” Id. at 168. Instead,
recognizing that the Polaroid factors are a “bad fit” in nominative fair use cases, the Circuit held
that a district court considering a claim of nominative fair should consider three factors in
addition to the standard Polaroid factors, to wit:
(1) whether the use of the plaintiff’s mark is necessary to describe both the
plaintiff’s product or service and the defendant’s product or service, that is,
whether the product or service is not readily identifiable without use of the mark;
(2) whether the defendant uses only so much of the plaintiff’s mark as is
necessary to identify the product or service; and (3) whether the defendant did
anything that would, in conjunction with the mark, suggest sponsorship or
endorsement by the plaintiff holder, that is, whether the defendant's conduct or
language reflects the true or accurate relationship between plaintiff's and
defendant's products or services.
Id.

13

Although not alleged by Excell here, there is another form of fair use — descriptive fair
use — that “involves the principle that the public’s right to use language and imagery for
descriptive purposes is not defeated by the claims of a trademark owner to exclusivity.” CarFreshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 268 (2d Cir. 1995).

41

Applying those standards here, Excell’s nominative fair use argument misses the mark.
First, as noted above, the Polaroid factors are firmly on the side of Coty. Second, as the Court’s
discussion of the second Polaroid factor made clear, the manner in which Excell displays Coty’s
source identifiers belies its argument that it is merely using the marks to inform consumers that it
is not the manufacturer of the original fragrance. Excell’s fair use argument would be on firmer
ground if it sold its fragrances in generic bottles and cartons, picked fragrance names that were
unrelated to any of Coty’s, included its disclaimers without prominently displaying Coty’s
typesetting or marks, and marketed its own brand on the packaging in a noticeable manner. But
it did none of that. Instead, Excell sought to mirror Coty’s fragrances’ appearance in nearly
every way possible, it chose product names that mimicked or evoked the names of Coty’s
fragrances, it prominently displayed Coty’s house and fragrance marks under the guise of its
“Our Version Of” and “Not Associated With” legends, and it hid its own brand name on top of
the box where consumers were unlikely to see it. Cf. Smith v. Chanel, Inc., 402 F.2d 562, 563
(9th Cir. 1968) (finding permissible fair use where the defendant reproduced Chanel’s
unpatented fragrance (which Chanel stipulated was an exact copy) and then used Chanel’s mark
(in addition to its own mark) solely to identify the copied fragrance). In so doing, Excell has
impermissibly signaled a “relationship between [its own] and [Coty’s]” fragrances that is nonexistent. Int’l Info., 823 F.3d at 168. Accordingly, its fair use argument fails.
Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010), upon which Excell relies
(Def. Mem. 7, 14-15, 32), is distinguishable. In that case, the Second Circuit confronted the
question of whether eBay’s use of Tiffany’s mark on its website and in sponsored links was
lawful. In finding permissible fair use, the Court emphasized that “eBay used the [Tiffany] mark
to describe accurately the genuine Tiffany goods offered for sale on its website. And none of

42

eBay’s uses of the mark suggested that Tiffany affiliated itself with eBay or endorsed the sale of
its products through eBay’s website.” Id. at 103. Here, by contrast, Excell’s use of Coty’s marks
and trade dresses invites confusion, at best, and implies direct affiliation, at worst. In the same
vein, Excell cites Neutrik AG v. Switchcraft, Inc., No. 99-CV-11931 (JSM), 2001 WL 286722, at
*3 (S.D.N.Y. Mar. 23, 2001), for the proposition that “using another’s trademark for the purpose
of describing an aspect of a party’s own product or to indicate that their product is a legitimate
copy of another’s is fair use.” (Def. Mem. 14 (internal quotation marks omitted)). But, as
discussed above, Excell did not merely use Coty’s marks and trade dresses to describe its own
fragrances. And Excell’s products cannot be described as “legitimate cop[ies]” of Coty’s
fragrances. (Ferrullo Dep. 107 (“[Excell is] not offering a version of the original [fragrance].”).
Accordingly, Excell’s fair use argument fails and Coty prevails on its trademark infringement
claims under both federal and New York law.
C. Trademark Dilution
Next, the Court turns to Coty’s trademark dilution claims under the Lanham Act, 15
U.S.C. § 1125(c), and New York General Business Law § 360-l. Coty alleges federal trademark
dilution with respect to its registered Calvin Klein, Vera Wang, and Lady Gaga marks, and
dilution under New York law for Excell’s use of its remaining marks. (Pls.’ Mem. 18). The
Court will address the two types of trademark dilution — dilution by blurring and dilution by
tarnishment — in turn.
1. Dilution by Blurring
Dilution by blurring refers to the gradual diminishment of a famous mark’s acquired
“ability to clearly and unmistakably distinguish one source through unauthorized use.” Hormel
Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir. 1996) (internal quotation

43

marks and ellipses omitted); see also Allied Maint. Corp. v. Allied Mech. Trades, Inc., 369
N.E.2d 1162, 1166 (N.Y. 1977) (observing that New York law protects against the “gradual
whittling away of a firm’s distinctive trade-mark or name”). Put differently, “dilution occurs
when the unauthorized use of a famous mark reduces the public’s perception that the mark
signifies something unique, singular, or particular.” H.R. Rep. No. 109-23, at 4 (2005), as
reprinted in 2006 U.S.C.C.A.N. 1091, 1092; see also Louis Vuitton, 156 F. Supp. 3d at 433.
Classic examples of dilution by blurring include “hypothetical anomalies as Dupont shoes, Buick
aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.” Starbucks Corp. v.
Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 105 (2d Cir. 2009).
“Only a famous mark — one that is widely recognized by the national consuming public
as a designation of source — is afforded protection against blurring under the Lanham Act.”
Gucci, 868 F. Supp. 2d at 241. “After a showing of fame is made,” a plaintiff must then show
the following to succeed on a dilution-by-blurring claim: “(1) that [the defendant] has been using
the allegedly diluting designs in commerce; (2) that [the defendant’s] use of those designs began
after each of [the plaintiff’s] marks became famous; and (3) [the defendant’s] use is likely to
cause dilution of the authentic [plaintiff’s] mark by blurring.” Id. New York law is similar, but
does not require proof that the plaintiff’s mark is famous, only that it is “truly distinctive or has
acquired secondary meaning” and that there is a likelihood of dilution. Strange Music, Inc. v.
Strange Music, Inc., 326 F. Supp. 2d 481, 496 (S.D.N.Y. 2004).
In assessing whether dilution by blurring is likely to occur under federal law, a court
“may consider all relevant factors,” including the following six statutorily enumerated factors:
(1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree
of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of

44

the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of
recognition of the famous mark; (5) whether the user of the mark or trade name intended to
create an association with the famous mark; and (6) any actual association between the mark or
trade name and the famous mark. See 15 U.S.C. § 1125(c)(2)(B). “The analysis, however, must
ultimately focus on whether an association, arising from the similarity between the subject
marks, impairs the distinctiveness of the famous mark — that is, the ability of the famous mark
to serve as a unique identifier.” Louis Vuitton, 156 F. Supp. 3d at 434 (internal quotation marks
omitted). Under New York law, courts look to a similar set of factors: “(i) the similarity of the
marks; (ii) the similarity of the products covered; (iii) the sophistication of the consumers;
(iv) the existence of predatory intent; (v) the renown of the senior mark; and (vi) the renown of
the junior mark.” N.Y. Stock Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550, 558 (2d Cir.
2002). But again, those factors are only guideposts: The ultimate question under New York law
is whether there is a likelihood that the capacity of the senior owner’s mark “to serve as a unique
identifier of its source” will be diminished. Louis Vuitton Malletier v. Dooney & Bourke, Inc.,
561 F. Supp. 2d 368, 393 (S.D.N.Y. 2008).
Applying the foregoing standards here, the Court concludes that Excell has diluted Coty’s
marks. 14 First, with respect to Coty’s federal claims, there is no real dispute that Coty’s Calvin

14

At first blush, the antidilution statute — the primary purpose of which “is to protect the
owners of famous marks from . . . dilution . . . in an unrelated area of commerce,” TCPIP
Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 95 (2d Cir. 2001) — is an awkward fit for
Coty’s claims, as both parties sell perfumes and colognes. See 4 McCarthy on Trademarks and
Unfair Competition § 24:105 (4th ed.) (“The legal theory of antidilution was conceived to protect
strong marks against a diluting use by a junior users in a product or service line far removed
from that in which the famous mark appears . . . . Thus, using the antidilution law when the
parties are selling their products in the same niche market sounds a dissonant and false note.”).
Nevertheless, the Second Circuit has made clear that “[w]hile the antidilution statutes aim at a
different harm than the infringement statute and dilution undoubtedly can occur among non-

45

Klein, Vera Wang, and Lady Gaga marks are famous and distinctive. (See Def.’s Mem. 6
(“Excell does not contest that Calvin Klein and Vera Wang are two of the most influential and
highly visible fashion houses in the world and that Lady Gaga is one of the most successful and
highly visible entertainment and recording artists in the world.” (internal quotation marks
omitted))). Additionally, the federal statutory factors weigh in Coty’s favor. For example, the
first, second, and fourth factors — the similarity between the marks as well as the distinctiveness
and degree of recognition of the plaintiff’s mark — favor Coty, given that Excell is using nearly
exact replicas of Coty’s highly distinctive and recognizable marks on its packaging. The third
factor also falls on Coty’s side of the scale because, Excell’s infringing products aside, there is
no dispute that Coty has not engaged in substantially exclusive use of its marks. So too, the fifth
factor swings strongly against Excell, as it deliberately sought to create an association with
Coty’s marks. (Def.’s Mem. 30 (“Excell chose its marks to create an association with Plaintiffs’
marks.”)). And lastly, the sixth factor is firmly in Coty’s corner because Excell’s products have
no “actual association” with Coty’s Calvin Klein, Vera Wang, and Lady Gaga marks. 15
Accordingly, Coty has demonstrated that Excell’s “versions” of the Calvin Klein, Vera Wang,
and Lady Gaga fragrances at issue here are likely to blur Coty’s marks’ “ability to clearly and
unmistakably distinguish one source” as unique identifiers. Hormel Foods, 73 F.3d at 506
(internal quotation marks and ellipses omitted).

competing products, we see no reason why dilution cannot occur as well where the products are
competing.” Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 219 (2d Cir. 1999), abrogated on
other grounds by Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003); see also Louis
Vuitton Malletier, 561 F. Supp. 2d at 379 (“Dilution ordinarily applies where the parties do not
operate in competitive or closely related product lines, but the FTDA ‘on its face is capable of
application to competitive situations.’”).
15

Once again, Excell raises a fair use argument in response to Coty’s dilution claims.
(Def.’s Mem. 32-33). For the reasons stated above, however, it fails. See Section B.3.

46

Coty seeks protection for the remainder of its marks only under New York law, which
merely requires that the marks be distinctive or have acquired secondary meaning. (Pls.’ Mem.
18 n.21). As discussed above, see supra Section B.1, Coty’s marks easily meet that standard
(most concededly so). (See Def.’s Mem. 6, 29). And once again, the relevant factors favor Coty.
Indeed, the “first five factors of the blurring test are similar to the Polaroid factors,” which the
Court has found to favor Coty. Balady, Inc. v. Elhindi, No. 14-CV-855 (SJ) (RER), 2014 WL
7342867, at *9 (E.D.N.Y. Dec. 23, 2014); see, e.g., N.Y. Stock Exch., 293 F.3d at 558 (listing the
factors as follows: “(i) the similarity of the marks; (ii) the similarity of the products covered; (iii)
the sophistication of the consumers; (iv) the existence of predatory intent; (v) the renown of the
senior mark; and (vi) the renown of the junior mark.”); Tiffany, 576 F. Supp. 2d at 523 (noting
that because “New York’s anti-dilution law is substantively similar” to federal law, claims under
the two laws “may be analyzed together”). In fact, there is only one factor — the final one, “the
renown of the junior mark” — that the Court has yet to analyze. N.Y. Stock Exch., 293 F.3d at
558. In this case, it is undisputed that Excell’s marks are obscure. Even Excell’s own expert
acknowledged that the company brand has no recognition and that the company conducts no
marketing. (Def.’s Ex. FFF (“Keegan Direct”) ¶ 15). Accordingly, Coty has established the
elements necessary to prevail on its claims of trademark dilution under both federal and state
law.
2. Dilution by Tarnishment
Under federal and New York law, a trademark owner can also pursue a claim of dilution
by tarnishment. A claim of dilution by tarnishment “arises when the plaintiff’s trademark is
linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context
likely to evoke unflattering thoughts about the owner’s product.” Deere & Co. v. MTD Prods.,

47

Inc., 41 F.3d 39, 43 (2d Cir. 1994). “The sine qua non of tarnishment is a finding that plaintiff’s
mark will suffer negative associations through defendant’s use.” Hormel Foods, 73 F.3d at 507.
Here, Excell uses inferior oils, employs cheaper packaging components, lacks any quality
assurance program, and produces fragrances with potentially harmful ingredients. (Ferullo Dep.
180-81, 197-98, 227; Massaro Direct ¶¶ 7, 9-10). Coty’s marks are thus “linked to products of
shoddy quality,” and the company has established a claim of dilution by tarnishment. Cf. Tommy
Hilfiger, 221 F. Supp. 2d at 422 (finding a lack of tarnishment when the plaintiff “submitted no
evidence on whether there is a disparity in quality between its own fragrance and the [infringing
product]”); Clinique, 945 F. Supp. at 555, 562 (finding no tarnishment or shoddiness when the
plaintiff did not “present[] evidence of the [defendant’s] products’ inferior quality”). 16
D. False Advertising
Finally, Coty argues that Excell’s “Our Version Of” legend constitutes false advertising.
(Pls.’ Mem. 20). To establish a false advertising claim under Section 43(a) of the Lanham Act, a
plaintiff must prove five elements: “1) the defendant has made a false or misleading statement;
2) the false or misleading statement has actually deceived or has the capacity to deceive a
substantial portion of the intended audience; 3) the deception is material in that it is likely to
influence purchasing decisions; 4) there is a likelihood of injury to [the] plaintiff, such as
declining sales or loss of goodwill; and 5) the goods traveled in interstate commerce.” Johnson
& Johnson Vision Care, Inc. v. CIBA Vision Corp., 348 F. Supp. 2d 165, 177-78 (S.D.N.Y.
2004). A false advertising claim may be based on either of two theories: “that (1) the advertising
16

Coty arguably faces a risk of tarnishment as well because of the ongoing criminal case
against several Excell executives and employees in the District of New Jersey. (See Bronsnick
Dep. Resp. 73; Pls.’ Ex. 171). That said, based on the existing record, there is no reason to
believe that the average consumer would know about the criminal charges, let alone link them to
Coty.

48

is literally false as a factual matter, or (2) although the advertisement is literally true, it is likely
to deceive or confuse customers.” Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 255 (2d
Cir. 2014). In cases of literal falsity, “the court may enjoin the use of the claim without
reference to the advertisement’s impact on the buying public.” Tiffany, 600 F.3d at 112. By
contrast, in cases “where the statement at issue is not literally false, . . . a plaintiff must
demonstrate, by extrinsic evidence, that the challenged commercials tend to mislead or confuse
consumers, and must demonstrate that a statistically significant part of the commercial audience
holds the false belief allegedly communicated by the challenged advertisement.” Id. at 112-13
(internal quotation marks omitted).
Here, the Court need not decide whether the words “Our Version Of” are literally false,
as Coty has established that they are “likely to deceive or confuse customers.” Merck, 760 F.3d
at 255. Although the words (considered on their own, without the more prominent Coty marks to
which they are attached) indicate that Excell’s and Coty’s products have a different provenance,
they also imply that the products are similar, if not equivalent. This duality — of both contrast
and equivalence — is inherent in the term “version,” which is defined as “a form, variant,
species, or copy of a type or original.” Webster’s Third New International Dictionary 2545
(2002). But Excell indisputably does not produce fragrances of a similar quality to those of
Coty; nor does it produce anything that could reasonably be called a “version” of Coty’s
products. (See Section B.2.f). Indeed, Excell’s own Rule 30(b)(6) witness admitted as much.
(Ferrullo Dep. 107 (“[Excell is] not offering a version of the original [fragrance].”)). The only
similarities between the two companies’ products are the fact that they are fragrances and the
uncanny and impermissible resemblances between Excell’s bottles and packaging and Coty’s.
Viewing the words “Our Version Of” in context — that is, with the infringing house marks,

49

fragrance marks, and trade dress — only reinforces that they were intended to connote (a false)
equivalency. See, e.g., Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 148 (2d Cir.
2007) (noting that an advertisement is false by necessary implication if “the words or images,
considered in context, necessarily and unambiguously imply a false message”); Nutrition &
Fitness, Inc. v. Mark Nutritionals, Inc., 202 F. Supp. 2d 431, 436 (M.D.N.C. 2002)
(“Additionally, the Court notes that Defendant alleges that Plaintiff’s [“Compare to”] label uses
Body Solutions’ actual mark, trade dress and logo, which could further increase the potential for
the statement to mislead.”).
Coty has also produced “extrinsic evidence[] that the challenged [words] tend to mislead
or confuse consumers.” Tiffany, 600 F.3d at 112-13. Specifically, Dr. Rappeport conducted a
second survey to test whether consumers viewing the “Our Version Of” legend on Excell’s
packaging were likely to construe it to mean that a product was the same as, or different from, its
Coty counterpart with respect to formula and the longevity of scent. (Rappeport Direct ¶¶ 34-35,
Pls’. Ex. 161-1, at 2). After filtering out “noise,” Dr. Rappeport found that 20% of respondents
believed the legend communicated the message that Excell’s fragrances were substantially
equivalent to Coty’s Fragrances on both dimensions. (Rappeport Direct ¶ 42). That percentage
“constitutes a substantial percentage of consumers.” Playtex, 2016 WL 1276450, at *4.
Once again, Excell protests that Dr. Rappeport’s study is flawed, this time on the ground
that the survey asked “closed-ended questions of whether the two fragrances were ‘the same or
different,’ rather than giving respondents the option to indicate that the products were ‘similar.’”
(Def.’s Mem. 25). But the questions in Dr. Rappeport’s survey were not closed-ended in the
traditional sense. Instead, participants were asked a series of open-ended questions, including,
“does the wording on these two products communicate or imply anything to you” about whether

50

certain qualities of the products “are the same or different?” (Pls. Ex. 161-1, at 10-11).
Participants then responded using their own language — not just “the same” or “different” —
and explained what the wording communicated to them. (Rappeport Direct ¶ 35). Additionally,
although Excell is correct that “closed-ended questions” are generally disfavored, surveys crafted
to test comparative advertising claims sometimes call for a more defined option set. See, e.g.,
Procter & Gamble Pharm., Inc. v. Hoffmann-LaRoche Inc., No. 06-CV-0034 (PAC), 2006 WL
2588002, at *22 (S.D.N.Y. Sept. 6, 2006) (finding that it was “not inappropriate for [Dr.
Rappeport] to formulate proper, closed-ended questions in order to assess whether [the
defendant’s] TV ads communicated the messages [the plaintiff] complains of, i.e., messages that
concern secondary, complex, and implicitly comparative claims”). 17
Finally, Coty established the remaining three elements of a false advertising claim. First,
consumers in the fragrance market undoubtedly care about the quality and longevity of their
perfume or cologne, so it is fair to say that Excell’s “deception is material in that it is likely to
influence purchasing decisions.” Johnson, 348 F. Supp. 2d at 178. Second, because “a false
comparison to a specific competing product necessarily diminishes that product’s value in the
minds of the consumer,” no proof of likely injury is necessary in cases of this sort. Time
Warner, 497 F.3d at 162 (internal quotation marks omitted). And third, there is and can be no

17

Notably, the survey conducted by Keegan, Excell’s expert, was as “closed-ended” as Dr.
Rappeport’s study; it merely included a third option, “similar.” (Keegan Direct ¶ 59). Separate
and apart from that, the Court agrees with Dr. Rappeport that including “similar” does not add
clarity, as the category is merely a logical subset of “different.” (Rappeport Direct ¶ 36). In any
event, given the significant differences between the companies’ fragrances, Keegan’s finding
that “[a]pproximately two-thirds of consumers view[ed] the Excell and Calvin Klein products to
be ‘similar’” only strengthens the conclusion that Excell’s legends are false. (Keegan Direct
¶ 58).

51

dispute that the goods at issue traveled in interstate commerce. See Johnson, 348 F. Supp. 2d at
178. Accordingly, the Court finds that Excell has engaged in false advertising.
E. Relief
Having found that Coty established various violations of its rights under federal and New
York law, the Court turns to the question of relief. Coty requests both injunctive and monetary
relief. With respect to the former, Coty seeks an injunction barring Excell and Excell’s
principals from resuming their infringing activities in the future. (Docket No. 146 (“Pls.’ PostTrial Mem.”), at 2)). As to the latter, Coty asks for an accounting of Excell’s profits pursuant to
Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a); and enhanced monetary awards pursuant
to Section 35(b) of the Lanham Act, 15 U.S.C. § 1117(b). (Pls.’ Post-Trial Mem. 11, 14-15).
Coty also seeks an award of interest, including pre-judgment interest, on the foregoing amounts;
as well as recovery of its costs, including reasonable attorneys’ fees and expenses, pursuant to 15
U.S.C. § 1117(a). (Pls.’ Post-Trial Mem. 16). The Court will address each in turn.
1. Injunctive Relief
It is well established that a plaintiff is entitled to a permanent injunction if it can
demonstrate “(1) actual success on the merits and (2) irreparable harm.” Gucci Am., Inc. v. Duty
Free Apparel, Inc., 286 F. Supp. 2d 284, 290 (S.D.N.Y. 2003). Once a plaintiff has established
liability in a trademark case, courts consider four factors in determining whether injunctive relief
is warranted: (1) the likelihood that the plaintiff will suffer irreparable harm in the absence of an
injunction, (2) whether remedies at law (such as monetary damages) are adequate to compensate
the plaintiff for that harm, (3) whether the balance of hardships tips in the plaintiff’s favor, and
(4) whether the public interest would be served by the issuance of an injunction. See Salinger v.
Colting, 607 F.3d 68, 80 (2d Cir. 2010). Irreparable harm is established “if there is any

52

likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or
indeed simply confused, as to the source of the goods in question.” Tiffany (NJ) LLC v. Dong,
No. 11-CV-2183 (GBD) (FM), 2013 WL 4046380, at *7 (S.D.N.Y. Aug. 9, 2013) (internal
quotation marks omitted); see also Malletier, 426 F.3d at 537 (“In trademark disputes, a showing
of likelihood of confusion establishes both a likelihood of success on the merits and irreparable
harm.” (internal quotation marks omitted)). Injunctive relief must be “narrowly tailored to fit
specific legal violations,” Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254, 272 (2d Cir. 2011)
(internal quotation marks omitted), but, pursuant to the Lanham Act, courts may grant
injunctions “according to the principles of equity and upon such terms as the court may deem
reasonable,” 15 U.S.C. § 1116(a).
Here, Coty requests an order requiring Excell and “all those in active concert and
participation with it” to “immediately and permanently cease (i) the import, export, manufacture,
production, distribution, circulation, sale, offer for sale, advertisement, promotion or display of
Plaintiffs’ marks and trade dress, and confusingly similar variants thereof, on Defendant’s
products; (ii) making any false or misleading statements of fact concerning the source or
qualities of Defendant’s products; (iii) diluting and tarnishing Plaintiffs’ marks; (iv) engaging in
any other acts of trademark infringement, unfair competition, false advertising or dilution
involving Plaintiffs’ fragrances, marks and trade dress.” (Joint Pretrial Order 11). Plaintiffs also
request that the Court’s order require Excell (1) within five business days, to provide copies of
the order to all of its owners, directors, officers, and employees and confirm in writing to the
Court that it has done so; (2) within five business days, to provide Coty with the true and correct
last known addresses and other available contact information for all its present and former
owners, directors, officers, employees, and suppliers (of the infringing products), to permit Coty

53

to provide them with actual notice of the order; (3) within fifteen business days, to deliver to
Coty for destruction at Excell’s “sole cost all signs, products, packaging, promotional material,
advertising material, catalogs and any other item that bears, contains or incorporates” any of
Coty’s marks, “or any simulation, reproduction, counterfeit, copy, colorable imitation or
confusingly similar variant thereof”; and (4) within five business days, to provide the Court and
counsel for Coty with a full, accurate, and complete supplement to a spreadsheet (Defs.’ Ex. B)
purportedly showing Excell’s sales data from July 2010 through April 2016, disclosing any and
all additional sales of infringing products by item that are not reflected in that document.
(Docket No. 146 (“App’x to Pls.’ Post-trial Mem.”) 3-4).
The Court concludes that Coty’s requests are well founded. As an initial matter, Coty has
demonstrated the likelihood that its reputation and brand will suffer irreparable harm in the
absence of an injunction. Courts in this Circuit have found that, absent undue delay in bringing a
claim, a “plaintiff who establishes that an infringer’s use of its trademark creates a likelihood of
consumer confusion generally is entitled to a presumption of irreparable injury.” Weight
Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137, 144 (2d Cir. 2005); see also, e.g., Dunkin’
Donuts Franchised Rests. LLC v. Tim & Tab Donuts, Inc., No. 07-CV-3662 (KAM) (MDG),
2009 WL 2997382, at *8 (E.D.N.Y. Sept. 15, 2009) (providing that irreparable injury “is
automatically satisfied by actual success on the merits, as irreparable harm is established by a
showing of likelihood of confusion.” (internal quotation marks and citation omitted)). For the
reasons discussed above, therefore, Coty easily satisfies the first factor for obtaining injunctive
relief. U.S. Polo Ass’n, 800 F. Supp. 2d at 541. The second factor — whether remedies at law

54

are adequate — also swings in Coty’s favor, as money alone cannot make up for the company’s
unquantifiable “losses of reputation and goodwill and resulting loss of customers.” Id.
Next, the balance of hardships tips forcefully in Coty’s favor as Excell is no longer
selling products from its Diamond Collection (or any products for that matter). (Tr. 383-84
(testimony of Pfau that, since December 2016, Excell “has . . . no inventory, has not sold
anything, has not conducted any business other than winding down operations”)). The equities
also weigh in Coty’s favor because it has spent millions of dollars marketing and selling its many
iconic fragrances for decades while Excell has conducted no marketing, has no brand
recognition, and only entered the fragrance market in 2010. (Keegan Direct ¶ 15 (Excell’s expert
acknowledging that the company conducts no marketing and consumers do not seek out its
brand)). See, e.g., U.S. Polo Ass’n, 800 F. Supp. 2d at 541 (finding the balance of hardships to
tip in favor of the more established company after analyzing both companies’ histories and
market penetration). Finally, the public interest will plainly be served by issuing an injunction
preventing Excell from engaging in deceptive and misleading misconduct that violates state
unfair competition and trademark laws. See, e.g., N.Y.C. Triathlon, 704 F. Supp. 2d at 344
(“[T]he public has an interest in not being deceived — in being assured that the mark it
associates with a product is not attached to goods of unknown origin and quality.”).
Excell’s primary objection is that any injunctive relief would be moot given its cessation
of “all operations.” (Docket No. 147 (“Def.’s Post-Trial Mem.”) 21). Coty’s request is not
moot, however, because Excell had not dissolved as of the time of trial — and there is no
indication that it has dissolved since. (Tr. 383-84 (testimony of Pfau that Excell is in the process
of “winding down operations”)). Because Excell could simply resume operations directly or
indirectly — and because its directors, officers, and employees have demonstrated such

55

tendencies in the past (see Def.’s Mem. 2) — Excell has not shown that it is “absolutely clear
that [its] wrongful conduct will not recur.” Romeo & Juliette Laser Hair Removal, Inc. v. Assara
I LLC, No. 08-CV-0442 (DLC), 2016 WL 815205, at *14 (S.D.N.Y. Feb. 29, 2016); cf.
Beechwood Restorative Care Ctr. v. Thompson, 494 F. Supp. 2d 181, 187 (W.D.N.Y. 2007)
(finding mootness where a nursing home had closed and its state operating license had been
revoked). Accordingly, Coty’s request for injunctive relief is not moot.
Excell also argues that Coty has not met its burden of demonstrating that the “injunction
could be enforceable against any nonparties.” (Def.’s Post-Trial Mem. 22). But Rule 65(d)(2) of
the Federal Rules of Civil Procedure provides, in relevant part, that an order granting injunctive
relief binds the following persons who receive actual notice of it by personal service or
otherwise: “(A) the parties; (B) the parties’ officers, agents, servants, employees, and attorneys;
and (C) other persons who are in active concert or participation with anyone described in Rule
65(d)(2)(A) or (B).” In order for a nonparty to be bound as part of an injunction, “that entity
must either aid and abet the defendant or be legally identified with it.” Gojo Indus., Inc. v.
Innovative Biodefense, Inc., No. 15-CV-2946 (PAC), 2015 WL 7019836, at *2 (S.D.N.Y. Nov.
12, 2015). Applying those principles here, Coty’s request for injunctive relief is granted with
respect to Excell and its “officers, agents, servants, employees . . . [and] other persons who are in
active concert or participation” with them. Fed. R. Civ. P. 65(d)(2). The fact that Excell may
soon be dissolved has no bearing on the scope of the injunction with respect to the other
individuals and entities enjoined under Rule 65(d)(2).
1. Accounting of Profits
Section 35(a) of the Lanham Act provides that a plaintiff who has successfully
established a trademark violation “shall be entitled, . . . subject to the principles of equity, to

56

recover . . . defendant’s profits.” 15 U.S.C. § 1117(a). The statute goes on to state that, “[i]n
assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must
prove all elements of cost or deduction claimed.” Id. As the Second Circuit has explained:
“Ordinarily, a plaintiff that has proved the amount of infringing sales would be entitled to that
amount unless the defendant adequately proved the amount of costs to be deducted from it. This
sequence of proof thus places the burden of proving costs on the party with the superior access to
such information, namely the infringing defendant.” Am. Honda Motor Co. v. Two Wheel Corp.,
918 F.2d 1060, 1063 (2d Cir. 1990). To ascertain whether “on the whole, the equities weigh in
favor of an accounting” of defendant’s profits, courts consider “(1) the degree of certainty that
the defendant benefited from the unlawful conduct; (2) availability and adequacy of other
remedies; (3) the role of a particular defendant in effectuating the infringement; (4) plaintiff’s
laches; and (5) plaintiff’s unclean hands.” George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532,
1540 (2d Cir. 1992). 18 Here, all of these considerations favor Coty. In light of the likelihood-ofconfusion analysis above, there is no doubt that Excell benefited from its unlawful conduct —
indeed, its very business model depended on creating customer confusion and capitalizing on
Coty’s goodwill. Nor is there any doubt that Excell is directly responsible for the infringement.
Additionally, as noted above, Excell’s laches defense falls short, and there is no evidence
suggesting that Coty has unclean hands. The Court therefore concludes that Coty has adequately
demonstrated an entitlement to an award of profits pursuant to Section 1117(a).

18

Courts in this District are split over whether a showing of bad faith is also required to
obtain monetary relief for infringement, but there is agreement that it is required to obtain
monetary relief for dilution. See Beastie Boys v. Monster Energy Co., 983 F. Supp. 2d 354, 36667 (S.D.N.Y. 2014) (collecting and comparing cases); see also GMA Accessories, Inc. v. BOP,
LLC, 765 F. Supp. 2d 457, 468-70 (S.D.N.Y. 2011) (same). In any event, the Court has already
found bad faith on the part of Excell.

57

Coty proved at trial that Excell’s sales of the accused fragrances from July 2010 through
April 2016 totaled $6,573,840.43. (See Tr. 408; Pls.’ Ex. 243; Def.’s Ex. KKK). Because Excell
continued to sell the infringing fragrances until at least December 2016, Coty also seeks — and
the Court grants — an accounting of the company’s profits for the period from April 2016 until it
ultimately ceased operations. That leaves the question of whether Excell proved any costs or
deductions. Excell claims that it is entitled to deductions for both the costs of goods sold (that is,
direct costs) and an allocable percentage of its overhead expenses (that is, indirect costs). (Def.’s
Post-Trial Mem. 20). Those claims are based on two categories of documents offered at trial:
(1) a spreadsheet showing the company’s total sales (infringing and non-infringing) by product
from July 2010 to April 2016, which includes an expense column captioned as “COGS” (as in,
“costs of goods sold”) (Def.’s Ex. B (“COGS Spreadsheet”)); and (2) the company’s profit-andloss statements for the years 2010 to 2015 (Def. Exs. NNN-RRR (“P&L Statements”)). Excell
argues that the documents are admissible as business records under Rule 803(6) of the Federal
Rules of Evidence. (Def.’s Post-Trial Mem. 18-19). Coty, by contrast, argues that the
documents are either inadmissible or, if admissible, unreliable proof of costs and deductions.
(Pls.’ Post-Trial Mem. 16). The Court agrees with Coty.
First, the Court declines to rely on Excell’s unaudited P&L Statements as reliable proof
of costs and deductions. Excell attempted to lay a foundation for the P&L Statements through
Andrew Pfau, an Excell owner and board member, who testified that he had “reviewed each
Profit & Loss statement at or about the time it was prepared.” (Pfau Direct ¶ 5). Yet Pfau
acknowledged that the Statements were later adjusted and revised when reviewed by outside
accountants, and conceded that he had no idea “what the particular changes were.” (Tr. 425).
What is more, Pfau himself admitted that three of the six annual P&L Statements were inaccurate

58

and unreliable. (Tr. 410-13; Pfau Direct ¶ 6, n.1). And while he said that he was “comfortable”
with the other three (Tr. 399), he “gave no testimony about the techniques used . . . or about the
efforts at consistency between the various reports prepared.” Ortho Pharm. Corp. v.
Cosprophar, Inc., 828 F. Supp. 1114, 1120 (S.D.N.Y. 1993) (refusing to apply the business
records exception because “the reliability of the exhibit cannot be measured” where the person
testifying “had insufficient knowledge of the methods of preparation, the selectivity and [and
the] methodology”), aff’d 32 F.3d 690 (2d Cir. 1994). In light of these facts, the Court would be
on firm ground excluding the P&L Statements altogether. See, e.g., Saks Int’l, Inc. v. M/V
“Export Champion,” 817 F.2d 1011, 1013 (2d Cir. 1987) (“The principal precondition to
admission of documents as business records . . . is that [they] have sufficient indicia of
trustworthiness to be considered reliable.”); Ortho Pharm. Corp., 828 F. Supp. at 1119 (“The
hallmark of documents admitted under the business records exception is that they are trustworthy
and reliable.”). But the Court need not decide that question because, even if the records were
admissible, the Court would and does, for many of the same reasons, decline to credit them —
and Pfau’s testimony about them — as reliable or trustworthy proof of costs or deductions.
For similar reasons, the COGS Spreadsheet does not satisfy Excell’s burden of proving
costs and deductions. Excell sought to use certain columns in the Spreadsheet to establish its
direct costs, but Pfau — who, again, served as the sole foundational witness (Def.’s Post-Trial
Mem. 14; Pfau Direct ¶ 4) — provided no detail as to what the columns were or how the figures
within the columns were calculated. See, e.g., Abascal v. Fleckenstein, 820 F.3d 561, 566 (2d
Cir. 2016) (finding that a report lacked trustworthiness in part because it “does not describe the
methodology that was used”). Indeed, at trial, Pfau could only speculate when asked to explain
the “AVG COGS” category on the COGS Spreadsheet. (See Tr. 404 (“I think that’s just tracking

59

the physical unit, the product cost without any other — just if we bought it for 90 cents a bottle,
it’s — the cost was just the bottle, no other costs.”)). That does not suffice to carry Excell’s
burden, as an infringing defendant may not prove deductible costs “by records showing only a
vague, undifferentiated category” of expenses. 5 McCarthy on Trademarks and Unfair
Competition § 30:66 (4th ed. 2017); see also Audemars Piguet Holding S.A. v. Swiss Watch Int'l,
Inc., 46 F. Supp. 3d 255, 292 (S.D.N.Y. 2014), rev'd on other grounds, No. 12-CV-5423 (LAP),
2015 WL 150756 (S.D.N.Y. Jan. 12, 2015) (“[B]esides asserting these costs, Defendants
provided neither documentation nor analysis of how they were calculated, besides the Solar Time
invoice summaries. Without this information, Defendants have not proven direct costs under the
Lanham Act, and it is not possible for the Court to conduct the two-step analysis required for
overhead expenses.” (citation omitted)). Accordingly, Coty is “awarded all revenue” for the
relevant time periods. 5 McCarthy § 30:66; see also GTFM, Inc. v. Solid Clothing, Inc., 215 F.
Supp. 2d 273, 304-05 (S.D.N.Y. 2002) (calculating profits without incorporating the defendant’s
alleged costs where “[defendant] has failed to prove with reliable evidence any other expenses”).
That is, Coty is awarded Excell’s sales of its infringing fragrances — $6,573,840.43 — plus the
amount of Excell’s sales since that date, to be determined through an accounting.
2. Enhanced Monetary Awards
The Court turns, then, to Coty’s argument that it is entitled to, or should be awarded,
treble damages. (Pls.’ Post-Trial Mem. 11-13). Where a defendant has “intentionally us[ed] a
mark or designation, knowing such mark or designation is a counterfeit mark,” Section 35(b) of
the Lanham Act provides that “the court shall, unless the court finds extenuating circumstances,
enter judgment for three times such profits or damages, whichever amount is greater, together
with a reasonable attorney’s fee.” 15 U.S.C. § 1117(b); see Sara Lee Corp. v. Bags of N.Y., Inc.,

60

36 F. Supp. 2d 161, 165 (S.D.N.Y. 1999). A “counterfeit” mark is defined in the statute as a
“spurious mark which is identical with, or substantially indistinguishable from, a registered
mark.” 15 U.S.C. § 1127. The statute does not, in turn, define the terms “substantially
indistinguishable” or “spurious.” But courts in this Circuit have uniformly held that they require
more than a mere similarity between the marks or a “colorable imitation.” Louis Vuitton
Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485, 499 (S.D.N.Y. 2015) (“To be
substantially indistinguishable, two marks must be ‘nearly identical . . . with only minor
differences which would not be apparent to an unwary observer.’”). That is, they “reflect the
element of outright duplication absent from the colorable imitation” inquiry. Fischer v. Forrest,
No. 14-CV-1304 (PAE) (AJP), 2017 WL 128705, at *12 (S.D.N.Y. Jan. 13, 2017) (internal
quotation marks omitted); see also Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 528 (2d Cir.
1983) (distinguishing those “marks which are merely infringements” and “those marks which not
only infringe but in addition are such close copies that they amount to counterfeits”). Put
another way, “[t]he essence of counterfeiting is that the use of the infringing mark ‘seeks to trick
the consumer into believing he or she is getting the genuine article, rather than a ‘colorable
imitation.’” Gucci, 868 F. Supp. 2d at 237). In determining whether one mark is a counterfeit of
another, a court must not view them “in the abstract. Rather, the alleged counterfeit mark must
be compared with the registered mark as it appears on actual merchandise to an average
purchaser.” Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., No. 12-CV-1416
(GBD) (RLE), 2015 WL 4468083, at *3 (S.D.N.Y. July 8, 2015) (internal quotation marks and
citation omitted).
Applying those standards here, the Court concludes that Excell’s infringing products do
not rise to the level of “counterfeits” within the meaning of the Lanham Act. For one, despite the

61

similarities between the products, none of Excell’s products used the exact same name as a Coty
product; nor did they possess the same — or a “substantially indistinguishable” — combination
of colors, designs, and shapes. Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486
F. Supp. 2d 286, 291 (S.D.N.Y. 2007) (“Taken together, it may fairly be said that the boxes are
quite similar, but not that they are ‘substantially indistinguishable.’”); cf. Audemars Piguet
Holding 2015 WL 150756, at *2 (noting that while a part of the defendant’s watch infringed on
the plaintiffs’ trademark, the two marks were not “substantially indistinguishable” because the
bolts were “shaped differently” and the screws were “arrayed in a different pattern”).
Additionally, although Excell did use Coty’s own marks as part of its “Our Version Of” and
“Not Associated With” disclaimers, the existence of those disclaimers and Excell’s (admittedly
less prominent) use of the Diamond Collection mark on its bottles “creates enough of a
contextual difference that [Excell’s fragrances] cannot be considered counterfeits of [Coty’s].”
Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241, 255 (S.D.N.Y. 2015); see, e.g.,
Gibson Brands, Inc. v. John Hornby Skewes & Co., No. 14-CV-609 (DDP) (SSX), 2016 WL
7479317, at *7 (C.D. Cal. Dec. 29, 2016) (dismissing a counterfeit claim, but not an
infringement claim, on the ground that the defendant’s guitars were not “identical” to, or
“substantially indistinguishable” from, the plaintiff’s guitars, where, among other things, the
defendants’ brand name appeared on the back of the guitars). In short, although Excell certainly
sought to capitalize on Coty’s goodwill by creating customer confusion between the two
companies’ products, the Court cannot conclude that the company went so far as to try “to trick
. . . consumer[s] into believing” they were actually buying Coty’s fragrances. Gucci, 868 F.

62

Supp. 2d at 237. Accordingly, Excell’s fragrances are not “counterfeits” under the Lanham Act
and Coty is not entitled to treble damages. 19
3. Attorney’s Fees, Other Costs, and Prejudgment Interest
The Lanham Act provides that a court may award reasonable attorney’s fees and
prejudgment interest to the prevailing party “in exceptional cases.” 15 U.S.C. § 1117(a); see Am.
Honda Motor Co. v. Two Wheel Corp., 918 F.2d 1060, 1064 (2d Cir. 1990). The Second Circuit
has defined “exceptional cases” as ones involving fraud, bad faith, or willfulness. See Patsy’s
Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 221 (2d Cir. 2003). “The mere existence of a
finding of bad faith, however, does not automatically entitle the prevailing party to attorneys’
fees.” Gidatex, S.r.L. v. Campaniello Imps., Ltd., 82 F. Supp. 2d 136, 147 (S.D.N.Y. 2000).
Indeed, “courts routinely decline to award attorneys’ fees in cases involving willful

19

Coty does not appear to be seeking trebled profits pursuant to Section 35(a) of the
Lanham Act, 15 U.S.C. § 1117(a), but to the extent that it does, the request is denied. First, most
courts have held that trebled profits (as opposed to trebled damages) are unavailable under
Section 35(a). See BeautyBank, Inc. v. Harvey Prince LLP, No. 10-CV-955 (DAB) (GWG),
2011 WL 671749, at *5 (S.D.N.Y. Feb. 24, 2011); see also, e.g., U.S.A. Famous Original Ray's
Licensing Corp. v. Tisi's Pizza & Pasta Inc., No. 09-CV-5517 (RMB) (AJP), 2009 WL 4351962,
at *4 (S.D.N.Y. Dec. 1, 2009) (“Because § 1117(a) does not explicitly provide for trebling an
award of defendant's profits, but only permits trebling of plaintiff's actual damages, courts cannot
treble an award of defendant's profits.” (internal quotation marks omitted)); Thompson v.
Haynes, 305 F.3d 1369, 1380 (Fed. Cir. 2002) (“As for damages, the court may award up to
three times actual damages, depending on the circumstances of the case. As for profits, however,
the court is not authorized to award up to three times the amount proved.”); but see Deering,
Milliken & Co. v. Gilbert, 269 F. 2d 191, 194 (2d Cir. 1959) (stating that Section 1117(a) permits
a court, in its discretion, to “treble[] the defendant’s profits”). Second, and in any event, even if
trebled profits were available, the Court would exercise its discretion and decline to award Coty
such profits here for the simple reason that it “has not presented any evidence” that the award of
over $6 million in Excell’s profits “is inadequate.” U.S.A. Famous, 2009 WL 4351962, at *5;
see, e.g., Brown v. Party Poopers, Inc., No. 00-CV-4799 (JSM), 2001 WL 1380536, at *6
(S.D.N.Y. July 9, 2001) (finding, in a case where the defendant “failed to prove the amount of
any elements of cost or deduction,” that the “purposes of trebling have already been adequately
served” by the award and thus declining to provide treble damages).

63

infringement.” Mister Softee, Inc. v. Boula Vending Inc., No. 10-CV-2390 (ARR) (JMA), 2011
WL 705139, at *1 (E.D.N.Y. Feb. 17, 2011); see also Lurzer GMBH v. Am. Showcase, Inc., 75
F. Supp. 2d 98, 102 (S.D.N.Y. 1998) (“Even in a case where, as here, the defendant engaged in
willful deception, a court may decline to award [attorneys’] fees if there are other, mitigating
factors.”), opinion clarified, No. 97-CV-6576 (JSR), 1999 WL 111931 (S.D.N.Y. Mar. 4, 1999),
aff'd, 201 F.3d 431 (2d Cir. 1999). The same is true for prejudgment interest: A finding of bad
faith does not automatically lead to an award for the non-infringing party. See Gidatex, 82 F.
Supp. 2d at 147 (refusing to award prejudgment interest after finding the case to not be
“exceptional” and noting that plaintiff “has offered no reason why it requires additional
compensation on th[e] award”). “The decision whether or not to award [attorney’s] fees also
rests within the broad discretion of the district judge.” George Basch, 968 F.2d at 1543.
Exercising the “broad discretion” provided to district courts in this realm, the Court
declines to award attorney’s fees and prejudgment interest to Coty for several reasons. First,
Excell’s conduct before and during this litigation, while certainly not commendable, falls short
of the “the sort of misconduct that supports an attorney fees award.” Sara Lee Corp., 36 F.
Supp. 2d at 170 (noting that “the sort of misconduct that supports an attorney fees award
includes not only willful infringement, but also willful defiance and protraction of judicial
processes attempting to stop the illegalities”); Patsy’s Brand, 317 F.3d at 222 (“[F]raudulent
conduct in the course of conducting trademark litigation permits a finding that a case is
‘exceptional’ for purposes of an attorney’s fee award under the Lanham Act.”); Leviton Mfg. Co.
v. Fastmac Performance Upgrades, Inc., No. 13-CV-1629 (LGS) (SN), 2014 WL 2653116, at *9
(S.D.N.Y. Feb. 28, 2014) (finding that “willful infringement, knowing use of a counterfeit, and
the default of the defendants justify an award of attorneys’ fees”); Scholastic, Inc. v.

64

Stouffer, 221 F. Supp. 2d 425, 444 (S.D.N.Y. 2002) (awarding attorney’s fees where the
defendant created “fraudulent documents and testimony” in support of claims and defenses that
had no reasonable basis in fact or law); GTFM, 215 F. Supp. 2d at 305-06 (noting that “[i]f
defendant’s bad faith alone were not sufficient to make this an exceptional case,” then its other
conduct, including “perjury during deposition and at trial” render the case “exceptional”). 20
Coty’s request for attorney’s fees and prejudgment interest is also undermined by “the
absence of material evidence that [it] suffered any ‘ascertainable damage.’” Lurzer GMBH, 75
F. Supp. 2d at 102 (S.D.N.Y. 1998),; see also VIP Foods v. Vulcan Pet, Inc., 675 F.2d 1106,
1107 (10th Cir. 1982) (affirming the district court’s ruling that the case was not “exceptional”
because, among other things, “plaintiff had suffered no ascertainable damage or loss of profits
because of defendant’s use of [its] mark”). For the reasons stated above, there is certainly reason
to believe that Coty has been harmed by Excell’s misconduct; but the fact is that, despite several
years of competition with Excell’s infringing products, Coty failed to produce demonstrable
evidence of actual confusion. And finally, the Court concludes that attorney’s fees and
prejudgment interest are inappropriate because “the outcome” of the case “was by no means a
foregone conclusion,” Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279, 302
(S.D.N.Y. 1997), especially when it came to those fragrances at the less infringing end of the
“similarity spectrum” discussed above.

20

Granted, the Court imposed sanctions on Excell for failing to produce an adequately
prepared witness for its Rule 30(b)(6) deposition. See Coty Inc. v. Excell Brands, LLC, No. 15CV-7029 (JMF), 2016 WL 7187630 (S.D.N.Y. Dec. 9, 2016) (Docket No. 83). But the Court
has already punished Excell for that misconduct, both by precluding the company from
introducing evidence on certain issues and by requiring the company to reimburse Coty for its
“reasonable expenses, including attorney’s fees,” caused by its failure to produce adequately
prepared witnesses. See id. at *3. Requiring Excell to pay all of Coty’s attorney’s fees on the
basis of that misconduct would, in the Court’s view, be disproportionate.

65

In contrast to attorney’s fees and prejudgment interest, a case need not be “extraordinary”
for a prevailing party to recover “the costs of the action.” 15 U.S.C. § 1117(a). Instead, a court
may grant an award of costs subject to the “principles of equity.” Id. In practice, courts in this
district “generally award costs to prevailing parties in Lanham Act cases.” Gidatex, 82 F. Supp.
2d at 150; see also Tri–Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296, 306 (S.D.N.Y. 1999)
(“The Lanham Act also provides for the award of costs in all cases.”). Accordingly, the Court
concludes that Coty is entitled to recover its reasonable costs. See Lyons P’ship, L.P. v. AAA
Entm’t, Inc., No. 98-CV-475 (MHD), 1999 WL 1095608, at *10 (S.D.N.Y. Dec. 3, 1999)
(denying the plaintiff’s request for attorneys' fees but granting its request for costs).
CONCLUSION
Justice Frankurter once described trademark protection as “the law’s recognition of the
psychological function of symbols.” Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,
316 U.S. 203, 205 (1942). That is, a trademark is more than a diffuse or meaningless
representation; it is “a merchandising short-cut” meant “to impregnate the atmosphere of the
market with the drawing power of a congenial symbol.” Id. It is, in short, “something of value,”
and “[i]f another poaches upon the commercial magnetism of the symbol he has created, the
owner can obtain legal redress.” Id. For the reasons stated above, the Court concludes that
Excell’s knockoff fragrances “poach upon the commercial magnetism” of Coty’s fragrances.
More specifically, the Court finds that Coty has established its claims of trademark infringement,
trademark dilution, and false advertising — under both New York and federal law — and is
entitled to injunctive relief, an award of Excell’s profits (including its profits for the period from
April 2016 until the last infringing fragrances were sold, as to which Excell is to provide an
accounting), and reimbursement of its reasonable costs.

66

The parties shall promptly meet and confer with respect to both Excell’s accounting of its
profits for the period from April 2016 until the last infringing fragrances were sold and Coty’s
reasonable costs. No later than two weeks from the date of this Opinion and Order, the
parties shall submit a joint letter advising the Court of any disputes on either score and, in the
case of a dispute, proposing a process to resolve it. By the same date, Coty shall submit a
proposed judgment consistent with this Opinion and Order, including — among other things —
the proposed terms of the injunction granted above. Excell shall have one week from the
submission of Coty’s proposed judgment to submit any objections in a letter brief, not to
exceed three pages. The parties should advise the Court if there is any need for a conference.
The Clerk of Court is directed to terminate Docket Nos. 90 and 95.

SO ORDERED.
Date: September 18, 2017
New York, New York

67

Appendix A

68

CALVIN KLEIN EUPHORIA (Women)
EXCELL’S EUPHRATES (Women)

69

CALVIN KLEIN EUPHORIA (Men)
EXCELL’S EUPHRATES (Men)

70

CK ONE
EXCELL’S OK NEW YORK

CK ONE SHOCK (Women)
EXCELL’S OK ROCK (Women)

71

CK ONE SHOCK (Men)
EXCELL’S OK ROCK (Men)

CK ONE SUMMER
EXCELL’S OK HOT

72

CK BE
EXCELL’S OK NEW YORK BLACK

73

CALVIN KLEIN OBSESSION (Men)
EXCELL’S POSSESSION (Men)

74

CALVIN KLEIN OBSESSION (Women)
EXCELL’S POSSESSION (Women)

75

CALVIN KLEIN DARK OBSESSION (Men)
EXCELL’S POSSESSION NIGHT (Men)

76

CALVIN KLEIN ETERNITY (Women)
EXCELL’S SERENITY (Women)

CALVIN KLEIN ETERNITY (Men)
EXCELL’S SERENITY (Men)

77

CALVIN KLEIN ETERNITY AQUA (Men)
EXCELL’S SERENITY AQUA (Men)

CK IN2U (Women)
EXCELL’S BE4U (Women)

78

CK IN2U (Men)
EXCELL’S OK4U (Men)

CKFREE BLUE
EXCELL’S OK BLUE

79

DOWN TOWN CALVIN KLEIN
EXCELL’S CITY GIRL

VERA WANG PRINCESS
EXCELL’S INSPIRATION

80

VERA WANG LOVESTRUCK
EXCELL’S LOVE STORY

LADY GAGA FAME
EXCELL’S CRAZY LADY

81

JOOP! HOMME
EXCELL’S JUMP! (Men)

82