Hamilton International Ltd. v. Vortic LLC et al
Filing
115
OPINION AND ORDER. For the foregoing reasons, Defendants' motion for summary judgment is DENIED, Plaintiff's motion to strike the Haller declaration is DENIED as moot, Plaintiff's motion to transfer is DENIED, and Defendants' moti on to seal is DENIED as well, with leave to refile as directed. A final pre-trial conference in this matter will be scheduled by separate order. This resolves Dkt. Nos. 77, 95, 97. re: 95 MOTION to Strike Document No. [80 and 81] Declaratio n of Antoine Haller filed by Robert Thomas Custer, Vortic Technology LLC, Vortic LLC, 77 MOTION for Summary Judgment filed by Hamilton International Ltd., 97 MOTION to Change Venue to the United States District Court for the District of Colorado filed by Robert Thomas Custer, Vortic Technology LLC, Vortic LLC. (Signed by Judge Alison J. Nathan on 9/30/2019) (rjm)
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Hamilton International Ltd.,
Plaintiff,
17-CV-5575 (AJN)(OTW)
-vOPINION & ORDER
Vortic LLC, et al.,
Defendants.
ALISON J. NATHAN, District Judge:
This litigation concerns allegations that a watch sold by Defendant Vortic LLC
("V ortic"), as well as advertisements for that watch, infringed on Plaintiff Hamilton International
Limited's ("Hamilton") trademark. Before the Court is Plaintiffs motion for summary judgment
on its infringement, counterfeiting, dilution, and unfair competition claims. Also before the Court
is Defendants' motion to strike, Defendants' motion to transfer, and Plaintiffs sealing motion.
For the reasons stated below, all motions are denied.
I.
BACKGROUND
Defendant Vortic LLC ("Vortic") is a watchmaker that specializes in restoring antique
pocket watches and converting them into wristwatches. Affidavit of Robert Custer ("Custer
Aff."), 8-9, Dkt. No. 101. One ofVortic's watches is called "The Lancaster." It is made with a
restored, "Railroad-Era" movement (i.e. internal mechanism), face, and hands from pocket
watches produced by the Hamilton Watch Company. See Defendant's Counter Statement
Pursuant to Rule 56.1 ("Def. Counter 56.1 ") , 11, Dkt. No. 102; Declaration of Michael Aschen
("Aschen Dec."), Exh. 2, Dkt. No. 84-2. The other parts of the wristwatch are produced by
Vortic and the ultimate product is also assembled by Vortic. Id. "Hamilton" is visible on both
1
the front and back of the watch. Id In order to produce a Lancaster, Vortic modifies the
movement mechanism and must, at least some of the time, use parts from multiple antique
Hamilton pocket watches. Aschen Dec., Exh. 3 at 75:7-76: 15, 82:3-82:5, Dkt. No. 84-3.
Hamilton, which is still in existence, became aware of The Lancaster in July of 2015 and
allegedly sent Vortic a cease and desist letter. See Def. Counter 56.1 134. On July 21, 2017,
Hamilton launched this action against Vortic and the company's founder, Robert Custer. Dkt.
No. l.
II.
MOTION FOR SUMMARY JUDGMENT
Summary judgment may not be granted unless all of the submissions taken together
"show[ ] that there is no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter oflaw." Fed. R. Civ. P. 56(a). A fact is "material" if it "might affect the
outcome of the suit under the governing law," and is genuinely in dispute if "the evidence is such
that a reasonable jury could return a verdict for the nonmoving party." Roe v. City of Waterbury,
542 F.3d 31, 35 (2d Cir. 2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242,248
(1986)). "[I]n making that determination, the court is to draw all factual inferences in favor of
the party against whom summary judgment is sought, viewing the factual assertions in materials
such as affidavits, exhibits, and depositions in the light most favorable to the party opposing the
motion." Rodriguez v. City ofNew York, 72 F.3d 1051, 1061 (2d Cir. 1995). However, "[w]hen
opposing parties tell two different stories, one of which is blatantly contradicted by the record, so
that no reasonable jury could believe it, a court should not adopt that version of the facts for
purposes of ruling on a motion for summary judgment." Scott v. Harris, 550 U.S. 372, 380
(2007).
In seeking summary judgment, the initial "burden is upon the moving party to
demonstrate that no genuine issue respecting any material fact exists." Gallo v. Prudential
2
Residential Servs., 22 F.3d 1219, 1223 (2d Cir. 1994). Where the non-moving party would bear
the burden of proof at trial, "the burden on the moving party may be discharged by 'showing'that is, pointing out to the district court-that there is an absence of evidence to support the
nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317,325 (1986). If the movant
"demonstrates 'the absence of a genuine issue of material fact,' the opposing party must come
forward with specific evidence demonstrating the existence of a genuine dispute of material fact"
to survive summary judgment. Brown v. Eli Lilly & Co., 654 F.3d 347,358 (2d Cir. 2011)
(citation omitted) (quoting Celotex Corp., 477 U.S. at 323).
A.
Trademark Infringement
A "plaintiff in a trademark infringement action must show that defendant (1) without
consent, (2) used in commerce, (3) a reproduction, copy or colorable imitation of plaintiffs
registered mark, as part of the sale or distribution of goods or services, and (4) that such a use is
likely to cause confusion." Gruner+ Jahr USA Pub!. v. Meredith Corp., 991 F.2d 1072, 1075
(2d Cir. 1993) (citing 15 U.S.C. § ll 14(1)(a)). The only element that can reasonably be subject
to dispute in this case is whether there is a likelihood of confusion.
The Second Circuit applies the landmark, multifactor test from Polaroid Corp. v. Polarad
Electronics Corp. when determining the likelihood of confusion in trademark cases. See 287
F.2d 492 (2d Cir. 1961). This analysis looks to "the strength of his mark, the degree of similarity
between the two marks, the proximity of the products, the likelihood that the prior owner will
bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own
mark, the quality of defendant's product, and the sophistication of the buyers" as relevant
variables. Id. at 295. The touchstone when considering the Polaroid factors is the existence of
"a probability of [consumer] confusion, not a mere possibility." Streetwise Maps v. VanDam,
Inc., 159 F.3d 739, 743 (2d Cir. 1998). In other words, "whether numerous ordinary prudent
3
purchasers are likely to be misled or confused as to the source of the product in question because
of the entrance in the marketplace of defendant's mark." Playtex Prods. v. Georgia-Pacific
Corp., 390 F.3d 158, 161 (2d Cir. 2004) (quotation omitted).
However, the Polaroid factors are not "mechanical" nor are they exhaustive. Guthrie
Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016) (quoting Nabisco, Inc. v.
Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000)). As the Second Circuit has cautioned
repeatedly, "depending on the complexity of the issues, 'the court may have to take still other
variables into account."' Savin Corp. v. Savin Group, 391 F.3d 439,456 (2d Cir. 2004) (quoting
Polaroid, 287 F.2d at 295)). In cases such as this one, involving modified genuine products, the
Supreme Court has found whether the defendant adequately disclosed the origins of the product
to be dispositive. See Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947); Prestonettes,
Inc. v. Coty, 264 U.S. 359 (1924); see also Nora Bevs., Inc. v. Perrier Grp. ofAm., Inc., 269 F.3d
114, 119 (2d Cir. 2001) ("Although no one factor is necessarily dispositive, any one factor may
prove to be so.").
In Champion, the defendant sold repaired and reconditioned used spark plugs that were
initially manufactured by the plaintiff. See 331 U.S. at 126. The Supreme Court held that the
defendant could continue to display the plaintiffs trademark on his sparkplugs, so long as the
sparkplugs also had "Repaired" or "Used" conspicuously stamped on them and their packaging
indicated that the defendant had done the restoration. Id. at 127, 130. The Court explained that
in such circumstances, "[f]ull disclosure" was "all the protection to which [the plaintiff] was
entitled." Id. at 130. Since the sparkplugs were second-hand goods and consumers would
naturally expect a used or repaired good to be inferior, conspicuously labeling the goods as used
or repaired constituted full disclosure. Id. It was otherwise permissible for the goods to retain
the Champion trademark even if it means that the defendant benefits from plaintiffs goodwill or
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"gets some advantage from" plaintiffs mark. Id. The Court did caution that it would be
possible to imagine a case "where the reconditioning or repair would be so extensive or so basic
that it would be a misnomer to call the article by its original name, even if the words 'used' or
'repair' were added." Id. at 129. In those circumstances, more disclosure would be required in
order to justify continued use of the plaintiffs mark. The sparkplugs in Champion, though, were
not so modified.
Courts in this Circuit have likewise found the adequacy of disclosure, or lack thereof, to
be dispositive when determining the likelihood of confusion caused by a modified genuine
product. See, e.g., HL. Hayden Co. v. Siemens Medical Systems, Inc., 879 F.2d 1005, 1022-24
(2d Cir. 1989); Cartier v. Aaron Faber, Inc., 396 F. Supp. 2d 356,359 (S.D.N.Y. 2005); Bumble
Bee Seafoods, L.L.C. v. UFS Indus., Inc., No. 04-cv-2015, 2004 U.S. Dist. LEXIS 13897, at *6*15 (S.D.N.Y. July 20, 2004); Eastman Kodak Co. v. Photaz Imports, 853 F. Supp. 667,674
(W.D.N.Y. 1993), ajf'd mem., 28 F.3d 102 (2d Cir. 1994). These decisions look to Champion as
a substitute or crucial supplemental factor to a traditional Polaroid likelihood of confusion
analysis. "Full disclosure" thus matters if it prevents "numerous ordinary prudent purchasers"
from being "misled or confused as to the source of the product." Champion, 331 U.S. at 130;
Playtex Prods., 390 F.3d at 161.
In determining the likelihood of confusion, the Court will therefore give strong weight to
the "full disclosure" factor, while also considering the traditional Polaroid variables it finds to be
applicable. See Int'! Info. Sys. Sec. Certification Consortium v. Sec. Univ., LLC, 823 F.3d 153,
160 (2d Cir. 2016) ("[C]ases may certainly arise where a factor is irrelevant to the facts at
hand.") (quoting Arrow Fastener Co. v. Stanley Works, 59 F.3d 384,400 (2d Cir. 1995)). Doing
so, the Court concludes that there is a genuine question of material fact as to whether consumers
are likely to be confused by advertisements for The Lancaster or The Lancaster itself.
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1. Champion Disclosure Analysis
a. Advertisements
There are three advertisements at issue. The first comes from Vortic's website. See
Aschen Declaration, Exh. 2, Dkt. No. 84-2. It states in large bold letters, "The Lancaster" and
"American Artisan Series." In smaller print, the ad explains that the movement, dial, and hands
of the watch "started out their life in a Railroad-Era pocket watch made by the Hamilton Watch
Company." Id. The ad then gives some additional history on Hamilton before explaining that
Vortic uses the parts to build "a completely custom watch." The phrase "Hamilton Watch Co."
is visible on a picture of a watch component. The ad copy itself gives an accurate explanation as
to how V ortic obtains its parts for The Lancaster and how it builds the watch. Applying
Champion, a reasonable factfinder could conclude that "full disclosure" as to the source of the
product was achieved. See Prestonettes, 264 U.S. at 369 (not infringement to "to say that the
trade-marked product is a constituent in the article now offered as new and changed.").
Vortic also created an advertisement that appears to have been in print. See Haller
Declaration, Exh. 2, Dkt. No. 85-2; Custer Declaration, Exh. 1, Dkt. No. 101. "Vortic" is in
large bold print, along with the company logo. The ad states: "Each piece is custom fabricated
using railroad era, American made pocket watch movements to create timeless, one-of-a-kind
wristwatches." Id. It implores the reader "talk to a watchmaker at V ortic today." Id. The ad
also features a picture of both the watch's front and back. In type smaller than the ad copy,
"Hamilton" is visible on the watch face. This ad is largely similar to the one above. A
reasonable finder of fact could conclude that the ad sufficiently conveys that the watches are
produced by "watchmakers at Vortic" and that they use old Hamilton watches only as a "source
of railroad era, American made pocket watch movements." A reasonable factfinder that so
concluded, could likewise find that the ad is unlikely to cause consumer confusion. See
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Prestonettes, 264 U.S. at 369; see also Bumble Bee Seafoods, L.L.C. v. UFS Indus., Inc., No. 04cv-2015, 2004 U.S. Dist. LEXIS 13897 (S.D.N.Y. July 20, 2004) (label accurately describing
product as "Made With Bumble Bee Tuna" did not infringe on Bumble Bee Tuna's trademark).
Plaintiff also alleges that a V ortic tweet about The Lancaster infringes on its mark. See
Aschen Declaration, Exh. 3, Dkt. No. 84-3 at 32. The tweet states "A #Hamilton #Railway
#Special in our nickel plated #3Dprinted #StainlessSteel #AmericanArt." There is a picture of
the watch, with the Hamilton mark in smaller print. Like the two ads above, consistent with
Champion, a reasonable factfinder could conclude that the obvious message of the ad is that
Hamilton watch parts are used to produce a watch that is made by Vertie. See id. ("our ...
#AmericanArt") (emphasis added). See Prestonettes, 264 U.S. at 368 ("When the mark is used
in a way that does not deceive the public we see no such sanctity in the word as to prevent its
being used to tell the truth. It is not taboo.").
Moreover, the fact that the movements may not have been restored to precise factory
specifications or were restored with parts from other vintage Hamilton watches does not make
the ads deceptive and infringing as a matter of law. Just as the sparkplug consumers in
Champion would expect lower quality from secondhand sparkplugs, a reasonable factfinder
could determine that consumers of restored, historic watches would expect these techniques as
well. See Champion, 331 U.S. at 129-30; see also id. at 129 ("And we would not suppose that
one could be enjoined from selling a car whose valves had been reground and whose piston rings
had been replaced unless he removed the name Ford or Chevrolet"). What matters is whether a
reasonable factfinder could determine that there is "full disclosure" as to the fact that V ortic is
producing the watches from old Hamilton components.
b. The Watch
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The use of "Hamilton" on the watch itself could also be infringing. The Court finds,
however, that there is at least a genuine dispute of material fact as to whether full disclosure has
been made.
Plaintiff has provided numerous photographs of The Lancaster. See Aschen Declaration,
Exh. 1, Dkt. No. 84-1. The face of the clock has an antique style. The original Hamilton mark is
still visible. Even though it is a wristwatch, the large knob characteristic of pocket watches is
still attached to the watch. The back of the watch is mostly glass, and the inner workings of the
movements are visible, along with "Hamilton Watch Co." and a serial number which is on a
movement part. A ring surrounds the glass. On that ring is written '"The Lancaster,"' "Vortic
Watch Co.," "American Artisanship," and another serial number.
From the watch' s appearance, a reasonable factfinder could determine that full disclosure
has been made and that there is not a likelihood of confusion. The watch looks like a pocket
watch that has been re-appropriated into being a wristwatch. A reasonable factfinder could
determine that the watch looks obviously modified. See Ford Motor Co. v. Ultra Coachbuilders,
Inc., Case No. EDCV 00-00243-VAP, 2000 U.S. Dist. LEXIS 20173, at *15-*16 (C.D. Cal. July
11, 2000) (stretch limousine version of Ford automobile did not infringe on Ford's trademark
because the modifications were "apparent"). A reasonable factfinder could further determine
that the V ortic mark and serial number predominate over uses of "Hamilton." Looking at these
aspects of the watch together, a reasonable factfinder could conclude that The Lancaster would
present to the ordinary prudent purchaser as a watch made by Vortic that used old Hamilton
components. This could be sufficient to satisfy the full disclosure standard.
Plaintiffs may argue that there is no genuine dispute of material fact on the disclosure
issue, because it is uncontested that the watch itself does not spell out its relationship to
Hamilton. To be sure, even the most defendant-friendly conclusions that a reasonable factfinder
8
could draw from the physical appearance of the watch would not be the equivalent of a literal
disclaimer; but the Supreme Court has never required explicit explanations on the product itself.
In Champion, the Court allowed the defendant's product to retain the plaintiffs mark as long as
"used" or "repaired" was stamped on the sparkplugs, even though there was no requirement that
defendant's own mark appear on the merchandise. Champion, 331 U.S. at 129-30. While any
reasonable consumer, viewing the sparkplug in isolation, would have realized that they were
restored, they may have very well erroneously attributed defects in the restoration process to
Champion. Yet, the Supreme Court found that there was full disclosure for trademark
infringement purposes, in part because the packaging would inform consumers that the defendant
had performed the restoration. Id. at 127, 129. In this case, there has been more extensive
modifications and repairs, but more disclosure has arguably been provided; a reasonable
factfinder could find that the watch itself effectively communicates that it was made by Vortic
with Hamilton components. This would be an even more accurate picture of the product than a
consumer would have received from the unpackaged sparkplugs in Champion.
Plaintiff also points to cases involving watches and applying Champion from the Fifth,
Seventh, and Ninth Circuits to support its argument that The Lancaster is infringing as a matter
oflaw. See Rolex Watch, US.A., Inc. v. Michel Co., 179 F.3d 704 (9th Cir. 1999); Rolex Watch
USA, Inc. v. Meece, 158 F.3d 816 (5th Cir. 1998); Bulova Watch Co. v. Allerton Co., 328 F.2d 20
(7th Cir. 1964). Bulova, Meece, and Michel all involved infringement actions where the
defendants either altered the cases of watches made by the plaintiffs or placed the plaintiffs'
movements into new cases, while still maintaining the plaintiffs' trademarks. All three courts
found that the "reconditioning or repair" was so extensive that more thorough explanations
would be required to achieve full disclosure. They further found that providing an explanation
that would properly explain the origin of those particular watches was infeasible. Accordingly,
9
they held that the defendants could not use the plaintiffs' trademark on the watches. See Michel,
179 F.3d at 710; Meece, 158 F.3d at 825; Bulova, 328 F.3d at 23-24.
The Court does not read Bulova, Meece, and Michel as suggesting that a watch movement
in a new casing can never bear the trademark of the movement manufacturer. Rather, it reads
them for the proposition that there was no feasible way to use the movement manufacturer's
mark while providing full disclosure for those specific watches. For example, the Bulova court
explained that "the exposed portion of the dial of the cased 6 3/4 x 8 ligne movement is such
[that] no appropriate and readable legend could be placed thereon which would satisfy the
disclosure requirements the facts and circumstances here demand." Bulova, 328 F.3d at 24; see
also Michel, 179 F.3d at 710 ("Nor would the face of the watch support a more adequate
legend"). In this case, a reasonable factfinder could determine that a feasible solution was
achieved. Moreover, Plaintiffs interpretation of these cases would impermissibly conflict with
Champion.
The presence of a genuine dispute of material fact on full disclosure as to both the
advertisements and the watch itself strongly weighs against granting summary judgment.
2. Polaroid Factors
Analysis under the Polaroid factors supports this conclusion. See Arrow Fastener Co. v.
Stanley Works, 59 F.3d 384,400 (2d Cir. 1995) ("[I]t is incumbent upon the district judge to
engage in a deliberate review of each [Polaroid] factor, and, if a factor is inapplicable to a case,
to explain why."); Bumble Bee Seafoods, 2004 U.S. Dist. LEXIS 13897, at *19-24 (selectively
applying Polaroid factors). The strength of mark and similarity factors are not relevant in this
case, because Defendants admit to using the mark but assert that their use is not confusing. The
proximity of the products, bridging the gap, and the quality of the product are all also unhelpful,
because application of these factors would penalize defendants who have only lightly modified a
10
genuine product. Yet, under Champion, these are the defendants who have the lowest burden to
meet the full disclosure standard. See Champion, 331 U.S. at 129.
This leaves actual confusion, the defendant's good faith, and the sophistication of the
buyers as relevant Polaroid factors. On actual confusion, Plaintiff points primarily to an email
that Hamilton's Canadian affiliate received from a potential customer. Aschen Declaration, Exh.
4, 29:13 to 37:23, Dkt. No. 84-4. It states: "my friend is looking for a vintage Hamilton as per
attached. Would it be available? If so how much would it be?" Memorandum of Law in Support
of Summary Judgment, at 6, Dkt. No. 83. The sender then attaches the second of the three
Vortic advertisements discussed above. Defendants object to the admissibility of this email.
Assuming that it is admissible, the email is still not determinative for Plaintiff at the summary
judgment stage. Drawing all inferences in favor of the Defendant, the email could suggest only
that the buyer is in the market for a vintage Hamilton watch and the advertisement gave her the
idea. It does not necessarily support the proposition that the buyer thinks that Hamilton made the
watch. Other than this email, there is no evidence in the record of actual confusion. There is a
genuine dispute of material fact as to this factor.
On good faith, there is also a genuine dispute of material fact. "The Polaroid good faith
factor 'looks to whether the defendant adopted its mark with the intention of capitalizing on
plaintiffs reputation and goodwill and any confusion between his and the senior user's
product."' Nora Bevs., 269 F.3d at 124 (quoting Lang v. Ret. Living Pub. Co., Inc., 949 F.2d
576, 583 (2d Cir. 1991). This factor has less force in the modified genuine products context,
because under Champion, a defendant may, under the right circumstances, purposefully use the
plaintiff's mark so that their product can benefit from the plaintiff's reputation and goodwill.
Champion, 331 U.S. at 130. Thus, merely displaying the holder's mark cannot give rise to a
presumption of bad faith. Yet, intentionally using a mark to capitalize on confusion would.
11
Given that a reasonable factfinder could determine that Defendants properly gave full disclosure
when using the Hamilton mark, there is at least a genuine dispute as to Defendant's good faith as
well.
Last is the sophistication of the consumers. As the Second Circuit has explained, "[t]he
greater the value of an article the more careful the typical consumer can be expected to be."
McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1137 (2d Cir. 1979). It is undisputed that
these watches are expensive. See Memorandum of Law in Support of Summary Judgment, at
13, Dkt. No. 83; see also Swatch Group (US.) Inc. v. Movado Corp., No. 01 Civ. 0286, 2003
U.S. Dist. LEXIS 6015, at *14 (S.D.N.Y. Apr. 9, 2003) ("The average consumer spending
hundreds of dollars on a watch that will be worn for years is likely to give close attention to the
type of watch he or she is buying."). Additionally, Plaintiff has raised no other undisputed facts
regrading consumer sophistication. This factor weighs against summary judgment.
The Court finds that there are genuine disputes of material fact as to both the presence of
full disclosure under Champion and as to the applicable Polaroid factors. The Court thus denies
summary judgment on the trademark infringement claim.
B.
Federal Counterfeiting Claim
In order to prevail on a counterfeiting claim, Plaintiff must show that use of the
counterfeit mark is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. §
1114(1)(a). Since there is at least a genuine dispute of material fact on whether there is a
likelihood of confusion, summary judgment is denied for the counterfeiting claim as well.
C.
Dilution Claim
Plaintiff has also moved for summary judgment on both Federal and New York dilution
claims. However, the Complaint contains only a New York dilution claim under New York
General Business Law § 360-l, evidently on a blurring theory. See Dkt. No. 1. In order to
12
succeed on a New York dilution claim, a plaintiff must show a likelihood of dilution. Deere &
Co. v. MID Prods., 41 F.3d 39, 42 (2d Cir. 1994). "To determine the likelihood of dilution by
blurring [under New York law], courts consider six factors similar to the Polaroid factors."
Lapine v. Seinfeld, 375 F. App'x 81, 85 (2d Cir. 2010); see NY. Stock Exch., Inc. v. NY., NY.
Hotel, LLC, 293 F.3d 550, 558 (2d Cir. 2002) (Six factor New York dilution test considers "(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"). As discussed above, the Polaroid factors do not support
summary judgment for the Plaintiff.
Plaintiffs motion for summary judgment on its dilution claim is denied.
D.
Unfair Competition Claims
As Plaintiff acknowledges, the standard for a trademark infringement claim under 15
U.S.C. § 1114(1) is the same as the standard for an unfair competition claim under 15 U.S.C. §
1125(a). See Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978) (per
curiam) ("It is well settled that the crucial issue in an action for trademark infringement or unfair
competition 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"); Legends Are Forever, Inc. v. Nike, Inc., 58 F. Supp. 3d 197, 205-06 (N.D.N.Y.
2014). A New York unfair competition claim is identical to its federal counterpart but adds the
requirement that plaintiff must prove bad faith. See Luxsoma LLC v. Leg Res., Inc., 289 F. Supp.
3d 514, 526-27 (S.D.N.Y. 2018). Because the Court denies summary judgment on trademark
infringement, it denies summary judgment as to the unfair competition claims as well.
III.
MOTION TO STRIKE DECLARATION OF ANTOINE HALLER
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Defendants object to the declaration of Antoine Haller, Dkt. No. 85. Because the Court
would reach the same result regardless of whether the declaration is considered, Defendants'
motion is denied as moot. See Callari v. Blackman Plumbing Supply, Inc., 988 F. Supp. 2d 261,
293 (E.D.N.Y. 2013); Fraser v. Fiduciary Trust Co. Int'!, No. 04-cv-6958, 2009 U.S. Dist.
LEXIS 75565, at *3-*4 n.2 (S.D.N.Y. Aug. 25, 2009), aff'd, 396 F. App'x 734 (2d Cir. 2010)
("The Court need not strike or otherwise disregard the declarations submitted by Plaintiff and his
counsel in order to reach this conclusion. Consequently, Defendants' motion to strike all or part
of these declarations is moot.").
IV.
MOTION TO TRANSFER
After Plaintiff moved for summary judgment, Defendants moved to transfer the case to
the District of Colorado under 28 U.S.C. § 1404. This motion is denied.
"While motions to transfer are typically considered at an early stage in a case ... nothing
bars a court from granting a motion to transfer venue at a later stage in a case." Jones v.
Walgreen Co., 463 F. Supp. 2d 267,271 (D. Conn. 2006). Yet, "[t]he timing of a motion to
transfer venue, although not by itself normally dispositive, is relevant." Commercial Union Ins.
Co. v. Emery Air Freight Corp., No. 92-cv-6513, 1995 U.S. Dist. LEXIS 5140, at *3 (S.D.N.Y.
Apr. 11, 1995) (summarily denying a motion to transfer when plaintiffs direct case had already
been submitted in writing during a bench trial).
A district court may transfer a case "for the convenience of parties and witnesses, in the
interest of justice." 28 U.S.C. § 1404(a). Because there is no dispute among the parties that the
District of Colorado would be an appropriate forum for this action, the only question is whether
the transfer is in fact warranted. Tianhai Lace USA, Inc. v. Forever 21, Inc., No. 16-cv-5950,
2017 U.S. Dist. LEXIS 168187, at *3 (S.D.N.Y. Sept. 27, 2017). The Court has "broad
discretion in making determinations of convenience under Section 1404(a) and notions of
14
convenience and fairness are considered on a case-by-case basis." D.H Blair & Co. v.
Gottdiener, 462 F.3d 95, 106 (2d Cir. 2006). "Among the factors to be considered ... are, inter
alia: (1) the plaintiffs choice of forum, (2) the convenience of witnesses, (3) the location of
relevant documents and relative ease of access to sources of proof, (4) the convenience of
parties, (5) the locus of operative facts, (6) the availability of process to compel the attendance of
unwilling witnesses, and (7) the relative means of the parties." New York Marine & Gen. Ins.
Co. v. Lafarge N Am., Inc., 599 F.3d 102, 112 (2d Cir. 2010) (quotation omitted). Courts have
also considered familiarity with the governing law and judicial economy in making transfer
determinations. See, e.g., CYI, Inc. v. Ja-Ru, Inc., 913 F. Supp. 2d 16, 19 (S.D.N.Y. 2012).
Additionally, "the party requesting transfer carries the burden of making out a strong case for
transfer." New York Marine at 114 (quotation omitted) (holding that a "clear and convincing"
standard is appropriate when deciding motions to transfer).
While a plaintiffs choice of forum is generally entitled to great weight, "the deference a
court gives to the plaintiffs forum choice decreases where the operative facts ... bear little
material connection to the chosen forum." Tianhai Lace USA, 2017 U.S. Dist. LEXIS 168187, at
*16 (quotation omitted). As discussed below, this litigation has virtually no connection to this
District, so this factor weights only mildly against transfer. The convenience of the witnesses
favors transfer, as it is undisputed that no witnesses are located near New York while at least one
is in Colorado. The location of relevant documents and relative ease of access to sources of
proof is largely irrelevant given that discovery is closed in this case. Moving this case to
Colorado would obviously increase convenience to Defendants, who are Colorado based.
However, it could potentially inconvenience the Plaintiffs, who claim they would obtain new
local counsel if the case was moved. This factor mildly favors transfer. The locus of operative
facts variable strongly weighs in favor of transfer, as only two potentially infringing watches
15
were sold to New Yorkers. The sixth factor, the availability to compel the attendance of
witnesses, is neutral, as both New York and Colorado appear to be adequate in this regard. The
relative means of the parties also favors transfer. The evidence on this point suggests that
Defendants have significantly fewer resources than Plaintiff, which is part of a large
multinational conglomerate. Since Plaintiff brings some New York state law claims, familiarity
with the applicable laws weighs against transfer. Judicial economy weighs very strongly against
transfer. If this case is transferred, a new judge would have to invest significant resources to
gain familiarity with this action.
Considering the factors, the Court finds that Defendants have not met their burden of
making a strong case for transfer. The issue of judicial economy and timeliness of Defendants'
motion outweigh everything else. It is very late in the litigation process to change forums and
Defendants do not demonstrate an overwhelming need to litigate in Colorado. See Commercial
Union Ins., 1995 U.S. Dist. LEXIS 5140, at *3; United States v. Stamps, No. 18-cv-1106, 2018
U.S. Dist. LEXIS 195970, at *8-*9 (E.D.N.Y. Nov. 16, 2018) (denying motion to transfer when
"lion's share" of discovery had been completed); cf Genden v. Merrill, Lynch, Pierce, Fenner &
Smith, Inc., 621 F. Supp. 780, 783 (N.D. Ill. 1985) (granting motion to transfer case made during
discovery when "overwhelming number of witnesses and documents are located" in transferee
district). Virtually all of Defendants' arguments, especially those regarding operative facts,
could have been made earlier in this litigation. Plaintiffs misconduct during the settlement
process with Judge Wang, see Dkt. No. 63, does not justify Defendants' delay. And in any
event, that process concluded over seven months before the motion was made. In that time,
Plaintiff moved for summary judgement. The motion to transfer is denied.
V.
PLAINTIFF'S SEALING REQUESTS
16
Plaintiff seeks to make certain redactions in its filings and exhibits. See Dkt. No. 76. Its
justification is that the material contains "proprietary or trade secret information that has been
designated 'Confidential-Attorneys' Eyes Only' by counsel pursuant to the stipulated Protective
Order." Id. Under Lugosch v. Pyramid Co., a presumption of public access attaches to judicial
documents. 435 F.3d 110, 119-20 (2d Cir. 2006). In order to overcome the presumption, there
must be "specific, on the record findings." Id. at 120 (quotation omitted). "[E]ven if material is
properly designated as Confidential or Highly Confidential by a protective order governing
discovery, that same material might not overcome the presumption of public access once it
becomes a judicial document." Dodona I, LLC v. Goldman, Sachs & Co., 119 F. Supp. 3d 152,
155 (S.D.N.Y. 2015); see also Newsday LLC v. County of Nassau, 730 F.3d 156, 166 (2d Cir.
2013) ("[T]he facts necessary to show good cause for a protective order applicable to discovery
documents that are not yet implicated in judicial proceedings will not necessarily meet the higher
threshold imposed by the First Amendment with respect to judicial documents."). Documents
submitted in support or opposition to a motion for summary judgment are judicial documents.
Bernsten v. O'Reilly, 307 F. Supp. 3d 161, 166 (S.D.N.Y. 2018). However, Plaintiff has not
provided the Court with sufficiently particularized justifications, which would enable the Court
to determine whether such specific findings are warranted. Accordingly, Plaintiffs motion to
seal is denied.
Within ten business days of the date of this Order, Plaintiff may resubmit its denied
redaction request. In addition, Plaintiff shall support its application for redactions and/or sealing
with authority and articulated reasoning that is specific to the content that it seeks to keep under
seal. If no further application is made within this time frame, the unredacted materials must be
filed on the public docket.
VI.
CONCLUSION
17
For the foregoing reasons, Defendants' motion for summary judgment is DENIED,
Plaintiffs motion to strike the Haller declaration is DENIED as moot, Plaintiffs motion to
transfer is DENIED, and Defendants' motion to seal is DENIED as well, with leave to refile as
directed.
A final pre-trial conference in this matter will be scheduled by separate order.
This resolves Dkt. Nos. 77, 95, 97.
Dated: September _ _, 2019
New York, New York
United States District Judge
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