Hamilton International Ltd. v. Vortic LLC et al

Filing 128

MEMORANDUM & ORDER: re: 117 MOTION for Reconsideration re; 115 Memorandum & Opinion filed by Hamilton International Ltd. For the foregoing reasons, Plaintiff's motion for reconsideration is denied. In light of the upcoming trial scheduled to begin on February 19, 2020, the Court alters the schedule for pretrial filings. See Dkt. No. 126. Pre-trial materials are due on January 24, 2020. Oppositions to motions in limine, if any, are due on February 5, 2020, and replies, if any, are due on February 11, 2020. This resolves Dkt. No. 117., ( Responses due by 2/5/2020, Replies due by 2/11/2020.) (Signed by Judge Alison J. Nathan on 1/10/2020) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

Hamilton International Ltd.,
Plaintiff,
17-CV-5575 (AJN)(OTW)

-vMEMORANDUM & ORDER
Vortic LLC, et al.,
Defendants.

ALISON J. NATHAN, District Judge:
Plaintiff Hamilton International Limited ("Hamilton") moves for reconsideration of the
Court's September 30, 2019 Opinion and Order denying summary judgment on its infringement,
counterfeiting, dilution, and unfair competition claims against Defendant V ortic LLC ("Vortic")
and its owner Defendant Robert Custer. See Opinion and Order, Dkt. No. 115 [hereinafter SJ
Op.]. For the reasons stated below, the motion is denied.

I.

BACKGROUND
The Court assumes the parties' familiarity with this action. See SJ Op. at 1-2. Defendant

V ortic specializes in restoring antique pocket watches and converting them into wristwatches.
One of their watches, called "The Lancaster" is made with a restored, "Railroad-Era" movement
(i.e. internal mechanism), face, and hands from pocket watches originally produced by the
Hamilton Watch Company. Hamilton sued Defendants for trademark infringement,
counterfeiting, dilution, and unfair competition.

II.

LEGALSTANDARD
"A motion for reconsideration should be granted only when the [moving party] identifies

an intervening change of controlling law, the availability of new evidence, or the need to correct

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a clear error or prevent manifest injustice." Kole! Beth Yechiel Mechil ofTartikov, Inc. v. YLL
Irrevocable Tr., 729 F.3d 99, 104 (2d Cir. 2013) (internal quotation marks omitted). A movant
must typically "point to controlling decisions or data that the court overlooked-matters, in other
words, that might reasonably be expected to alter the conclusion reached by the court." Shrader
v. CSXTransp., Inc., 70 F.3d 255,257 (2d Cir. 1995). These requirements are stringent because
"reconsideration of a previous order is an extraordinary remedy to be employed sparingly in the
interests of finality and conservation of scarce judicial resources." Seoul Viosys Co., Ltd. v. P 3
Int'! Corp., 16-cv-6276, 2018 U.S. Dist. LEXIS 5997, at *4-*5 (S.D.N.Y. Jan. 12, 2018)
(quotation omitted). For this reason, "[a] motion for reconsideration may not be used to advance
new facts, issues or arguments not previously presented to the Court, nor may it be used as a
vehicle for relitigating issues already decided by the Court." RF.MA.S., Inc. v. So, 640 F. Supp.
2d 506, 509 (S.D.N.Y. 2009) (quoting Davidson v. Scully, 172 F. Supp. 2d 458,461 (S.D.N.Y.
2001)).

III.

DISCUSSION
Plaintiff first contends that the Court's "full disclosure" analysis, based on Champion

Spark Plug Co. v. Sanders, is somehow incompatible with a traditional likelihood of confusion
analysis that examines "whether numerous ordinary prudent purchasers are likely to be misled or
confused as to the source of the product in question." Playtex Prods. v. Georgia-Pacific Corp.,
390 F.3d 158, 161 (2d Cir. 2004) (quotation omitted). But there is no conflict between the
Supreme Court and Second Circuit here. As the Court explained, it considered the existence of
"full disclosure" only to the extent that "it prevents 'numerous ordinary prudent purchasers' from
.

being 'misled or confused as to the source of the product."' SJ Op. at 5 (quoting Champion
Spark Plug Co. v. Sanders, 331 U.S. 125, 130 (1947); Playtex Prods., 390 F.3d at 161).

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Plaintiff argues that, as part of the Court's full disclosure analysis, it improperly
"consider[ed] whether [an advertisement] advises consumers 'how Vortic obtains its parts,'
rather than whether the disclosure eliminates the likelihood that a substantial number of
consumers will be confused concerning whether the Accused Watches were sponsored by,
affiliated with, or connection to Hamilton." Memorandum of Law in Support of the Motion for
Reconsideration, Dkt. No. 117-1, at 3. These modes of analysis are not in tension with each
other. If an advertisement effectively communicates "how Vortic obtains its parts," then it is
unlikely that an appreciable number of consumers would believe that the parts were obtained
with sponsorship, affiliation, or connection with Hamilton. As the Opinion noted, the Supreme
Court as well as courts in this Circuit have 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., Champion Spark Plug Co., 331 U.S. at 130; 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. 04cv-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), aff'd mem., 28 F.3d 102 (2d Cir.
1994).
Likewise, Plaintiff objects to the following analysis regarding a Vortic print
advertisement: "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." SJ Op. at 6. Plaintiff argues that the Court instead should consider "whether the ad
communicates to a substantial number of consumers that the watch includes an original,
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unmodified Hamilton movement that delivers Hamilton quality and reliability, and that Hamilton
stands behind the movements." Memorandum of Law in Support of the Motion for
Reconsideration, Dkt. No. 117-1, at 5. But Plaintiff again raises a distinction without a
difference. If an ad sufficiently conveys that the watches are produced by Vortic and that Vortic
uses old Hamilton watches only as a source of parts for their restorations, then it is quite unlikely
that a substantial number of consumers will think that the "watch includes an original,
unmodified Hamilton movement that delivers Hamilton quality and reliability, and that Hamilton
stands behind the movements." Id.
Plaintiff additionally claims that "[w]hether or not the ads communicate that the
movements were 'restored' is not relevant" to evaluating likelihood of confusion. Memorandum
of Law in Support of the Motion for Reconsideration, Dkt. No. 117-1, at 3. But this contention
is directly in conflict with the Supreme Court in Champion. See Champion Spark Plug Co., 331
U.S. at 130. The entire analysis in that case turned on the fact that the sparkplugs at issue were
restored and that there was "full disclosure" of that restoration. Id. This Court is not at liberty to
disregard binding precedent.
Moreover, just as the fact that "inferiority is expected in most second-hand articles"
affected the adequacy of the disclosure in Champion, consumer expectations about antique or
restored watches are relevant this case. Id at 129. As the Opinion explained, a reasonable
factfinder could determine that "[the modification made by Vortic] is expected in [antique
watches or watch movements]." Id. And if an advertisement conveys that a watch is historic or
restored, then it is therefore unlikely that substantial numbers of consumers will believe that the
watch movement is unmodified.
In short, a reasonable factfinder could conclude that the vast majority of ordinarily
prudent purchasers would interpret the ads as communicating that V ortic' s only connection to
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Hamilton is that it uses and restores antique Hamilton watch movements for its product. The
reasonable factfinder could also conclude that the vast majority of ordinarily prudent purchaser
would expect the kind of modifications used by V ortic in a historic, restored watch. Based on
Champion, a reasonable factfinder that so concluded would find that there is not a likelihood of
confusion.
Plaintiff attempts to distinguish Champion on two bases. First, Plaintiff appears to
suggest that Champion's full disclosure standard is met only if the product states "repaired" or
"used." The Court does not interpret Champion so narrowly, instead reading it as focusing on
whether "full disclosure" in some form is provided. Id. at 130. The Court found that a
reasonable factfinder could determine that The Lancaster provides "an even more accurate
picture of the product than a consumer would have received from the unpackaged sparkplugs in
Champion." SJ Op. at 9. The Court accordingly denied summary judgment on that basis.
Second, Plaintiff argues that V ortic' s advertisements do not convey that the movements have
been modified or restored. But as the Court previously noted, a reasonable factfinder could
determine that the advertisements do just that. SJ Op. 6-7.
Plaintiff also objects to the fact that the Court applied only three of the eight Polaroid
factors. The Second Circuit, however, has explained that a court need not apply every Polaroid
factor in every trademark infringement case. See Int 'l Info. Sys. Sec. Certification Consortium v.
Sec. Univ., LLC, 823 F.3d 153, 160 (2d Cir. 2016). Rather "it is incumbent upon the district
judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to
explain why." Arrow Fastener Co. v. Stanley Works, 59 F.3d 384,400 (2d Cir. 1995). The
Court engaged in a deliberate review, and in this case found that application of five of the factors
would have directly conflicted with the Supreme Court's rationale in Champion. See SJ Op. at
10-11. Therefore, they were "inapplicable to [the] case." Arrow Fastener Co., 59 F.3d at 400.

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Indeed, Plaintiff itself appears to ask this Court to effectively disregard the last Polaroid factor,
consumer sophistication, when it states that "[i]n this case, any perceived consumer
sophistication does not reduce the likelihood of confusion." Memorandum of Law in Support of
the Motion for Reconsideration, Dkt. No. 117-1, at 10.
Furthermore, Plaintiff argues that the Court failed to address Plaintiff's arguments
regarding downstream consumer confusion that could occur from viewing The Lancaster on its
own. However, the Court explicitly discussed the possibility of consumer confusion from the
watch viewed in isolation. See SJ Op. at 8-10. The Court concluded under Champion that a
reasonable factfinder could determine that the watch, by itself, is unlikely to cause consumer
confusion.
Finally, Plaintiff makes a number of arguments that are inappropriate for a motion for
reconsideration. Plaintiff claims the Court failed to consider wording on Defendants' website
that was subsequently changed after Hamilton sent a cease and desist letter. Plaintiff attaches a
screenshot of the old wording to a new declaration. This is the first time that Plaintiff has
provided this earlier version of the website. Plaintiff also cites to a portion of Custer's
deposition, but has never provided that part of the transcript to the Court. "A motion for
reconsideration may not be used to advance new facts, issues or arguments not previously
presented to the Court." RFMA.S., Inc. v. So, 640 F. Supp. 2d 506, 509 (S.D.N.Y. 2009)
(quoting Davidson v. Scully, 172 F. Supp. 2d 458,461 (S.D.N.Y. 2001)). Plaintiff also raises
arguments it previously made at the summary judgment stage regarding the applicable Polaroid
factors and the message conveyed to consumers from V ortic' s advertisements and The Lancaster
itself. The Court has already evaluated these arguments. Plaintiff cannot use a motion for
reconsideration "as a vehicle for relitigating issues already decided by the Court." Id. (quotation
omitted).
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IV.

CONCLUSION
For the foregoing reasons, Plainiff's motion for reconsideration is denied. In light of the

upcoming trial scheduled to begin on February 19, 2020, the Court alters the schedule for pretrial filings. See Dkt. No. 126. Pre-trial materials are due on January 24, 2020. Oppositions to
motions in limine, if any, are due on February 5, 2020, and replies, if any, are due on February
11, 2020.

This resolves Dkt. No. 117.

Dated: January
2020
New York, New York

United States District Judge

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