NYU Langone Health System et al v. Northwell Health, Inc.

Filing 81

OPINION AND ORDER re: 75 MOTION for Reconsideration re: 71 Memorandum & Opinion. filed by NYU Langone Hospitals, NYU Langone Health System. For the foregoing reasons, NYU Langone's motion for reconsideration is GRANTED, a nd its motion for leave to amend the complaint is GRANTED IN PART and DENIED IN PART. As provided in the Court's Leave Opinion, the PAC sufficiently states the trade dress claims (Counts II, V, and VII). The PAC also sufficiently states the t rademark claims (Counts I, III, IV, and VI), but only to the extent that the NYU Langone alleges that its use of the Purple Mark is a protectable trademark in its advertising and signage. Filing an amended complaint containing those claims would ne ither be futile nor cause undue prejudice. By not later than Friday, December 6, 2024, NYU Langone must file an amended complaint containing only the claims the Court has permitted to go forward. The amended complaint must include as exhibits: (1) a redline showing the changes from the initial complaint; and (2) a redline showing the changes from the PAC. The Clerk of Court is respectfully directed to terminate the open motion at Dkt. 75. SO ORDERED. ( Amended Pleadings due by 12/6/2024.) (Signed by Judge Valerie E. Caproni on 11/22/2024) (tg)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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NYU LANGONE HEALTH SYSTEM and
:
NYU LANGONE HOSPITALS,
:
:
:
Plaintiffs,
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-against:
:
:
NORTHWELL HEALTH, INC.,
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:
:
Defendant. :
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USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC #:
DATE FILED: 11/22/2024

23-CV-5032 (VEC)
OPINION AND ORDER

VALERIE CAPRONI, United States District Judge:
Plaintiffs NYU Langone Health System and NYU Langone Hospitals (together, “NYU
Langone”) allege that Northwell Health, Inc. (“Northwell”) copied NYU Langone’s advertising
trade dress to trade off its good will and reputation. In its initial complaint, Dkt. 1, NYU
Langone brought claims under the Lanham Act, the New York General Business Law
(“NYGBL”), and New York common law, all of which Northwell moved to dismiss for failure to
state a claim. The Court granted the motion in part with prejudice and in part without. NYU
Langone moved for leave to file an amended complaint, in which it attempted again to allege
trade dress infringement and added new claims for trademark infringement. The Court granted
NYU Langone leave to amend its complaint as to its trade dress infringement claims but denied
it leave to add trademark infringement claims. NYU Langone then moved the Court to
reconsider the part of its decision that denied it leave to add trademark infringement claims. For
the reasons that follow, the Court GRANTS NYU Langone’s motion for reconsideration and
GRANTS IN PART and DENIES IN PART its motion for leave to amend the complaint as to its
trademark claims.

BACKGROUND
The Court assumes familiarity with the background of this case, which is set forth fully in
the Court’s March 1, 2024 opinion granting Northwell’s motion to dismiss, and the Court’s
September 25, 2024 opinion granting in part and denying in part NYU Langone’s motion for
leave to file an amended complaint. See Opinion, Dkt. 55 (“MTD Opinion”); Opinion, Dkt. 71
(“Leave Opinion”). In brief, NYU Langone and Northwell are not-for-profit health systems that
operate in New York, and NYU Langone alleges that Northwell copied its advertising trade dress
and trademark following NYU Langone’s push into the Long Island market where Northwell had
been dominant. PAC, 1 Dkt. 59 ¶¶ 3, 5, 42–44, 47–50.
In the PAC, NYU Langone alleges that its trade dress consists of: “(a) a solid, single
background color of purple, (b) headlines using white Benton Sans font lettering, (c) stacking of
headlines with left alignment, and (d) periods as punctuation” (collectively, the “Advertising
Trade Dress”). PAC ¶ 24. NYU Langone further alleges that the shade of purple used in its
trade dress is PMS 2597 on the Pantone scale or a similar shade if the advertising medium
requires a slightly different shade to achieve a consistent appearance to consumers. Id. The
Court granted NYU Langone leave to amend its trade dress infringement claims. See Leave
Opinion at 20.
NYU Langone decided to add trademark claims that were not included in the initial
complaint. 2 To support these trademark-related claims, the PAC alleges that NYU Langone has

References to the “PAC” are to the Proposed Amended Complaint. NYU Langone filed the PAC under
seal at Dkt. 59 and publicly with redactions at Dkt. 61. Except where noted, the Court draws the background facts
from the Proposed Amended Complaint and assumes the truth of all well-pled allegations.

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NYU Langone’s trademark claims consist of trademark infringement, unfair competition, and false
designation under 15 U.S.C. § 1125(a)(1)(A), as well as trademark dilution under NYGBL § 360-l, common law
trademark infringement, and common law unfair competition.

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an unregistered trademark 3 in its “Purple Mark,” defined as “the color purple” in “the field of
healthcare services in New York.” PAC ¶ 9.
The PAC at times blurs the distinction between NYU Langone’s use of the color purple
generally and the specific Purple Mark that it contends is its trademark. For instance, the PAC
points to the following as mere examples of NYU Langone’s “extensive use of the color purple”:
lettering, a ribbon at an opening ceremony, scrubs, a photography backdrop at an NYU Langone
event, and NYU Langone’s website. Id. ¶ 10. The PAC attaches several pictures as Exhibit A
and describes it as containing “representative examples of NYU Langone’s longtime and
extensive use of the color purple,” id. ¶ 11; Exhibit A, in contrast, is titled “NYU Langone
Purple Mark,” PAC Ex. A, Dkt. 61-2 (emphasis added). Examples in Exhibit A include the use
of purple, often along with the NYU Langone logo, in advertising, signage, and wall-wrapping,
PAC Ex. A at 1–7, 9–12, 15, 17–18; NYU Langone’s website and social media pages, id. at 8,
13–14; brochures, id. at 16; the aforementioned ribbon-cutting ceremony and scrubs, id. at 19; a
host of gift store items including clothing and a teddy bear, id. at 20; and a range of community,
fundraising, and formal events, id. at 21–25. From those descriptions, it appeared that NYU
Langone’s claim adopted Northwell’s internal hyperbolic view that NYU Langone “owns
purple.” PAC ¶ 32.
The PAC alleges that the Purple Mark is used in signage on buildings to identify NYU
Langone’s healthcare facilities and advertising for NYU Langone. PAC ¶¶ 12–15. In addition to
such usage “in marketing and advertising through a multitude of channels,” the PAC also
references the use of the Purple Mark at certain NYU Langone keystone events. Id. ¶ 16. The
Purple Mark purportedly permeates NYU Langone’s “branding, advertising, marketing, website,

NYU Langone alleged that it owns some registered trademarks that include purple designs, see PAC ¶ 22
(trademark of white cross in purple circle), but it has not registered a trademark in the color purple itself.

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logos, PowerPoint presentations, stationery and business cards, a vast array of branded
merchandise, and even the scrubs worn by its medical professionals.” Id. ¶ 21. NYU Langone’s
Advertising Trade Dress features the Purple Mark, id. at p. 10, and NYU Langone’s trademark
claims are premised on its common law ownership of the Purple Mark “in connection with its
healthcare services and facilities located in New York.” Id. ¶ 62; see also id. ¶¶ 80, 84, 104.
In light of the broad description of the Purple Mark and the extensive list of examples
provided in Exhibit A under the header “NYU Langone Purple Mark,” the Court determined that
NYU Langone had not adequately alleged that it owns “a trademark in the color purple that
applies to signage, website design, social media posts, brochures, scrubs, lighting at fundraising
events, and gift store items like t-shirts, teddy bears, sweatshirts, and even pet collars.” Leave
Opinion at 19. The Court determined that NYU Langone failed to state a claim that its expansive
color trademark, applying to such a range of uses within the healthcare industry, was protectable.
Leave Opinion at 17–20.
NYU Langone timely filed a motion for reconsideration. See Dkts. 75–77.
DISCUSSION
I.

Standards for Reconsideration and Leave to Amend
A court’s decision whether to grant a motion for reconsideration “is ultimately a matter of

good sense.” Colvin v. Keen, 900 F.3d 63, 68 (2d Cir. 2018) (quoting Arizona v. California, 460
U.S. 605, 644 (1983) (Brennan, J., concurring in part and dissenting in part)). A court has “wide
discretion” to depart from its prior ruling. Id. at 73. “The major grounds justifying
reconsideration are an intervening change of controlling law, the availability of new evidence, or
the need to correct a clear error or prevent manifest injustice.” Commerzbank AG v. U.S. Bank,
N.A., 100 F.4th 362, 377 (2d Cir. 2024) (citation omitted).

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Courts must “freely give leave [to amend] when justice so requires.” Fed. R. Civ. P.
15(a)(2). The permissive standard reflects the “strong preference for resolving disputes on the
merits.” Williams v. Citigroup Inc., 659 F.3d 208, 212-13 (2d Cir. 2011) (citation omitted).
Leave may be denied for futility, such as where a proposed amended complaint could not
withstand a motion to dismiss. Balintulo v. Ford Motor Co., 796 F.3d 160, 164-65 (2d Cir.
2015). In determining whether a proposed amended complaint would survive a motion to
dismiss, the Court accepts all factual allegations in the proposed amended complaint as true and
draws all reasonable inferences in the light most favorable to the plaintiff. See Gibbons v.
Malone, 703 F.3d 595, 599 (2d Cir. 2013) (citation omitted).
II.

Plaintiffs May Amend the Complaint to Bring Narrower Trademark Claims Than
Asserted in the Proposed Amended Complaint
Although the PAC alleges that NYU Langone claims an expansive trademark in the use

of the color purple “in connection with its healthcare services and facilities located in New
York,” PAC ¶ 62, an allegation that would include (as depicted in Exhibit A) trademark
protection over purple scrubs and purple items in hospital gift shops, in its motion for
reconsideration, NYU Langone disavowed such a broad claim. See, e.g., Pl. Mem., Dkt. 76, at 4
n.5 (clarifying that NYU Langone is “asserting its purple color mark only in connection with its
advertising of healthcare services, not the advertising medium itself” (emphasis removed)).
Upon reconsideration and accepting Plaintiffs’ clarification that its claim is limited to the use of
purple in advertising, the Court will permit NYU Langone to include trademark claims in its
amended complaint only to the extent that it claims a trademark in the Purple Mark as a uniform,
background color in its advertising and signage.
The Second Circuit has held that “no per se rule” governs whether a single-color mark
merits trademark protection. Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc.,

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696 F.3d 206, 224 (2d Cir. 2012). Rather, “a single-color mark” in a particular industry can
receive trademark protection if it is “distinctive;” that it is, if it “acquire[s] secondary
meaning.” Id. at 216, 225-26. If a single-color mark is distinctive, courts then analyze “whether
[the] defendant’s use of a similar mark is likely to cause consumer confusion.” Id. at 217
(quoting Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006)).
“Factors that are relevant in determining secondary meaning include ‘(1) advertising
expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage
of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and
exclusivity of the mark’s use.’” Id. at 226 (quoting Genesee Brewing Co. v. Stroh Brewing Co.,
124 F.3d 137, 143 n.4 (2d Cir. 1997)).
In its Leave Opinion, the Court analyzed those factors and concluded that NYU Langone
had sufficiently alleged its trade dress claims premised on the infringement of its Advertising
Trade Dress. Leave Opinion at 7–17. One feature of its Advertising Trade Dress is a solid,
single background color of purple — specifically, shade PMS 2597 on the Pantone scale or
similar color to achieve a consistent appearance. PAC ¶ 24. Drawing all reasonable inferences
in the light most favorable to NYU Langone, the PAC alleges that the Advertising Trade Dress
utilizes the Purple Mark. See id. ¶¶ 12–15; PAC Ex. A at 2–7, 9–12, 15, 17–18; see also PAC at
p. 10 (heading titled “NYU Langone Launches Its Distinctive Advertising Trade Dress,
Featuring Its Iconic Purple Mark”) (emphasis removed).
NYU Langone alleges that it has invested “hundreds of millions of dollars” promoting
the Purple Mark, advertisements utilizing the Purple Mark have been successful in generating an
interest in and preference for NYU Langone, and Northwell has attempted to copy the Purple
Mark in its advertising. PAC ¶¶ 21, 27–28, 46, 51, 55–56. Because the Court has already
concluded that these same factors are sufficient for NYU Langone’s Advertising Trade Dress
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infringement claims to survive a motion to dismiss, Leave Opinion at 12–13, and the Purple
Mark is one feature of the Advertising Trade Dress, NYU Langone has sufficiently alleged that
its Purple Mark carries secondary meaning, but only as a uniform, background color within NYU
Langone’s advertising and signage. Cf. Christian Louboutin, 696 F.3d at 226-28 (record
supported protectable red trademark in the bottom sole of a shoe, contrasting with the adjoining
portion, but not a monochromatic red shoe).
For the same reasons discussed in the Court’s prior opinion, Plaintiffs have adequately
alleged that Northwell’s use of this same shade of purple as a uniform background color in
advertising or signage is likely to confuse consumers. Leave Opinion at 14–17.
CONCLUSION
For the foregoing reasons, NYU Langone’s motion for reconsideration is GRANTED,
and its motion for leave to amend the complaint is GRANTED IN PART and DENIED IN
PART. As provided in the Court’s Leave Opinion, the PAC sufficiently states the trade dress
claims (Counts II, V, and VII). The PAC also sufficiently states the trademark claims (Counts I,
III, IV, and VI), but only to the extent that the NYU Langone alleges that its use of the Purple
Mark is a protectable trademark in its advertising and signage. Filing an amended complaint
containing those claims would neither be futile nor cause undue prejudice. 4

NYU Langone’s alternative request for the Court to certify the Leave Opinion for interlocutory appeal
pursuant to 28 U.S.C. § 1292(b) is denied as moot.

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By not later than Friday, December 6, 2024, NYU Langone must file an amended
complaint containing only the claims the Court has permitted to go forward. The amended
complaint must include as exhibits: (1) a redline showing the changes from the initial complaint;
and (2) a redline showing the changes from the PAC.
The Clerk of Court is respectfully directed to terminate the open motion at Dkt. 75.
SO ORDERED.
________________________
VALERIE CAPRONI
United States District Judge

Date: November 22, 2024
New York, New York

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