11 F. Supp. 3d 317
E.D.N.Y.2014Background
- Carson Optical and Leading sue Prym and Jo-Ann for design patent, trade dress, and related claims tied to three Carson design patents ('726, '779, '063) and to products RimFree, Attach-A-Mag, Clip & Flip, SureGrip; all issues concern magnifiers Prym supplied to Jo-Ann that Jo-Ann sold retail.
- Plaintiffs allege Prym copied Carson’s designs and trade dress and supplied knock-offs to Jo-Ann; Jo-Ann allegedly conspired with Prym to displace Carson as Jo-Ann’s supplier.
- Plaintiffs assert patent infringement, trade dress infringement under the Lanham Act, and state-law unfair competition and tortious interference claims; defendants move to dismiss those common-law claims.
- Court consolidates two actions, grants defendants’ Rule 12(b)(6) motions, and finds the state-law claims preempted or inadequately pled to survive dismissal.
- Plaintiffs seek to replead; court denies leave to amend as futile given prior leave and repeated deficiencies.
- The court discusses preemption standards, the necessity of independent, additional elements for state-law claims, and the stringent requirements for trade dress elements such as nonfunctionality, secondary meaning, and likelihood of confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Preemption of state-law claims by patent law | State law claims include additional elements beyond patent infringement. | Claims are preempted because they rely on patent infringement. | Preempted unless independent elements exist. |
| Unfair competition based on copying design patents | Copying and copying-related misappropriation show bad faith unfair competition. | Allegations reproduce patent issues; no independent misappropriation. | Dismissed as preempted/nonplausible independent theory. |
| Trade dress claim viability under Lanham Act and NY law | SureGrip trade dress is nonfunctional and distinct; likelihood of confusion exists. | Trade dress elements inadequately pleaded; nonfunctionality/secondary meaning not shown. | Counts Seven and Eight dismissed for failure to plead nonfunctionality, secondary meaning, and precise elements. |
| Tortious interference with prospective business relations | Defendants’ predatory pricing and interference harmed Carson’s relations with Jo-Ann. | Claims rely on patent issues and lack malice/independently wrongful acts. | Dismissed as preempted and not showing solely malice or wrongful means. |
| Leave to replead | Amendment could cure deficiencies. | Further amendment would be futile given repeated deficiencies. | Leave to replead denied. |
Key Cases Cited
- Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) (patent preemption of state unfair-competition claims; design rights limited by federal law)
- Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964) (copying unpatented articles barred by state law; need for patent-like protection to be preempted)
- Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1336 (Fed. Cir. 1998) (test for preemption: separate, independent state-law conduct not protected by patent law)
- Hall v. Bed, Bath & Beyond, Inc., 705 F.3d 1357 (Fed. Cir. 2013) ( Hall distinguishes preemption limits where patent-free, unfair competition theories exist)
- National Basketball Ass’n v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) (patent-law preemption limited; intent and circumstances matter)