Coach, Inc. v. Horizon Trading USA Inc.
908 F. Supp. 2d 426
S.D.N.Y.2012Background
- Coach, Inc. and Coach Services, Inc. sue Horizon Trading USA Inc. and Ke Yi Fang for trademark, copyright, and related claims rooted in counterfeit sunglasses bearing Coach’s Signature C design.
- Coach owns the registered Signature C Mark and corresponding copyrights; marks are widely recognized and protectible.
- Horizon Trading is a New York importer/exporter wholesaler (address 44 West 29th Street) tied to Fang; Fang has ownership interests in Horizon.
- Coach’s investigative firm APG purchased counterfeit Horizon sunglasses (GC/CC designs) to substantiate alleged infringement.
- Defendants failed to respond to Coach’s requests for admission; Coach moves for summary judgment on multiple claims.
- Judge Engelmayer grants summary judgment on trademark, copyright, unfair competition, and unjust enrichment claims, and denies only the state-law deceptive trade practices and false advertising claims; statutory damages and injunctive relief are awarded conclusions are discussed later in the order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement likely to cause confusion | Coach’s Signature C Mark is valid and protected | Defendants used different marks not confusingly similar | Yes; marks are counterfeit and likely to cause confusion |
| Copyright infringement | Defendants copied protectible elements of Signature C | No copying shown beyond similarity | Yes; substantial similarity shown and access proven |
| State-law trademark infringement (New York common law) | Same analysis as Lanham Act applies | No additional distinct state-law theory | Granted as duplicative of Lanham Act ruling |
| Deceptive trade practices/false advertising under NY GBL 349-350 | Unauthorized use misleads the public | Injury not beyond ordinary trademark infringement | Denied on summary judgment (defendants win) |
| Statutory damages and injunction | Award up to $200,000 per counterfeit mark per type of goods; deterrence | $100,000 per mark per type of goods awarded; permanent injunction entered |
Key Cases Cited
- Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F.Supp.2d 284 (S.D.N.Y. 2003) (counterfeit marks inherently cause confusion; guideline for damages and injunctions)
- Latimore v. NBC Universal TV Studio, 480 Fed.Appx. 649 (2d Cir. 2012) (substantial similarity and access can prove copyright infringement)
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) (Lanham Act precepts and ownership; prima facie evidence of protectible mark)
- Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (Polaroid factors; counterfeit marks and irreparable harm considerations)
- Tiffany v. Luban, 282 F.Supp.2d 123 (S.D.N.Y. 2003) (statutory damages considerations; deterrence and scale of infringing goods)