Crye Precision LLC v. Concealed Carrier LLC
1:23-cv-04469
E.D.N.YSep 17, 2024Background
- Crye Precision LLC holds copyrights and trademarks on the "MultiCam" camouflage pattern, used for military and police apparel and accessories.
- Crye’s sister company, Lineweight LLC, owns the registered copyright, with Crye holding an exclusive license to sublicense and control manufacturing standards.
- Crye also owns two federal trademark registrations for "MultiCam" but has repeatedly failed to obtain trade dress protection, as the USPTO deemed the design functional.
- Concealed Carrier, LLC d/b/a Tacticon Armament sold products bearing a pattern and the "MultiCam" mark that Crye claims are virtually identical to its protected design.
- Crye brought suit for copyright and trademark infringement and sought a preliminary injunction to stop Tacticon from selling allegedly infringing products during litigation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright Validity & Originality | MultiCam is an original, creative work entitled to copyright protection. | The camouflage pattern is functional and not original enough; at best entitled to "thin" protection. | The design is sufficiently original and separable to merit copyright protection. |
| Copyright Infringement | Tacticon’s pattern is substantially similar, showing copying. | There are minor differences; any copyright is minimal and not infringed. | Substantial similarity exists; Crye is likely to succeed on infringement claim. |
| Trademark Validity/Genericide/Fraud | "MultiCam" marks are valid, incontestable, and not generic or fraudulently obtained. | MultiCam is generic/descriptive, and registration was obtained by fraud. | Marks are valid and incontestable; Defenses not supported by the evidence. |
| Likelihood of Confusion/Irreparable Harm | Tacticon’s use of the mark and pattern causes confusion and damages goodwill, justifying an injunction. | There is no likelihood of confusion or irreparable harm; harm, if any, is compensable. | Likelihood of confusion and irreparable harm established; preliminary injunction granted. |
Key Cases Cited
- Mazurek v. Armstrong, 520 U.S. 968 (extraordinary relief standard for preliminary injunctions)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (copyright infringement requires valid copyright and infringement)
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (minimal creativity needed for copyright)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (“ordinary observer” test for similarity)
- Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (separability test for copyright on useful articles)
- Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (trademark infringement and likelihood of confusion)
- Salinger v. Colting, 607 F.3d 68 (irreparable harm standard in copyright injunctions)
- Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (incontestability and secondary meaning of trademarks)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (eight-factor likelihood of confusion test)