International Diamond Importers, Inc. v. Oriental Gemco (N.Y.), Inc.
64 F. Supp. 3d 494
S.D.N.Y.2014Background
- Meira T. designs, manufactures, and sells high-end jewelry in the U.S. and abroad; it holds copyright registrations for seven pieces and a pending Fall 2011 Earrings application.
- Plaintiff alleges Defendants Oriental NY, Oriental HK, and Oriental India infringe Meira T.’s copyrights and trade dress, and engage in unfair competition and deceptive practices.
- Foreign Defendants are alleged to be three entities with disputed relationships to each other and to NK Nigam, who is said to control or influence the group.
- Meira T. claims a protectible, off-center trade dress with a large center jewel and uneven side pendants; it asserts secondary meaning and strong recognition.
- Defendants move to dismiss for lack of jurisdiction, improper service, failure to state claims, and forum non conveniens; Plaintiff seeks jurisdictional discovery.
- The Court grants jurisdictional discovery for foreign-defendant relationship and specific jurisdiction questions, and denies in part and grants in part other motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has personal jurisdiction over Foreign Defendants | Plaintiff asserts in-state presence or agency-based ties exist. | Defendants argue lack of sufficient contacts and no 'at home' or agency basis. | Jurisdictional discovery granted; jurisdiction unresolved pending discovery |
| Whether copyright infringement claims are cognizable given registration status | Meira T. owns valid copyrights and infringement occurred; registration pending may suffice. | Registration/ preregistration is required before action can proceed. | Some pieces dismissed for lack of registration; others remain under trade dress and copyright theories |
| Whether Meira T. pleads valid trade dress and likelihood of confusion | Trade dress is non-functional, has secondary meaning, andconflicts with Defendants’ look. | Trade dress lack of non-functionality or likelihood of confusion; insufficient proof. | Trade dress infringement claim survives; likelihood of confusion supported by Polaroid factors |
| Whether Nigam can be personally liable for Lanham Act and Copyright Act claims | Nigam as president controlled and benefited from infringing acts. | Need more specifics on control and knowledge; potential dismissal of personal claims. | Nigam liable under Lanham Act and subject to contributory/vicarious theories for copyright |
Key Cases Cited
- Daimler AG v. Bauman, 134 S. Ct. 746 (U.S. 2014) (at-home test for general jurisdiction; Daimler cited for exceptional alter-ego analysis)
- Twombly v. Bell Atlantic Corp., 550 U.S. 544 (U.S. 2007) (plausibility pleading standard)
- Iqbal v. Hasty, 556 U.S. 662 (U.S. 2009) (heightened pleading standard; plausibility requirement)
- Jorgensen v. Epic/Sony Records, 351 F.3d 46 (2d Cir. 2003) (probative similarity and total concept/eye appeal in copyright)
- Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001) (scènes à faire and originality limits in copyright)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1962) (eight-factor test for likelihood of confusion)
- King v. Captiol Records, Inc., Not applicable (Not applicable) (via discussion in analysis of Lanham Act and trade dress)