Omega SA v. 375 Canal, LLC
984 F.3d 244
2d Cir.2021Background
- Defendant 375 Canal, LLC owns 375 Canal Street, a Manhattan property with a long history of counterfeiting claims and prior settlements/consent orders (City of New York, Louis Vuitton).
- A December 2010 police arrest (seller identified as “Rahman”) was linked to a counterfeit Omega sale; Omega’s counsel notified Canal in 2011. Canal disputes timing/adequacy of its response.
- In May 2012 an Omega investigator purchased a counterfeit Omega at 375 Canal Street; Omega sued Canal for contributory trademark infringement claiming Canal continued to lease space despite knowing or having reason to know of counterfeiting.
- Canal moved for summary judgment arguing Omega needed to identify a specific vendor to which Canal continued to lease despite knowing that vendor infringed; the district court denied the motion.
- A jury found Canal willfully liable for contributory infringement of four Omega marks and awarded $1.1 million in statutory damages; the district court later entered a broad permanent injunction. Canal appealed.
- The Second Circuit dismissed Canal’s appeal of the summary-judgment denial as untimely/interlocutory, reviewed Canal’s jury-instruction and evidentiary challenges on the merits, and affirmed the judgment and injunction (with a partial concurrence/dissent on the appealability point).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Omega had to identify a specific vendor whom Canal continued to lease despite knowing that vendor infringed | Omega argued it could proceed on a willful-blindness theory; it need not identify a specific vendor if Canal deliberately avoided learning identities of infringers | Canal argued Tiffany requires proof that the defendant continued to supply services to a particular, identified infringer | Held for Omega: Tiffany permits contributory liability based on willful blindness; plaintiff need not identify a named infringer if defendant deliberately shielded itself from learning identities of infringers |
| Whether the denial of Canal’s pre-trial summary-judgment motion is reviewable here | Omega argued the summary-judgment denial was interlocutory and not appealable after a full trial; Canal could raise the legal issue via jury-instruction challenge or Rule 50 | Canal sought review of the summary-judgment denial itself (pure legal issue about the specific-vendor requirement) | Court dismissed Canal’s direct appeal of the summary-judgment denial as interlocutory/untimely, but addressed the legal issue on the jury-instruction appeal and rejected Canal’s position |
| Admission/exclusion of evidence at trial (2010 police email; evidence of non‑Omega counterfeits; exclusion of Omega’s actual-loss proof; evidence of owners’ other properties) | Omega contended the evidence showed Canal’s awareness and pattern of willful blindness; statutory damages do not require relation to proven actual loss | Canal challenged hearsay admission of the 2010 arrest email, relevance/prejudice of non‑Omega evidence, exclusion of unspecified actual-loss evidence, and allowance of evidence about owners’ other properties | Held for Omega: any error admitting the 2010 email was harmless; evidence of widespread non‑Omega counterfeiting was relevant to willful blindness and not unfairly prejudicial; exclusion of unspecified actual-loss proof was not prejudicial because Omega sought statutory damages; limited evidence of owners’ other properties was admissible for deterrence/sophistication considerations |
| Scope of permanent injunction (geographic reach beyond 375 Canal Street) | Omega argued equitable relief could extend beyond the single property to protect against foreseeable future infringement by Canal’s principals/agents | Canal argued injunction should be limited to 375 Canal Street as the locus of proven infringement | Held for Omega: district court did not abuse discretion; Guthrie permits equitable consideration beyond the exact site of proven infringement and a broad injunction was appropriate on the facts |
Key Cases Cited
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (willful blindness can satisfy contributory trademark‑infringement knowledge requirement)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (U.S. 1982) (framework for contributory trademark liability)
- Ortiz v. Jordan, 562 U.S. 180 (U.S. 2011) (denial of summary judgment generally not appealable after a full trial)
- Pahuta v. Massey‑Ferguson, Inc., 170 F.3d 125 (2d Cir. 1999) (post‑trial review of denied summary‑judgment motions limited; Rule 50/1292(b) pathways preserve review)
- Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014) (statutory damages need not be reasonably tied to proven actual loss)
- Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27 (2d Cir. 2016) (injunction scope governed by equitable factors, not strictly geographic proof of confusion)
- Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d Cir. 1999) (injunction scope reviewed for abuse of discretion)
- Mitchell v. Forsyth, 472 U.S. 511 (U.S. 1985) (some denials of qualified‑immunity summary judgment are immediately appealable)
- Luxottica Grp. S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019) (evidence of non‑plaintiff counterfeits relevant to defendant’s notice of infringement)