Otter Products, LLC v. 4PX Express USA Inc.
7:23-cv-11111
| S.D.N.Y. | Jan 31, 2025Background
- Otter Products, LLC, a maker of electronics cases with registered trademarks, sued 4PX Express USA Inc., a logistics and shipping company.
- Otter alleges 4PX imported, stored, and distributed counterfeit products bearing Otter's marks, despite receiving cease and desist notices and confirmation of shipments of counterfeit products.
- Prior litigation on similar claims between the parties was voluntarily dismissed the previous year.
- In 2023, Otter's agent purchased a counterfeit case from an eBay listing connected to 4PX's address; 4PX confirmed shipping it and disclosed further inventory from sellers distributing counterfeits.
- Otter brought Lanham Act (direct and contributory trademark infringement, unfair competition, dilution) and Tariff Act claims against 4PX.
- 4PX moved to dismiss all claims for failure to state a claim under Rule 12(b)(6).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct Trademark Infringement | 4PX distributed counterfeit goods, not just unwitting shipping | 4PX is merely a shipper, did not intend to sell/distribute | Sufficient facts pled to state direct infringement claim |
| Contributory Trademark Infringement | 4PX had notice, aided ongoing counterfeiting by customers | Otter has not shown knowing or willful conduct | Allegations of knowledge and willful blindness are sufficient |
| Tariff Act Claim | Claim pled separately for international importation of counterfeits | Duplicative of Lanham Act claims | Tariff Act claim is distinct; not duplicative |
| Motion to Dismiss Standard | Complaint states plausible claim; facts should be taken as true | Only conclusions/insufficient facts pled | Facts alleged are sufficient; dismissal denied on all grounds |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (Rule 12(b)(6) plausibility standard)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleadings must rise above speculative level for dismissal)
- Inwood Lab’ys, Inc. v. Ives Lab’ys, Inc., 456 U.S. 844 (standards for contributory trademark infringement)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (knowledge requirement for contributory infringement)
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (Lanham Act claims under §§ 1114 and 1125(a) are treated the same)
- Leeds v. Meltz, 85 F.3d 51 (pleading standards under Rule 12(b)(6))