234 F. Supp. 3d 548
S.D.N.Y.2017Background
- Plaintiff Sara Designs, a jewelry designer, created several "wrap" watch styles in 2009 and sells through retail and trade shows; alleges Defendants NY & Co. and A Classic Time manufactured and sold look‑alike watches after contact at a 2014 trade show.
- Plaintiff filed suit asserting federal copyright infringement, Lanham Act trade dress infringement, New York trademark/dilution and unfair competition claims, and NY GBL §§ 349/350 deceptive-practices/false-advertising claims; Defendants moved to dismiss and plaintiff sought a preliminary injunction.
- Plaintiff attached U.S. copyright registration certificates (titles like "W04 All Chain Wrap Watch," "W07 Leather and Chain Wrap Watch") but did not include deposit images or descriptive material matching the screenshots of the assertedly infringed watches.
- The Court directed supplementation; plaintiff filed a Supplemental Declaration attempting to map multiple pictured variants to single registration numbers but provided no documentation showing the registrations cover the specific images attached to the complaint.
- At oral argument plaintiff offered further unspecified proof and requested leave to amend; the Court treated the supplemental material as a proffer and gave plaintiff leave to move to amend but dismissed the complaint for failure to plead viable claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright registration & infringement | Registrations submitted establish ownership and cover the pictured watch designs (some asserted as derivative works) | Registrations lack deposit images/descriptions tying them to the specific watches; cannot rely on a single certificate to cover multiple distinct styles; wrap watch concept not protectable as such | Dismissed: plaintiff failed to plausibly plead valid registration covering the specific allegedly infringed watch images; leave to move to amend permitted |
| Trade dress (Lanham Act §43(a)) | Wrap watch overall appearance (gradient chain, lobster claw closure, leaf logo) is protectable and has acquired secondary meaning | Plaintiff's descriptions are conclusory; trade dress not precisely defined; no facts supporting secondary meaning | Dismissed: trade dress claim inadequately pleaded—no precise expression of claimed elements and no factual support for secondary meaning |
| New York trademark infringement & dilution | Plaintiff's SARA DESIGNS mark and/or the wrap watch appearance is protectable; defendants' products cause confusion/dilution | Defendants used "NY & Co." branding; plaintiff did not allege use of confusingly similar marks or substantial similarity required for dilution | Dismissed: complaint fails to allege use of plaintiff's mark or sufficiently similar mark; no viable infringement or dilution claims |
| State unfair competition, unjust enrichment, NY GBL §§ 349/350 | Defendants misappropriated plaintiff's designs causing plaintiff injury and consumer deception | Claims are preempted by Copyright Act (for misappropriation) and lack allegations of consumer/public injury required by §§ 349/350 | Dismissed: unjust enrichment and misappropriation-based unfair competition preempted; unfair competition fails for lack of Lanham Act predicate and no pleaded bad faith; §§ 349/350 dismissed for no public consumer harm or reliance alleged |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (stating plausibility standard for complaints)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (establishing pleading requirement of plausibility)
- ATSI Communications, Inc. v. Shaar Fund, Ltd., 493 F.3d 87 (courts may consider documents attached to or relied upon in complaint on Rule 12(b)(6) review)
- Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114 (defining trade dress and its elements)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (secondary meaning standard for trade dress)
- Palmer/Kane LLC v. Rosen Book Works LLC, 204 F. Supp. 3d 565 (registration is prerequisite to copyright suit)