905 F. Supp. 2d 482
S.D.N.Y.2012Background
- TechnoMarine sues Jacob Time for trademark infringement, false designation, dilution, copyright infringement, tortious interference, unfair competition, and conversion; TechnoMarine sells only through authorized channels and alleges Jacob Time, not an authorized retailer, sold TechnoMarine watches online.
- Jacob Time allegedly purchased, advertised, and sold watches bearing TechnoMarine marks via its website; some watches alleged not genuine or stolen.
- TechnoMarine issued a cease-and-desist; Jacob Time continued to purchase, advertise, and sell TechnoMarine watches online.
- The court previously dismissed the initial complaint and first amended complaint for lack of plausible infringement; the SAC adds limited new factual allegations but retains core theories.
- The court grants in part and denies in part Jacob Time’s Rule 12(b)(6) motion, allowing some claims to proceed and dismissing others with/without prejudice.
- Seventh and eighth claims (conversion and declaratory relief) are dismissed with leave to replead because standing and demand/refusal issues were not adequately pled.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement/false designation plausibility | TechnoMarine contends likelihood of confusion via Polaroid factors and counterfeit/non-genuine products. | Jacob Time argues lack of plausible consumer confusion and genuine substitutions; unauthorized sale not per se infringement. | Claims dismissed without prejudice for lack of plausible confusion. |
| Trademark dilution viability | TechnoMarine asserts dilution through unauthorized use of mark. | Defendant argues no basis to show dilution. | Dilution claim dismissed with prejudice. |
| Tortious interference viability | TechnoMarine alleges intentional interference with its distribution contracts. | Argues lack of justification defense; economic justification could bar claim. | Tortious interference claim survives; four elements plausibly pled. |
| Unfair competition viability | TechnoMarine asserts bad-faith unfair competition by Jacob Time. | No factual showing of bad faith; statements show non-affiliation with TechnoMarine. | Unfair competition claim dismissed with prejudice. |
| Copyright infringement viability (first sale/ownership) | TechnoMarine asserts ownership/copyright protection and mis-sold items; questions about first sale doctrine. | First sale doctrine may bar claims for foreign-made goods; owner status contested. | Copyright infringement claim survives; § 505 fees denied; first sale issues resolved in plaintiff’s favor on plausibility. |
Key Cases Cited
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961) ( Polaroid factors govern likelihood of confusion)
- Physicians Formula Cosmetics, Inc. v. W. Cabot Cosmetics, Inc., 857 F.2d 80 (2d Cir.1988) (Polaroid analysis applicable to identical/competing products)
- El Greco Leather Products Co., Inc. v. Shoe World, Inc., 806 F.2d 392 (2d Cir.1986) (unauthorized production can support confusion under El Greco/Hayden framework)
- H.L. Hayden Co. v. Siemens Medical Systems, Inc., 879 F.2d 1005 (2d Cir.1989) (quality-control interference can support consumer confusion; El Greco refined by Hayden)
- Bel Canto Design, Ltd. v. MSS Hifi, Inc., 837 F.Supp.2d 208 (S.D.N.Y.2011) (material differences/quality-control concepts in non-genuineness claims)
- Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir.2009) (serial-number alterations can affect genuineness and warranties)
- Dow Jones & Company, Inc. v. International Securities Exchange, Inc., 451 F.3d 295 (2d Cir.2006) (bad-faith standard in unfair competition is important; mislabeling context)