Crye Precision LLC v. Concealed Carrier LLC
1:23-cv-04469
E.D.N.YSep 17, 2024Check TreatmentDocket
Opinion Summary
Facts
- Keith Richard Eskin, Jr. filed a civil rights action under 42 U.S.C. § 1983 while incarcerated at Ingham County Jail, alleging his rights were violated [lines=12-14].
- He claims that Nurse Jessica Stage asked another inmate about his health history, which he asserts is a violation of HIPAA [lines=42-54].
- Eskin seeks damages and argues that Vitalcore, Stage's employer, is also liable for her actions [lines=42-56].
- The court noted that HIPAA does not provide a private right of action [lines=110-111].
- Plaintiffs have to meet the plausibility standard in their complaints, requiring factual content to support claims [lines=71, 96].
Issues
- Whether Eskin's complaint sufficiently states a violation of HIPAA and 42 U.S.C. § 1983 [lines=12-13, 108].
- Whether the court erred in dismissing the HIPAA claims on the grounds that it does not confer a private right of action [lines=110-111, 143-144].
Holdings
- The court dismissed Eskin's complaint for failure to state a claim, as the allegations do not invoke a right under federal law [lines=35, 195].
- The court affirmed that HIPAA does not provide a private right of action, thus supporting the dismissal of the claims [lines=110-111, 154].
OPINION
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
------------------------------------x
CRYE PRECISION LLC,
Plaintiff, MEMORANDUM & ORDER
23-CV-4469(EK)(LKE)
-against-
CONCEALED CARRIER, LLC d/b/a
TACTICON ARMAMENT, a California
Limited Liability Company,
Defendants.
------------------------------------x
ERIC KOMITEE, United States District Judge:
Plaintiff Crye Precision LLC brings this copyright and
trademark infringement action against Concealed Carrier, LLC
(“Tacticon”). Crye asserts that it holds copyrights in two
camouflage patterns, which it uses on various products and
markets with the trademark “MultiCam.” According to Crye,
Tacticon infringed on its copyrights and trademark by selling
counterfeit products, under the MultiCam mark, that bear a
camouflage pattern indistinguishable from Crye’s design.
Crye now moves for a preliminary injunction,
contending that post-trial damages cannot adequately compensate
for the harms Tacticon’s alleged infringement will cause while
this suit is pending. As set forth below, the motion is
granted.
Background1
Crye is a design and manufacturing firm that
specializes in producing military and police uniforms and
equipment. Thompson Decl. ¶ 4, ECF No. 7. At issue in this
suit is its “MultiCam” design, a camouflage pattern created by
Crye’s founder, Caleb Crye. To develop this pattern, Mr. Crye
used Adobe Illustrator to draw (with a stylus pen) each of the
pattern’s more than one-hundred shapes; he arranged their
“placement, specific groupings and layering”; and he selected
seven specific colors for those shapes. Crye Decl. ¶¶ 4–5, 16–
18, ECF No. 6.
Crye’s sister company, Lineweight LLC (“Lineweight”),
owns the copyright in and to the MultiCam pattern, which it
registered with the United States Copyright Office as
Registration No. VA 1-942-951 (the “’951 Registration”).
Thompson Decl. ¶ 7; Ex. A, Thompson Decl. Crye, in turn, has an
exclusive license to that copyright. Id.; Ex. B, Thompson Decl.
Through that license, Crye sublicenses the right to print the
MultiCam design onto fabrics and other materials, for the
1 The factual background is taken from the record available at this
stage, which includes the copyright and trademark registrations themselves,
as well as declarations and evidentiary exhibits submitted by both parties.
See Mullins v. City of New York, 626 F.3d 47 , 52 (2d Cir. 2010) (At the
preliminary injunction stage, courts may consider evidence such as
“affidavits, depositions, and sworn testimony, even when they include
hearsay.”).
creation of apparel and accessories such as backpacks, belts,
and vests. Thompson Decl. ¶ 7.
As part of this sublicensing, Crye requires its
printers to follow certain specifications and quality-control
standards in printing MultiCam products. Id. ¶¶ 16-18. Crye
ensures, for example, that “nearly all” MultiCam products are
“printed on fabrics in a manner” that mutes or hides the product
user’s “near-infrared signature”; this feature, according to
Crye, conceals the user from night vision or other infrared-
based optical systems. Id. ¶ 17. Crye also requires that
printers apply the MultiCam design only to “high-quality,
premium fabrics” with high tensile strength, so that they are
resistant to tearing. Id. ¶ 18. Certain MultiCam products
contain other technical features, such as fire-resistance and
insecticide treatments. Id.
Crye is also the owner of two federally registered
trademarks (collectively, the “MultiCam Marks”) that are used in
connection with the advertising, marketing, and sale of MultiCam
products bearing the MultiCam design. Id. ¶ 8.
Mark Registration Filing Date Registration Date
Number
MultiCam 4,443,275 April 12, 2013 December 3, 2013
(the “’275
Registration”)
MultiCam 4,737,503 January 9, 2014 May 19, 2015
(the “’503
Registration”)
Crye has attempted to federally register eight variations of its
camouflage patterns as protected trade dress. Each time,
however, the U.S. Patent & Trademark Office (“USPTO”) has
refused registration on the grounds that the design is
“functional.” See, e.g., Def. Opp’n 9, ECF No. 20; Ex. 3, U.S.
Serial Nos. 86/161,357; 86/161,381; 86/161,402; 86/161,503,
86/161,550; 86/161,594; 86/161,631; 86/160,311.
Tacticon is a California corporation that markets,
distributes, and sells products through e-commerce websites
throughout the United States. See Antone Decl. ¶ 3, ECF No. 5.
Like Crye, Tacticon’s offerings include camouflage products such
as backpacks, belts, and vests. Id. ¶¶ 3–5.
On March 23, 2023, employees at Crye became aware that
Tacticon sells and markets products bearing a camouflage pattern
that, Crye asserts, is “virtually identical” to the MultiCam
design. Id. ¶ 3; see also Thompson Decl. ¶ 19. These products
are identified on Tacticon’s website with the color option
“Multicam.” Antone Decl. ¶ 4; Thompson Decl. ¶ 19. When it
suspected infringement, Crye purchased several of Tacticon’s
products for inspection and analysis by its internal design
team. Thompson Decl. ¶¶ 20-24.
On June 15, 2023, Crye sued Tacticon for copyright and
trademark infringement and moved for a temporary restraining
order and preliminary injunction, seeking to prohibit Tacticon
from infringing on its MultiCam design or MultiCam Marks. The
Court denied Crye’s application for a temporary restraining
order and set a briefing schedule on its motion for preliminary
injunction. The Court held argument on the motion and received
supplemental briefing thereafter. Neither party has requested
an evidentiary hearing. At the Court’s invitation, Crye
submitted physical exhibits — including a disassembled but
otherwise unaltered rifle bag bearing the allegedly infringing
camouflage pattern and a fabric cut of the MultiCam design — for
the Court’s inspection.
Legal Standard
A preliminary injunction is an “extraordinary” remedy.
Mazurek v. Armstrong, 520 U.S. 968 , 972 (1997).2 To obtain such
an injunction, the moving party must demonstrate (1) “a
likelihood of success on the merits”; (2) “a likelihood of
irreparable injury in the absence of an injunction”; (3) “that
the balance of hardships tips in the plaintiff's favor”; and (4)
“that the public interest would not be disserved by the issuance
2 Unless otherwise noted, when quoting judicial decisions this order
accepts all alterations and omits citations and internal quotation marks.
of an injunction.” Benihana, Inc. v. Benihana of Tokyo, LLC,
784 F.3d 887 , 895 (2d Cir. 2015).
Discussion
A. Crye Has Established a Substantial Likelihood of Success on
the Merits
1. Crye’s Copyright Infringement Claim
“To prevail on a claim of copyright infringement, the
plaintiff must demonstrate both (1) ownership of a valid
copyright and (2) infringement of the copyright by the
defendant.” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 ,
108–09 (2d Cir. 2001); see also Feist Publ’ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340 , 361 (1991). As set forth below,
Crye has demonstrated that it is likely to succeed on the merits
of its copyright infringement claim.
a. Ownership of a Valid Copyright
Under the Copyright Act, a certificate of a
registration “made before or within five years after first
publication of the work shall constitute prima facie evidence of
the validity of the copyright and of the facts stated in the
certificate.” 17 U.S.C. § 410(c). Registrations made more than
five years after first publication, however, are not without
value; instead, the “evidentiary weight to be accorded the
certificate” falls “within the discretion of the court.” Id.
Where the defendant does not challenge the validity of the
certificates, or the plaintiff’s ownership of the copyrights
covered by the registrations, courts often extend the rebuttable
presumption to these later-obtained registrations. See, e.g.,
LEGO A/S v. Best-Lock Constr. Toys, Inc., 404 F. Supp. 3d 583 ,
596 (D. Conn. 2019) (collecting cases).
The MultiCam Copyrights were registered ten years
after their first publication, and thus Crye is not entitled to
the statutory presumption of validity. Because Tacticon does
not appear to challenge the validity of the registration
certificates themselves, or Crye’s ownership over the copyrights
they cover, the Court will accord them “some evidentiary weight”
in its assessment of Crye’s copyrights. See Troll Co. v. Uneeda
Doll Co., 483 F.3d 150 , 154 n.5 (2d Cir. 2007).
i. Originality
“To qualify for copyright protection, a work must be
original — that is, it must be independently created by the
author and possess ‘at least some minimal degree of
creativity.’” Scholz Design, Inc. v. Sard Custom Homes, LLC,
691 F.3d 182 , 186 (2d Cir. 2012) (quoting Feist, 499 U.S. at
345). This “requisite level of creativity is extremely low;
even a slight amount will suffice. The vast majority of works
make the grade quite easily, as they possess some creative
spark, no matter how crude, humble or obvious it might be.”
Feist, 499 U.S. at 345 ; see Mattel, Inc. v. Goldberger Doll Mfg.
Co., 365 F.3d 133 , 135 (2d Cir. 2004). At the same time,
“copyright protection extends only to a particular expression of
an idea, and not to the idea itself.” Boisson v. Banian, Ltd,
273 F.3d 262 , 268 (2d Cir. 2001).
Crye has demonstrated that its MultiCam designs were
the result of “artistic decisionmaking” and thus original. See
Folio Impressions, Inc. v. Byer California, 937 F.2d 759 , 764-65
(2d Cir. 1991). Caleb Crye attests to the process by which he
created MultiCam — hand-drawing more than a hundred unique
shapes and then selecting, grouping, and layering them in a
specific arrangement. Crye Decl. ¶¶ 4–5. Crye combined seven
distinct colors in different layers to create the final pattern.
Id. ¶¶ 16-17. The selection, contours, arrangement, and colors
of the various shapes all involved aesthetic choices. See id.
¶ 18. The resulting MultiCam design is thus sufficiently
original to merit copyright protection. See, e.g., Knitwaves,
Inc. v. Lollytogs Ltd., 71 F.3d 996 , 1005 (2d Cir. 1995)
(copyright in leaf and squirrel design on children’s sweater);
MPD Accessories B.V. v. Urb. Outfitters, No. 12-CV-6501, 2014 WL
2440683, at *6 (S.D.N.Y. May 30, 2014) (copyright in scarf
design with “stripes of different widths and lengths, in
different directions, in different colors and with irregular
spacing”).
Tacticon does not deny that some aesthetic choices
went into developing the MultiCam pattern, but asserts that any
such copyright in the design is nevertheless inherently “thin.”
Def. Opp’n 6. Works that “contain a larger share of non-
copyrightable elements” generally enjoy “thinner” copyright
protection. Andy Warhol Found. for Visual Arts, Inc. v.
Goldsmith, 11 F.4th 26 , 53 (2d Cir. 2021), aff’d sub nom. Andy
Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S.
508 (2023) (collecting cases). Thin copyright protection is
“appropriate where works reflect scant creativity,” such as when
the “work is composed of elements in the public domain” or “the
author has chosen to express an idea without much embellishment,
so that the expression is nearly indistinguishable from the idea
itself.” Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 210 F.
Supp. 2d 147, 163 (E.D.N.Y. 2002), aff’d sub nom. Well-Made Toy
Mfg. Corp v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003); see
Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338
F.3d 127, 135–36 & n.11 (2d Cir. 2003).3
Tacticon’s best case on this point is Beaudin v. Ben &
Jerry’s Homemade, Inc., 95 F.3d 1 , 2 (2d Cir. 1996), in which
3 Although not cited in Tacticon’s opposition, defense counsel raised at
oral argument the doctrine of merger, which is “separate” from the concept of
thinness but “related” to it. Well-Made Toy Mfg. Corp., 210 F. Supp. 2d at
163. Under this doctrine, “if there is just one way to express an idea, the
idea and expression are said to merge, and the expression is not
protectible.” Yurman Design, 262 F.3d at 111 .
the Second Circuit affirmed the holding that Ben & Jerry’s “cow
hats” did not infringe on the plaintiff’s “caps with Holstein
cow patterns.” The court held that the plaintiff’s “Holstein-
like black splotches on a white background” were entitled only
to thin protection because the “quantum of originality” in
Beaudin’s splotch pattern was only “slight.” Id.
But Beaudin does not control here. On the instant
record, Crye has shown that the MultiCam pattern is the product
of more than “scant creativity.” The arrangement of colors and
shapes in the MultiCam pattern permits substantially more
variation than the “black splotches on a white background” at
issue in Beaudin. As the Second Circuit pointed out in Beaudin,
the nature of cow spots that anyone else painting them would run
the risk of creating a design “indistinguishable” from the
plaintiff’s “original” version. Beaudin, 95 F.3d at 2 .4
By contrast, one could envision hundreds, if not
thousands, of ways to express the idea of camouflage suitable
for multiple environments, with variations in the selection,
rendering, arrangement, and coordination of the individual
shapes and colors. Even further refining the “idea” to multi-
environment camouflage suitable for particular terrains like
4 Even then, the Second Circuit noted that Ben & Jerry’s cow pattern
differed from Beaudin’s. See id. (“The white background is a minimal feature
of Beaudin’s hat, but is an extensive feature of the Ben & Jerry’s versions
of the Holstein splotch pattern.”). Here, in contrast, the defendant’s
camouflage pattern is virtually identical to the plaintiff’s.
those in Afghanistan — thus limiting the color choices available
to those corresponding to that geography — still yields numerous
possible “expressions.” The Court need not guess at what some
of these different variations might look like: Crye provides a
sampling of camouflage patterns that use the same general color
choices (browns, tans, creams, and greens) and yet appear highly
dissimilar. Crye Decl. ¶ 19 (visually excerpting the
HyperStealth Thortex and Survival Corps SURPAT camouflage
patterns); Ex. D, Crye Decl. (visually excerpting numerous
multi-environment camouflage patterns that post-dated MultiCam’s
creation).
Crye has therefore demonstrated, at this stage, that
the MultiCam is sufficiently creative to be entitled to
copyright protection.
ii. Separability
More fundamentally, Tacticon argues that the MultiCam
pattern has a utilitarian function and therefore is ineligible
for copyright protection. Def. Opp’n 7. Because camouflage’s
function is to disguise the wearer’s location by blending into
the background, they say, MultiCam is an unprotectable “useful
article.” Id. at 7–9. Tacticon fails, however, to satisfy the
test set out in Star Athletica, L.L.C. v. Varsity Brands, 580
U.S. 405, 414-24 (2017) — under which the MultiCam pattern, at
this stage, passes muster.
The Copyright Act applies to “original works of
authorship fixed in any tangible medium of expression” including
“pictorial, graphic and sculptural works.” 17 U.S.C. § 102.
Copyright protection extends to the “design of a useful
article,” however, only if those features “can be identified
separately from, and are capable of existing independently of,
the utilitarian aspects of the article.” Id. §§ 101, 102(a). A
“useful article,” in turn, is one “having an intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information.” Id. § 101.
In Star Athletica, the Supreme Court clarified that “a
feature of the design of a useful article is eligible for
copyright if, when identified and imagined apart from the useful
article, it would qualify as a pictorial, graphic, or sculptural
work either on its own or when fixed in some other tangible
medium.” 580 U.S. at 417 . Broken down, this “separability”
analysis has two requirements: “separate identification” and
“independent existence.” Id. at 414. Under the first
requirement, which “is not onerous,” one “need only be able to
look at the useful article and spot some two- or three-
dimensional element that appears to have pictorial, graphic, or
sculptural qualities.” Id. Under the second, the
“decisionmaker must determine that the separately identified
feature has the capacity to exist apart from the utilitarian
aspects of the article.” Id. “In other words, the feature must
be able to exist as its own pictorial, graphic, or sculptural
work as defined in § 101 once it is imagined apart from the
useful article.” Id.
Applying that test to the cheerleading uniforms at
issue, the Supreme Court concluded that the uniform decorations
were separable and therefore entitled to copyright protection.
Id. at 417-18. Specifically, the “colors, shapes, stripes, and
chevrons” on the uniform’s surface could be identified as
“features having pictorial, graphic, or sculptural qualities.”
Id. at 417. And once “separated from the uniform and applied in
another medium,” these features “would qualify as two-
dimensional works of art.” Id.
Crye’s MultiCam pattern likewise satisfies this test.
At the first step, the Court can “spot” the two-dimensional
element[s] — the distinctive shapes and colors that compose the
MultiCam design — that have “pictorial” or “graphic” qualities.
Id. At the second step, the MultiCam design is “capable of
existing” as a work once “imagined apart from the useful
article.” Id. at 414, 417. If imaginatively removed from
tactical gear and applied — “for example, on a painter’s
canvas,” — the pattern could still qualify as a two-dimensional
work of art. Id. at 417. Crye indicates that the Court need
not imagine such situations, as the MultiCam design has actually
been applied in this artistic, non-useful manner — appearing on
a NASCAR car, on professional sports team jerseys, and as a
piece of artwork featured in the Museum of Modern Art. ECF No.
7 ¶¶ 14-15; see Star Athletica, 580 U.S. at 417 (“Indeed,
respondents have applied the designs in this case to other media
of expression — different types of clothing — without
replicating the uniform.”).
Forgoing this separability analysis, Tacticon instead
focuses on the MultiCam design’s original function — concealing
the wearer of apparel in which it appeared — and its
effectiveness in performing that function. Def. Opp’n 7–9.
Star Athletica, however, forecloses this argument. Star
Athletica, 580 U.S. at 421 . As the Supreme Court clarified, the
Copyright Act explicitly protects “applied art,” which is
defined to include “those arts or crafts that have a primarily
utilitarian function, or . . . the designs and decorations used
in these arts.” Id. (quoting Random House Dictionary 73
(1966)). “An artistic feature that would be eligible for
copyright protection on its own cannot lose that protection
simply because it was first created as a feature of the design
of a useful article, even if it makes that article more useful.”
Id. In this way, copyright law does not recognize “any
‘distinctions between purely aesthetic articles and useful works
of art.’” Id. (quoting Mazer v. Stein, 347 U.S. 201 , 211
(1954)). Such is the case here: the fact that the MultiCam
design, as camouflage, has some functional qualities does not
render it ineligible for copyright protection.
For these reasons, Crye has shown a likelihood of
success in establishing a valid copyright in the MultiCam
design.
b. Infringement of the Copyright
To satisfy the second element of a copyright
infringement claim, a plaintiff “must demonstrate that: (1) the
defendant has actually copied the plaintiff’s work; and (2) the
copying is illegal because a substantial similarity exists
between the defendant’s work and the protectible elements of
plaintiff’s.” Hamil Am. Inc. v. GFI, 193 F.3d 92 , 99 (2d Cir.
1999).
Actual copying may be established “either by direct
evidence of copying or by indirect evidence.” Laureyssens v.
Idea Group, Inc., 964 F.2d 131 , 140 (2d Cir. 1992).5 Indirect
evidence “includes proof that the defendants had access to the
copyrighted work and similarities that are probative of copying
5 “[D]irect evidence of copying is seldom available,” Lipton v. Nature
Co., 71 F.3d 464 , 471 (2d Cir. 1995), but could include an admission that the
copyrighted material served as the source of a given work. Recycled Paper
Prod., Inc. v. Pat Fashions Indus., Inc., 731 F. Supp. 624 , 626 n.2 (S.D.N.Y.
1990). Here, Crye argues that the copying element is met because Tacticon’s
products are “virtually identical to MultiCam.” Crye Mem. 13. Though Crye
does not specify whether this is offered as direct or indirect proof, it fits
most neatly into the “similarity” prong of indirect proof.
between the works.” Hamil, 193 F.3d at 99 . Proof of access, in
turn, “may be established directly or inferred from the fact
that a work was widely disseminated or that a party had a
reasonable possibility of viewing the prior work.” Boisson, 273
F.3d at 270. An “inverse relationship between access and
probative similarity” exists “such that the stronger the proof
of similarity, the less the proof of access is required.”
Jorgensen v. Epic/Sony Recs., 351 F.3d 46 , 56 (2d Cir. 2003).
And where “the two works are so strikingly similar as to
preclude the possibility of independent creation, copying may be
proved without a showing of access.” Lipton v. Nature Co., 71
F.3d 464, 471 (2d Cir. 1995).
Two works are substantially similar when “an ordinary
observer, unless he set out to detect the disparities, would be
disposed to overlook them, and regard the aesthetic appeal as
the same.” Peter F. Gaito Architecture, LLC v. Simone Dev.
Corp., 602 F.3d 57 , 66 (2d Cir. 2010). “In applying the so-
called ‘ordinary observer test,’” courts ask “whether an average
lay observer would recognize the alleged copy as having been
appropriated from the copyrighted work.” Id. “[I]n the end,
[the] inquiry necessarily focuses on whether the alleged
infringer has misappropriated “the original way in which the
author has selected, coordinated, and arranged’ the elements of
his or her work.” Id.
Crye has sufficiently demonstrated that it is likely
to prove substantial similarity. Here, access can be inferred
because, as Crye attests and Tacticon does not dispute, the
Multicam design is “widely disseminated,” and there exists a
“reasonably possibility” that Tacticon — which produces
competing products — had previously seen the pattern. See
Boisson, 273 F.3d at 270 . A visual comparison of the MultiCam
pattern and Tacticon’s design, moreover, suggests that the two
works are substantially similar in the selection and
coordination of the unique shapes, and the general coloring of
those shapes.
As discussed above, the MultiCam design contains over
a hundred unique hand-drawn shapes, which Mr. Crye placed,
grouped, and layered in a distinctive arrangement. An
inspection of Tacticon’s design reveals shapes virtually
identical to those in the MultiCam design, in a near-identical
arrangement. Crye’s supporting papers assist in this visual
comparison, by including a “shape by shape and cluster by
cluster” comparison of the Tacticon and MultiCam designs.
Thompson Decl. ¶ 20. Specifically, Crye’s design team aligned
the two camouflage patterns and then broke them down into forty-
eight separate portions, enlarging and placing the resulting
cutouts next to one another. Ex. E, Thompson Decl. The results
of this analysis are striking, with the shapes and clusters
appearing in the Tacticon pattern nearly indistinguishable from
those found in the MultiCam design. Crye provides evidence of
copying in another way, by lining up or overlaying the two
patterns: when superimposed on top of MultiCam’s pattern, the
Tacticon design continues the shapes and arrangement of the
underlying pattern in a near-seamless manner. In other words,
both the contours of shapes and “the structural layout of these
[shapes] is essentially the same in both designs.” Tufenkian
Imp./Exp. Ventures, 338 F.3d at 136 . Given these striking
similarities, an “ordinary observer” would likely recognize
Tacticon’s design “as having been appropriated from” the
MultiCam pattern. Knitwaves, 71 F.3d at 1001 .
Tacticon points out, and Crye’s own director concedes,
that there are some “slight differences in the shades of color”
and “minimal modifications to some of the shapes.” Def. Opp’n 5
(quoting Thompson Decl. ¶ 26). These negligible variations
between the two products, however, “pale in comparison to the
overwhelming impression of similarity.” Knitwaves, 71 F.3d at
1005.
For these reasons, Crye has demonstrated a substantial
likelihood of success on its copyright infringement claim.
2. Crye’s Trademark Infringement Claims
Crye also asserts that Tacticon infringed its
“MultiCam” mark. To prevail on a trademark infringement claim,
a plaintiff must demonstrate that “(1) it has a valid mark that
is entitled to protection and that (2) the defendant’s actions
are likely to cause confusion with that mark.” Tiffany & Co. v.
Costco Wholesale Corp., 971 F.3d 74 , 84 (2d Cir. 2020). Here,
too, Crye has demonstrated that it is likely to succeed on the
merits of its trademark claims.
a. Validity of Trademarks
Federal registration of a trademark is “prima facie
evidence of the validity of the registered mark,” as well as the
registrant’s ownership and exclusive right to use the mark. 15
U.S.C. §§ 1057(b); 15 U.S.C. § 1115(a); Matal v. Tam, 582 U.S.
218, 226–27 (2017). The presumption of validity means that “the
trademark is considered to be, at a minimum, descriptive with
secondary meaning.” See, e.g., CJ Prod. LLC v. Snuggly Plushez
LLC, 809 F. Supp. 2d 127 , 151 (E.D.N.Y. 2011) (collecting
cases); see Arrow Fastener Co. v. Stanley Works, 59 F.3d 384 ,
393 n.6 (2d Cir. 1995) (“[I]t [is] clear that a decision by the
USPTO to register a mark without proof of secondary meaning
“affords a rebuttable presumption that the mark is more than
merely descriptive.”). When a plaintiff sues for infringement
of a trademark that is registered, the burden shifts to the
defendant to rebut the mark’s protectability. See Lane Capital
Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 , 345 (2d
Cir. 1999).
In addition, a “registered mark becomes incontestable
if it has been in continuous use for five consecutive years
subsequent to its registration and is still in use.” Gruner +
Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072 , 1076 (2d Cir.
1993); 15 U.S.C. § 1065. Incontestable trademarks are
“conclusive evidence” of the mark’s validity. 15 U.S.C. §
1115(b); see KP Permanent Make–Up, Inc. v. Lasting Impression I,
Inc., 543 U.S. 111 , 117 (2004).
In this case, it is undisputed that Crye owns two
federally registered trademarks in the word “MultiCam” — the
‘275 and ‘503 Registrations — which are used in connection with
the advertising, marketing, and sale of products bearing the
MultiCam pattern. Thompson Decl. ¶ 8. Because, moreover, it
has been in continuous use for five years after its
registration, the MultiCam Mark has become incontestable. Thus,
Crye is entitled to “enjoin its infringement relying on the
mark’s incontestability against a defense that the mark is
merely descriptive.” Gruner, 991 F.2d at 1077 .
Tacticon contends that the MultiCam Marks are not
incontestable because Crye obtained their registrations by
fraud, and the term MultiCam is generic. As explained below,
for purposes of this motion, Tacticon is unlikely to carry its
burden to demonstrate that the MultiCam Marks are invalid.
i. Fraud in Obtaining the Trademark
Tacticon first asserts that the MultiCam Marks are not
incontestable (and in fact, are invalid) because Crye made
fraudulent statements to the USPTO to obtain the ‘503
Registration. Def. Opp’n 9–10. Such a defect, if proven, would
vitiate the incontestable nature of that mark, see 15 U.S.C.
§ 1115(b) — but only that mark. Tacticon does not challenge the
‘275 Registration on fraud grounds.
A party asserting registration fraud bears a “heavy
burden,” Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705 ,
710 (S.D.N.Y. 2011) — one that it must meet by “clear and
convincing evidence.” See Orient Exp. Trading Co. v. Federated
Dept. Stores, Inc., 842 F.2d 650 , 653 (2d Cir. 1988). “Fraud in
procuring a trademark registration occurs when an applicant
knowingly makes false, material representations of fact in
connection with his application.” MPC Franchise, LLC v.
Tarntino, 826 F.3d 653 , 658 (2d Cir. 2016). A party must
demonstrate that the registrant made a “deliberate attempt to
mislead the PTO”; “mere error or inadvertence” is not enough.
Orient Exp. Trading Co., 842 F.2d at 653 ; see Quality Serv.
Grp., 831 F. Supp. 2d at 710 . The “knowing misstatement,”
moreover, must be material — “one that would have affected the
PTO’s action on the applications.” Orient Exp. Trading Co., 842
F.2d at 653. The party “alleged to have committed fraud,” in
turn, “may rely on good faith as a defense.” Haggar Int’l Corp.
v. United Co. for Food Indus. Corp., 906 F. Supp. 2d 96 , 107
(E.D.N.Y. 2012) (“Fraud will not lie if it can be proven that
the statement, though false, was made with a reasonable and
honest belief that it was true.”).
Tacticon asserts that Crye’s parent company,
Lineweight LLC, misled the USPTO by representing that the term
“Multicam” “appearing in the mark has no significance nor is it
a term of art in the relevant trade or industry or as applied to
the goods/services listed in the application, or any
geographical significance.” Def. Opp’m 10 (quoting Ex. 4 at
11), ECF No. 20-5. This statement was false, according to
Tacticon, because “MultiCam” is ”short for the descriptive
phrase ‘multi-environment camouflage’” and therefore clearly
“has significance to the [camouflage] goods described in the
application.” Def. Opp’n 10. But Tacticon has not proffered
meaningful evidence that the word was in fact functioning as a
“term of art” in the industry when Crye made the statement in
question.
And the statement appears to be technically accurate,
as Crye asserts: “MultiCam” is a made-up word that had no
meaning in the industry and was not used to describe the goods
identified in the ’503 Registration, including objects such as
helmets, sunglasses, belts, bags, clothing, and others. See
Crye Reply 6, ECF No. 22. Crye also raises a good-faith
defense. Id. It points out that the USPTO had previously
approved the ‘275 Registration, which was issued for “printed
camouflage patterns for use on fabrics and hard surfaces,”
without asking for the same information requested with respect
to the ’503 Registration. Id. Because the earlier application
did not include this information and was not rejected as
deceptive, Crye argues that it could reasonably have believed
that the information was not material or misleading in the later
application. Id. The history of the ‘275 mark’s prosecution,
Crye asserts, suggests that Crye’s counsel did not make
knowingly false statements to mislead the USPTO to approve the
’503 Registration.
In light of the “heavy burden” that rests on the party
asserting fraud, and the very limited record put forward by
Tacticon, which bears the burden on this issue, Tacticon’s
challenge to the MultiCam Marks’ incontestability on this ground
does not prevail.
ii. Genericide
Even if it was not a recognized “term of art” when
registered, Tacticon asserts that “MultiCam” has become a
generic term and thus lost its incontestable status. Def. Opp’n
13–17. “A trademark or service mark that becomes generic is no
longer entitled to protection.” Pilates, Inc. v. Current
Concepts, Inc., 120 F. Supp. 2d 286 , 296 (S.D.N.Y. 2000) (citing
Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 ,
194 (1985)). Thus, even an incontestable mark can be rendered
invalid if it has become “the generic name for the goods or
services, or a portion thereof, for which it is registered.” 15
U.S.C. § 1064(3); see, e.g., Tiffany & Co. v. Costco Wholesale
Corp., 994 F. Supp. 2d 474 , 481 (S.D.N.Y. 2014), aff’d 971 F.3d
74 (2d Cir. 2020).
“Marks that constitute a common descriptive name are
referred to as generic. A generic term is one that refers to
the genus of which the particular product is a species.” Park
‘n Fly, 469 U.S. at 194 ; see RiseandShine Corp. v. PepsiCo,
Inc., 41 F.4th 112 , 120 (2d Cir. 2022) (“A generic mark is a
common name, such as automobile or aspirin, that identifies a
kind of product.”). As relevant here, a term is “the victim of
‘genericide’” where “a seller establishes trademark rights in a
term which a majority of the relevant public then appropriates
as the name of a product.” Horizon Mills Corp. v. QVC, Inc.,
161 F. Supp. 2d 208 , 213–14 (S.D.N.Y. 2001) (collecting, as
notable examples of genericized terms, aspirin, cellophane,
escalator, and thermos). Whether a term has become generic is a
fact-intensive inquiry, and courts typically consider, among
other evidence, “(1) dictionary definitions; (2) generic use of
the term by competitors and other persons in the trade; (3)
plaintiff’s own generic use; (4) generic use in the media; and
(5) consumer surveys.” Pilates, Inc., 120 F. Supp. 2d at 297 .
According to Tacticon, the term “multicam” has become
a generic term for “camouflage used in multiple environments”
and therefore cannot function as a trademark. Def. Opp’n 13.
In support of this argument, Tacticon marshals a small sample of
eleven third-party online retailers that use the term “multicam”
in selling camouflage gear. Def. Opp’n, Ex. 5, ECF No. 20-6.
Crye’s response is dispositive: it upends this argument by
pointing out that all but four of these retailers are actually
licensed distributors or sellers of MultiCam productors. Antone
Reply Decl., ¶ 4, ECF No. 23. Tacticon also points to Crye’s
own use of the word “MultiCam” in its briefing as a noun, rather
than an adjective. Def. Opp’n 16–17. Tacticon argues that this
use of the word, without modification, is evidence that Crye
uses the term generically itself. Id. Such a showing is
plainly insufficient, for purposes of this motion, to
demonstrate that a majority of the relevant public use
“MultiCam” as a common name to identify camouflage for multiple
environments.
Therefore, as with its assertion of registration
fraud, based on the limited record at this stage, Tacticon has
not met its burden to overcome the validity of the MultiCam
Marks.
b. Likelihood of Consumer Confusion
To satisfy the second element of a trademark
infringement claim, the plaintiff must demonstrate that “the
defendant’s use of a similar mark is likely to cause consumer
confusion.” Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360
F.3d 125, 129 (2d Cir. 2004). This “prong turns on whether
ordinary consumers are likely to be misled or confused as to the
source of the product in question because of the entrance in the
marketplace of [the junior user’s] mark.” Guthrie Healthcare
Sys. v. ContextMedia, Inc., 826 F.3d 27 , 37 (2d Cir. 2016).
To evaluate the likelihood of consumer confusion, the
Second Circuit uses the eight-factor test set out by Judge
Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492
(2d Cir. 1961). These factors examine: (1) the strength of the
plaintiff’s mark; (2) the similarity of the marks; (3) the
competitive proximity of the products in the marketplace; (4)
the likelihood that the senior user will “bridge the gap” by
moving into the junior user’s product market; (5) evidence of
actual confusion; (6) the junior user’s intent – good or bad
faith – in adopting the mark; (7) the respective quality of the
products; and (8) the sophistication of the consumers in the
relevant market. Id. at 495. “No single factor is dispositive;
rather, each is evaluated in the context of how it bears on the
ultimate question of likelihood of confusion as to the source of
the product.” Souza v. Exotic Island Enterprises, Inc., 68
F.4th 99, 110 (2d Cir. 2023).
i. Strength of the Mark
“The strength of a mark refers to its distinctiveness,
that is to say, the mark’s ability to identify goods sold under
it as coming from one particular source.” Streetwise Maps.,
Inc. v. VanDam, Inc., 159 F.3d 739 , 743 (2d Cir. 1998). Courts
evaluate distinctiveness based on either or both of the
following: (1) “the degree to which it is inherently
distinctive,” often referred to as conceptual strength; and (2)
“the degree to which it has achieved public recognition in the
marketplace,” often referred to as acquired or commercial
strength. RiseandShine, 41 F.4th at 120 .
First, conceptual strength “is assessed on a continuum
from least to most distinctive, with the aid of categories
usually called (1) generic, (2) descriptive, (3) suggestive, and
(4) arbitrary or fanciful, with marks in the last category
considered the strongest.” Car-Freshner Corp. v. Am. Covers,
Inc., 980 F.3d 314 , 329 (2d Cir. 2020). As most relevant here,
a descriptive mark “is one that tells something about a product,
its qualities, ingredients or characteristics,” while a
suggestive mark “suggest[s] (rather than directly describe[s])
the product on which [it is] employed, or its attributes,
sometimes requiring imagination to grasp the linkage.” Gruner,
991 F.2d at 1076 . Descriptive marks are “presumptively
unprotectable,” but can become protectable “if they have
acquired secondary meaning, i.e. an acquired public recognition
as a mark identifying the source.” RiseandShine, 41 F.4th at
121. Suggestive marks, by contrast, “are protectable without
need to show acquired secondary meaning.” Id.
Crye’s MultiCam Marks are suggestive. They do not
immediately describe the nature of Crye’s products — camouflage
suitable for multiple environments — but instead require the
consumer to make at least some “additional mental effort to
identify the associated product in particular.” Cross Com.
Media, Inc. v. Collective, Inc., 841 F.3d 155 , 163 (2d Cir.
2016); see, e.g., DJ Direct, Inc. v. Margaliot, 512 F. Supp. 3d
396, 409-10 (E.D.N.Y. 2021) (“KaraoKing,” a “portmanteau of the
words ‘Karaoke’ and ‘King, [was] meant to suggest a superior
karaoke machine”); Jackpocket, Inc. v. Lottomatrix NY LLC, 645
F. Supp. 3d 188, 240 (S.D.N.Y 2022) (categorizing “JACKPOCKET,”
formed by “the juxtaposition of ‘jackpot’ and ‘pocket,’” as
suggestive of internet lottery products). Nor does the
“MultiCam” Mark “conjure up the image of the precise good with
which it is associated,” as does a descriptive mark. Playtex
Prods., Inc. v. Ga.–Pac. Corp., 390 F.3d 158 , 164 (2d Cir. 2004)
(affirming finding that mark “Wet Ones,” used for moist
towelettes, was suggestive).
Second, a mark is commercially strong if it has
acquired “secondary meaning,” such that “in the minds of the
public, the primary significance of” the mark “is to identify
the source of the product rather than the product itself.”
Christian Louboutin, S.A., v. Yves Saint Laurent Am. Holding,
Inc., 696 F.3d 206 , 216 (2d Cir. 2012). Here, the MultiCam
Marks are incontestable, and therefore have acquired secondary
meaning as a matter of law. See Times Mirror Magazines, Inc. v.
Field & Stream Licenses Co., 294 F.3d 383 , 391 (2d Cir. 2002)
(“Because FSLC continually maintained its registration of the
mark, FSLC’s mark is incontestable and, as a matter of law, it
has acquired secondary meaning”); 3M Co. v. Performance Supply,
LLC, 458 F. Supp. 3d 181 , 194 (S.D.N.Y. 2020) (similar).
The strength of the MultiCam Marks therefore weighs in
favor of Crye.
ii. Similarity of the Marks
“In assessing the similarity between two marks, a
court will look to whether the similarity is likely to cause
consumer confusion.” Morningside Grp. Ltd. v. Morningside Cap.
Grp., L.L.C., 182 F.3d 133 , 139–40 (2d Cir. 1999). Because
Tacticon has reproduced the “MultiCam” Marks in their entirety,
this factor weighs in favor of Crye. See, e.g., Cadbury
Beverages, Inc. v. Cott Corp., 73 F.3d 474 , 480 (2d Cir. 1996)
(“For the purpose of considering the question of the similarity
of the marks, the district court correctly determined that as a
matter of law these marks [“COTT” v. “COTT”] are identical”);
Juicy Couture, Inc. v. Bella Int’l Ltd., 930 F. Supp. 2d 489 ,
500 (S.D.N.Y. 2013) (“Defendants’ marks, JUICY GIRL,
JUICYLICIOUS and JG are similar, if not identical (i.e., Juicy
Girl), to the Juicy Marks in name alone.”).
iii. Competitive Proximity
“The ‘proximity-of-the-products’ inquiry concerns
whether and to what extent the two products compete with each
other.” Cadbury Beverages, 73 F.3d at 480 (2d Cir. 1996). “To
the extent goods (or trade names) serve the same purpose, fall
within the same general class, or are used together, the use of
similar designations is more likely to cause confusion.” Lang
v. Ret. Living Pub. Co., Inc., 949 F.2d 576 , 582 (2d Cir. 1991).
“In examining this factor[,] a court should compare all aspects
of the products, including price, style, intended uses, target
clientele, typical distribution channels, and others.”
Brockmeyer v. Hearst Corp., 248 F. Supp. 2d 281 , 296 (S.D.N.Y.
2003).
This factor weighs in favor of Crye. Even on this
limited record, cf. Def. Opp’n 19, it is apparent that Tacticon
sells the same or similar apparel and products — including
backpacks, rifle bags, belts, and vests — as those that bear the
MultiCam Marks. Tacticon markets and distributes such products
through some of the same channels of trade as Crye’s authorized
distributors, including on e-commerce platforms like the Amazon
marketplace. See Def. Opp’n, Ex. 5. And Tacticon and Crye’s
authorized distributors market and sell their products to a
similar target audience, which includes both the civilian public
and members of the military and law enforcement. Compl. ¶ 44;
Antone Reply Decl., ¶¶ 5-6. As to the former group of
consumers, in its exhibit listing examples of retailers that use
the term “MultiCam,” Tacticon identified several of Crye’s
licensees that sell to the civilian public, as does Tacticon.
Def. Opp’n, Ex. 5. These licensees also sell in the same
internet distribution channels as Tacticon. Id. And as for
military target consumers, Tacticon’s own Amazon storefront page
describes its gear as “combat ready,” suggesting, at the very
least, that it is not intended only for commercial use. See id.
This overlap in product offering, intended uses,
target consumers, and distribution channels indicates that the
two products share competitive proximity with each other.
iv. Likelihood that Crye Will Bridge the Gap
“‘Bridging the gap’ refers to the likelihood that the
senior user will enter the junior user's market in the future,
or that consumers will perceive the senior user as likely to do
so.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 , 387 (2d
Cir. 2005). This factor, too, straightforwardly favors Crye:
because Tacticon’s products and those of Crye’s licensees are in
competitive proximity, “there is really no gap to bridge, and
this factor is irrelevant to the Polaroid analysis in this
case.” Id.
v. Evidence of Actual Confusion
“For purposes of the Lanham Act, actual confusion
means consumer confusion that enables a seller to pass off his
goods as the goods of another.” Sports Auth. Inc. v. Prime
Hosp. Corp., 89 F.3d 955 , 963 (2d Cir. 1996). Evidence of
consumer confusion may include “mistaken orders, complaints from
customers or website visitors, market surveys or other signs of
uncertainty reflecting actual consumer confusion.” Big Star
Ent., Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185 , 213
(S.D.N.Y. 2000). At the same time, “[i]t is black letter law
that actual confusion need not be shown to prevail under the
Lanham Act, since actual confusion is very difficult to prove
and the Act requires only a likelihood of confusion as to
source.” Guthrie Healthcare Sys., 826 F.3d at 45 (emphasis
added).
This factor weighs slightly in favor of Crye, even
though it has presented no evidence actual consumer confusion.
Because the use of an identical mark is “inherently confusing,
consumer confusion is presumed.” See, e.g., C=Holdings B.V. v.
Asiarim Corp., 992 F. Supp. 2d 223 , 241 (S.D.N.Y. 2013);
Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486
F. Supp. 2d 286, 289 (S.D.N.Y. 2007). This confusion is, of
course, even more likely when the parties compete in the same
markets.
vi. Good or Bad Faith
“In analyzing whether a defendant has acted in bad
faith, the question is whether the defendant attempted ‘to
exploit the good will and reputation of a senior user by
adopting the mark with the intent to sow confusion between the
two companies’ products.’” Tiffany & Co., 971 F.3d at 88 . This
factor “does not bear directly on whether consumers are likely
to be confused,” although it may “affect the court’s choice of
remedy” or “tip the balance where questions are close.” Virgin
Enters. Ltd. v. Nawab, 335 F.3d 141 , 151 (2d Cir. 2003).
Based on the current record, the Court declines to
infer that Tacticon was acting in bad faith, and treats this
factor as neutral.
vii. Respective Quality of Products
“This factor generally considers whether the senior
user’s reputation could be tarnished by the inferior merchandise
of the junior user.” Cadbury Beverages, Inc, 73 F.3d at 483 .
As with the existence of bad faith, this factor is not “of high
relevance” to the likelihood-of-confusion inquiry, “as it goes
more to the harm that confusion can cause the plaintiff’s mark
and reputation.” Virgin Enterprises, 335 F.3d at 152 . Quality
may become relevant, however, “when there is an allegation that
a low quality product is taking unfair advantage of the public
good will earned by a well-established high quality product.”
Gruner, 991 F.2d at 1079 .
As evidence of the respective quality of the products,
Crye submits a few negative customer reviews submitted on
Tacticon’s Amazon storefront, which describe the products as
flimsy and “cheaply made.” Antone Decl. ¶ 5. Such reviews,
however, do “little, if anything, to bespeak the quality of the
underlying product”: as one court observed, “it is a rare
product that does not attract at least a small handful of
negative product reviews.” Ill. Tool Works Inc. v. J-B Weld
Co., LLC, 419 F. Supp. 3d 382 , 399 (D. Conn. 2019). Indeed, in
asserting that it offers high-quality products, Tacticon points
to broader indicators of customer satisfaction on the Amazon
storefront — namely, a 94% positive ranking in the last twelve
months, based on almost 2,500 reviews, and an overwhelming
balance of “4-5 star” reviews on individual products. Def.
Opp’n 20.
More persuasive is Crye’s argument that products
distributed under its MultiCam Mark are subject to certain
quality specifications. Thompson Decl. ¶¶ 16-18. Products
bearing the MultiCam Mark must include near-infrared concealment
features; depending on the product, they must also be tear-,
fire-, and/or insect-resistant. Id. Tacticon does not dispute
that its product offerings lack some or all of these features.
This difference in quality could reasonably diminish consumer
perceptions of MultiCam Mark-bearing products. This factor
therefore weighs in favor of Crye.
viii. Sophistication of the Consumers
“The final Polaroid factor is grounded on the belief
that unsophisticated consumers aggravate the likelihood of
confusion.” Juicy Couture, 930 F. Supp. 2d at 502 . This
analysis focuses on the “general impression of the ordinary
purchaser, buying under the normally prevalent conditions of the
market and giving the attention such purchasers usually give in
buying that class of goods.” Sports Auth., 89 F.3d at 965 .
Generally, “the more sophisticated and careful the average
consumer of a product is, the less likely it is that
similarities in . . . trademarks will result in confusion
concerning the source or sponsorship of the product.” Bristol-
Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 , 1046 (2d
Cir. 1992). The “nature of the product or its price” often
impact the care a consumer will take in making purchases. Rush
Indus., Inc. v. Garnier LLC, 496 F. Supp. 2d 220 , 229 (E.D.N.Y.
2007), aff’d, 309 F. App'x 431 (2d Cir. 2009).
This factor slightly favors Tacticon, or is at best
neutral. On the one hand, as Tacticon points out, Crye markets
its goods, in large part, to a class of sophisticated and
careful consumers who are unlikely to be confused: members of
the military and law enforcement units whose lives might depend
on the purchased products. Def. Opp’n 21-22; see Med. Econ. Co.
v. Prescribing Reference, Inc., 294 F. Supp. 2d 456 , 465
(S.D.N.Y. 2003) (finding medical professionals to be “highly
sophisticated and unlikely to be confused” in discerning monthly
periodicals dealing with prescription drugs).
At the same time, both parties’ products are marketed
to the civilian public, including through widely disseminated
online channels, and “[r]etail customers . . . are not expected
to exercise the same degree of care as professional buyers.”
Virgin Enterprises, 335 F.3d at 151 . And where, as here, the
products look to be identical and the marks are identical, the
sophistication of buyers cannot necessarily be relied on to
prevent confusion. See Banff, Ltd. v. Federated Dep't Stores,
Inc., 841 F.2d 486 , 492 (2d Cir. 1988).
Given the limited record available at this time, this
factor is at best neutral, or weighs slightly in favor of
Tacticon.
* * *
After considering each of the eight Polaroid factors —
the overwhelming balance of which weigh in favor of Crye — the
Court finds that Crye has established a likelihood of success
that Tacticon’s use of the MultiCam Marks are likely to cause
consumers confusion as to the source of its products.
B. Crye is Likely to Suffer Irreparable Harm Absent an
Injunction
“A showing of irreparable harm is the single most
important prerequisite for the issuance of a preliminary
injunction.” Faiveley Transp. Malmo AB v. Wabtec Corp., 559
F.3d 110, 118 (2d Cir. 2009). Irreparable harm is “a continuing
harm which cannot be adequately redressed by final relief on the
merits and for which money damages cannot provide adequate
compensation.” Kamerling v. Massanari, 295 F.3d 206 , 214 (2d
Cir. 2002) (per curiam). Where, by contrast, “there is an
adequate remedy at law, such as an award of money damages,
injunctions are unavailable except in extraordinary
circumstances.” Moore v. Consol. Edison Co. of N.Y., 409 F.3d
506, 510 (2d Cir. 2005). “The standard for preliminary
injunctive relief requires a threat of irreparable harm, not
that irreparable harm already have occurred,” see Mullins v.
City of New York, 626 F.3d 47 , 55 (2d Cir. 2010) — although such
threat must be “actual and imminent,” not “remote” or
speculative.” Faiveley Transp. Malmo AB, 559 F.3d at 118 .
Crye has demonstrated that it is likely to suffer
irreparable harm absent injunctive relief enjoining Tacticon’s
use of its MultiCam Mark. Following the enactment of the
Trademark Modernization Act of 2020, a plaintiff seeking a
preliminary injunction is “entitled to a rebuttable presumption
of irreparable harm” once it establishes a likelihood of success
on the merits. 15 U.S.C. § 1116(a). In other words, if the
plaintiff demonstrates both the validity of its mark and a
likelihood of confusion, and the defendant fails to rebut the
presumption, the plaintiff satisfies its burden of showing
irreparable harm. Tacticon does not meaningfully attempt to
rebut this presumption; its argument that there is no harm
because there is no infringement fails, given the conclusions
above.
In the copyright context, unlike trademark, “courts
must not simply presume irreparable harm.” Salinger v. Colting,
607 F.3d 68 , 82 (2d Cir. 2010). “Rather, plaintiffs must show
that, on the facts of their case, the failure to issue an
injunction would actually cause irreparable harm.” Id. Harm
may be irreparable where the infringement “would substantially
diminish the value” of the work, “the loss is difficult to
replace or measure,” or “plaintiffs should not be expected to
suffer the loss.” WPIX, Inc. v. ivi, Inc., 691 F.3d 275 , 285
(2d Cir. 2012).
Crye has demonstrated that it will suffer irreparable
harm absent injunctive relief in the form of confusion in the
marketplace, as well as the loss of goodwill and reputation. As
Crye asserts, and Tacticon does not meaningfully dispute, the
company has invested substantial time, money, and resources — to
the tune of “decades of effort and hundreds of thousands of
dollars annually” — to develop the MultiCam design and to build
goodwill among its customers. Thompson Decl. ¶¶ 29–30. Crye
maintains its reputation for its high-quality products, in part,
by implementing and enforcing quality-control standards and
fabric specifications for its licensees. Id. ¶ 30.
Tacticon, by contrast, markets and sells products with
a camouflage pattern virtually identical to the MultiCam design,
but on fabrics and materials that undisputedly lack the
specifications required by Crye. In other words, although
Tacticon’s products look like MultiCam-designed products, they
do not perform in the same ways — a distinction that may not be
readily apparent to consumers. For these reasons, Tacticon’s
products threaten to cause “confusion among customers and loss
of goodwill for plaintiffs.” CJ Prod., 809 F. Supp. 2d at 145 ;
Pearson Educ., Inc. v. Labos, No. 19-CV-487, 2019 WL 1949820 , at
*6 (S.D.N.Y. Apr. 23, 2019) (finding, in trademark and copyright
case, irreparable harm to [plaintiff’s] brand, business
reputation, and goodwill, because customers seeking to purchase
authentic [textbooks] will often be misled into purchasing
inferior, counterfeit copies”). This likelihood of confusion is
especially true because the “similarity in the design of the”
two camouflage patterns is “coupled with” Tacticon’s use of the
“MultiCam” Mark in advertising its products. Id.
Tacticon asserts, in response, that these harms of
which Crye complains in support of its copyright infringement
claims are only cognizable in the trademark infringement
context. Def. Suppl. Br. 1–2, ECF No. 31. According to
Tacticon, market confusion and any resulting reputational harms
to Crye are, by nature, predicated on consumers associating the
MultiCam design with Crye (and thus presumably thinking less of
Crye because of Tacticon’s products). See id. In this way,
MultiCam functions as a “source-identifier” — a hallmark of
trademark protection. See EMI Catalogue P’ship v. Hill,
Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 , 64 (2d Cir.
2000) (“[Trademark’s] function is simply to designate the goods
as the product of a particular trader and to protect his good
will against the sale of another's product as his.”). And
because USPTO has refused to grant Crye trademark or trade dress
rights in the MultiCam design, Tacticon asserts, Crye cannot
assert these trademark-specific harms in support of its
copyright claims.
These points regarding the distinct purposes of
copyright and trademark law are well-taken. Tacticon, however,
cites to no authority for the proposition it asks this Court to
endorse: a plaintiff asserting copyright infringement alone
cannot claim irreparable harm in the form of consumer confusion
or loss of goodwill and reputation. To the contrary, the Second
Circuit has explicitly observed that, “[i]n the context of
copyright infringement cases, the harm to the plaintiff’s
property interest has often been characterized as irreparable in
light of possible market confusion.” Salinger, 607 F.3d at 81 .
Indeed, the record includes evidence of actual or
likely consumer confusion in both the trademark and copyright
infringement contexts. Tacticon itself demonstrated how its use
of the MultiCam Mark is likely to confuse consumers: in its
attempt to demonstrate that third-party sellers use “MultiCam”
as a non-infringing color option, Tacticon identified what Crye
asserts are authorized MultiCam distributors. In other words,
Tacticon itself could not distinguish between MultiCam’s
licensees and non-licensees, suggesting at the very least that
consumers are just as likely to be confused. And as to
confusion over the MultiCam design itself, Crye provides one
such possible example: a buyer of one of Tacticon’s products
noted that it “perfectly match[ed]” the genuine MultiCam product
sold by one of Crye’s licensees. See Antone Reply Decl. ¶ 3.
This likewise indicates consumer confusion with regards to the
MultiCam design itself, even absent an accompanying trademark.
In short, Crye has sufficiently demonstrated that it
is likely to suffer irreparable harm absent injunctive relief
enjoining Tacticon from infringing on its MultiCam copyright and
trademark rights.
C. The Balance of Hardships Tips in Plaintiff’s Favor
In deciding a motion for preliminary injunctive
relief, “a court must consider the balance of hardships between
the plaintiff and defendant and issue the injunction only if the
balance of hardships tips in the plaintiff’s favor.” Salinger,
607 F.3d at 80 . This assessment requires the court to “balance
the competing claims of injury and must consider the effect on
each party of the granting or withholding of the requested
relief.” Yang v. Kosinski, 960 F.3d 119 , 135 (2d Cir. 2020).
In a copyright infringement case, the “plaintiff’s
interest is, principally, a property interest in the copyrighted
material,” while the defendant “likewise has a property interest
in [its] work to the extent that work does not infringe the
plaintiff’s copyright.” Salinger, 607 F.3d at 81 (emphasis
added). For this reason, “an infringer . . . cannot complain
about the loss of ability to offer its infringing products.”
WPIX, Inc., 691 F.3d at 287 . The same logic applies in the
trademark infringement context. See, e.g., Pearson Educ, 2019
WL 1949820, at *7.
Given the likelihood of irreparable harm discussed
above, the balance of hardships tips in Crye’s favor. The
inability to control its design, coupled with potential consumer
confusion and loss in reputation and goodwill, threaten to cause
Crye ongoing harm absent an injunction. See, e.g., WPIX, 691
F.3d at 287 (“[T]he absence of an injunction would result in the
continued infringement of their property interests in the
copyrighted material.”); 3M Co. v. CovCare, Inc., 537 F. Supp.
3d 385, 404 (E.D.N.Y. 2021) (finding “substantial hardship in
the form of loss of control over the quality of products bearing
the 3M Marks and loss of goodwill and control over its
reputation”). Tacticon’s only arguments as to its harms —
namely, asserted logistical difficulties attendant to complying
with an injunction on an expedited timeline, see Def. Opp’n 23–
24 — are unpersuasive. Rather, these are the potential short-
term costs that every infringing defendant faced with a
preliminary injunction must bear.
Perhaps tellingly, Tacticon does not claim any more
far-reaching harms — let alone “catastrophic effects” — that
injunctive relief would have on its business. Guthrie
Healthcare Sys, 826 F.3d at 50 . As Tacticon itself indicates,
its product offerings come in a variety of different colors and
patterns — ones that Crye does not argue infringe on its
MultiCam Design or the MultiCam Marks — that it may continue to
sell. Def. Opp’n 2 (listing “Camo,” “Flat Dark Earth Tan,”
“Olive Drab Green,” “Ranger Green,” “Black,” “Black Camo,” and
“Coyote Brown”); see CJ Prod., 809 F. Supp. 2d at 146
(“Defendants’ business will not be severely impacted, as they
have an extensive array of non-infringing products that they may
continue selling.”). Similarly, there appears to be “[n]o
reason . . . why [Tacticon] cannot change its [word mark] to one
that is not confusingly similar to [Crye’s] without suffering
major harm to its business.” See Guthrie Healthcare Sys., 826
F.3d at 50. In fact, Tacticon represents that it has begun to
do exactly that, making some efforts to remove “Multicam” from
its product listings. Def. Opp’n 24.
The balance of hardships here therefore weighs in
favor of granting Crye injunctive relief.
D. The Public Interest Would Not Be Disserved by an Injunction
Finally, the Court must “ensure that the ‘public
interest would not be disserved’ by the issuance of a
preliminary injunction.” Salinger, 607 F.3d at 80 .
In the copyright context, “the public has a compelling
interest in protecting copyright owners’ marketable rights to
their work.” WPIX, Inc., 691 F.3d at 287 ; see also CJ Prod.,
809 F. Supp. 2d at 146 (“[I]t is uncontested that there exists a
strong policy in favor of defending copyrights.”). And in the
trademark context, “[t]he Second Circuit has long held that
there is a ‘strong interest in preventing public confusion.’”
Juicy Couture, 930 F. Supp. 2d at 505 (quoting ProFitness Phys.
Therapy Ctr. v. Pro–Fit Ortho. and Sports Phys. Therapy P.C.,
314 F.3d 62 , 68 (2d Cir. 2002). In other words, the public has
an interest in “being assured that the mark it associates with a
product is not attached to goods of unknown origin and quality.”
New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F.
Supp. 2d 305, 344 (S.D.N.Y. 2010).
An injunction preliminarily enjoining the infringement
of Crye’s copyrighted design and use of the MultiCam Marks in
marketing products that bear the infringing design advances
these policy considerations underpinning both copyright and
trademark law. This public interest too, then, weighs in favor
of granting an injunction.
E. Bond
Under Federal Rule of Civil Procedure 65(c), “[n]o
preliminary injunction shall issue except upon the giving of
security by the applicant, in such sum as the court deems
proper.” Fed. R. Civ. P. 65(c). “In fixing the amount of
security required, a court is not required to order security in
respect of claimed economic damages that are no more than
speculative. Moreover, the burden is on the party seeking
security to establish a rational basis for the amount of the
proposed bond.” Int'l Equity Invs., Inc. v. Opportunity Equity
Partners Ltd., 441 F.Supp.2d 552 , 556 (S.D.N.Y. 2006).
Here, Tacticon has asked that a $5 million bond be
imposed. Def. Opp’n 25. Tacticon cites cases imposing a bond
in that amount, but provides no explanation as to why it would
face that level of economic diminution in light of the
injunction — indeed, Tacticon supplies no justification for that
amount at all. Given that the burden is on the party seeking a
bond, no bond will be imposed at this time. See generally DJ
Direct, Inc. v. Margaliot, 512 F. Supp. 3d 396 (E.D.N.Y. 2021)
(no bond ordered where defendant offered no support for claim
that it would lose $270,000 as a result of the injunction); New
York City Triathlon, LLC, 704 F. Supp. 2d at 345 (no bond
ordered where defendant had “not demonstrated it will likely
suffer any harm absent the posting of a bond, and the likelihood
of success on the merits is overwhelming”). Tacticon may
revisit this issue in a more fulsome submission if it chooses,
at a later date.
Conclusion
For the foregoing reasons, Crye’s motion for a
preliminary injunction is granted. It is hereby ordered that:
1. Defendant, its officers, directors, agents, servants,
representatives, employees, successors, and assigns,
and all those acting in concert or in participation
with it, are enjoined from:
a. Directly or indirectly infringing the valid and
duly issued MultiCam Marks;
b. Directly or indirectly infringing the valid,
registered copyright in and to the MultiCam
design;
c. Directly or indirectly manufacturing, importing,
distributing, advertising, offering for sale,
and/or selling counterfeits of genuine MultiCam
products; and
d. Enabling, facilitating, permitting, assisting,
soliciting, encouraging or inducing others to
directly or indirectly infringe the registration
to the MultiCam design, along with the MultiCam
Marks, to manufacture, import, distribute,
advertise, offer for sale, and/or sell infringing
products.
2. Defendant, its officers, directors, agents, servants,
representatives, employees, successors, and assigns,
and all those acting in concern or in participation
with it, must immediately locate all infringing
products that are within its possession, custody or
control, and immediately cease selling, distributing,
transferring, or disposing of those infringing
products, pending an inspection by Crye. Any such
products determined by Crye during the inspection to
be authentic and not counterfeit shall, upon Crye’s
notice of such determination, be exempted from this
Order.
SO ORDERED.
/s/ Eric Komitee__________
ERIC KOMITEE
United States District Judge
Dated: September 17, 2024
Brooklyn, New York