WALKER WEAR LLC v. OFF-WHITE LLC, OFF-
No. 21-CV-7073-LTS-SDA
August 31, 2022
LAURA TAYLOR SWAIN
MEMORANDUM ORDER
Plaintiff Walker Wear LLC (“Walker Wear” or “Plaintiff“) brings this action against Off-White LLC, Off-White Operating Soho LLC (together with Off-White LLC, “Off-White“), Saks Fifth Avenue LLC, and Saks Incorporated (together with Saks Fifth Avenue LLC, “Saks“) (collectively, “Defendants“),1 asserting claims for unfair competition and dilution pursuant to the Lanham Act,
Defendants have moved to dismiss two counts of the FAC pursuant to
BACKGROUND
The following facts, which are alleged in the FAC or drawn from documents integral to the FAC, are taken as true for the purpose of Defendants’ motion to dismiss. April Walker (“Ms. Walker“), the “founder of Walker Wear, has designed signature streetwear clothing since the 1980s.” (FAC ¶ 14.) Walker Wear‘s brand and designs include the Marks. (Id. ¶ 17.) The “[c]lothing items featuring the Marks have been, and remain, best-sellers for Walker Wear.” (Id. ¶ 19.)
The Marks have been worn by “hip hop‘s greatest icons, including The Notorious B.I.G., Tupac, RUN-DMC, the Wu-Tang Clan, and many others.” (FAC ¶ 16.) The Walker Wear brand has “enjoyed extensive media coverage,” including features on the website of Black Entertainment Television LLC, a podcast run by Vogue, a fashion magazine, and at events such as Fashion Week in New York City. (Id. ¶¶ 20, 21, 22.) The FAC includes links to these features, which cover Ms. Walker‘s work and career, describing it as “overlooked by mainstream society” (id. ¶ 21 n.1), “entirely separate from the mainstream fashion world” (id. ¶ 21 n.2), or “forgot[ten]” by “[f]ashion [h]istory (id. ¶ 21 n.3). Ms. Walker‘s designs have also appeared in several movies, such as “Above the Rim,” “Straight Outta Compton,” and “All Eyez on Me.” (FAC ¶ 23.) In 2021, Ms. Walker “became aware” that Off-White was selling a “Diagonal Stripe Varsity Bomber Jacket” (the “Jacket“) which, she alleges, “feature[ed] the Marks.” (Id. ¶ 29.) On February 27, 2021, Carlos Maldonado (“Mr. Maldonado“), a friend of Ms. Walker, sent Ms. Walker “an Instagram direct message. . . with a link to a Saks ad on Instagram featuring” the
On February 27, 2021, “Ms. Walker posted a screenshot of the Saks advertisement. . . on her personal Instagram account (@iamaprilwalker).” (Id. ¶ 41.) Ms. Walker then received messages from “followers and potential consumers” stating that they had initially believed the Jacket was a Walker Wear product, “until they realized that the Infringing Jacket was actually a rip-off of Ms. Walker‘s Mark sold by Defendants.” (Id. ¶ 42.) Plaintiffs contend that “these examples demonstrate [that]. . . consumers have been. . . confused, mistaken, or deceived into thinking that they are purchasing a Walker Wear design or a product that is authorized or approved by Walker Wear.” (Id. ¶ 44.)
Following outreach between June and August of 2021 to the Defendants regarding the alleged infringement, Walker Wear commenced this action on August 20, 2021. (Id. ¶¶ 46-50.)
DISCUSSION
To survive a motion to dismiss pursuant to
Dilution Claim
Defendants argue for dismissal of the Dilution Claim “because Plaintiff does not plausibly allege that [the Marks] are famous.” (Defs. Mem. at 5.) Specifically, Defendants contend that (i) the Marks are not “household names” and thus do not reach the level of fame required to support a claim under the Trade Dilution Revision Act (“TDRA“); (ii) Walker Wear‘s allegations of fame conflate the fame of the Walker Wear brand and of Ms. Walker personally with that of the Marks themselves; (iii) the facts alleged by Walker Wear in support of the Marks’ fame amount to conclusory recitations of the factors underlying the statutory fame standard; and (iv) Walker Wear‘s arguments fail to address statutory factors laid out in Section 1125(c). (Defs. Mem. at 5-14.) Defendants’ points are well taken.
the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner‘s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
“Thus, to prevail on a claim under the TDRA, a plaintiff must establish that: (1) the senior mark is famous; (2) the defendant is making use of the junior mark in commerce; (3) defendant‘s use of the junior mark began after the senior mark became famous; and (4) a likelihood of dilution.” New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F. Supp. 2d 305, 321 (S.D.N.Y. 2010) (citation omitted).
In establishing a dilution claim, “the element of fame is the key ingredient because, among the various prerequisites to a dilution claim, the one that most narrows the universe of potentially successful claims is the requirement that the senior mark be truly famous before a court will afford the owner of the mark the vast protections of the TDRA.” GMA Accessories, Inc. v. Croscill, Inc., No. 06-CV-6236-GEL, 2008 WL 591803, at *10 (S.D.N.Y. Mar. 3, 2008) (quoting Savin Corp. v. Savin Grp., 391 F.3d 439, 449 (2d Cir. 2004)) (internal alterations omitted). To determine whether a mark is famous, the TDRA provides that:
[A] mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark‘s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:
- (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
- (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
- (iii) The extent of actual recognition of the mark.
- (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
Defendants correctly note that the fame requirement has consistently been construed to impose a heavy burden on parties seeking to assert a dilution claim. “Only trademarks that enjoy such broad renown as to at least approach (if not attain) the status of ‘household names’ may qualify as famous brands under federal law.” Schutte Bagclosures Inc. v. Kwik Lok Corporation, 193 F. Supp. 3d 245, 283 (S.D.N.Y. 2016) (collecting cases.) “[A]s courts have noted, the inclusion in the TDRA of the phrase ‘widely recognized by the general consuming public of the United States’ ‘was intended to reject dilution claims based on niche fame, i.e.[,] fame limited to a particular channel of trade, segment of industry or service, or geographic region.‘” Luv N’ Care, Ltd. v. Regent Baby Products Corp., 841 F. Supp. 2d 753, 757-58 (S.D.N.Y. 2012) (quoting Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 307 n.90 (S.D.N.Y. 2007)). “One of the major purposes of the TDRA was to restrict dilution causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Id. (quotation and citation omitted). Other brands deemed famous under the TDRA include Nike and Mattel‘s Hot Wheels. See Nike, Inc. v. Nikepal Int‘l, Inc., No. 05-CV-1468-GEB-JFM, 2007 WL 2782030, at *5-6 (E.D. Cal. Sept. 18, 2007) (Nike); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008) (Hot Wheels).
Plaintiff does not allege plausibly that the Marks are “household names.” In contending that her pleading is sufficient, Plaintiff asserts in her opposition that “the Marks have received considerable media coverage and attention, which collectively amount to substantial evidence of fame.” (Docket entry no. 76. (“Pl. Mem.“) at 9.) Plaintiff notes that media coverage of the Marks “spans three decades and includes national publications and film distributions including by Netflix,” and refers in support of this assertion to six media items - three films and three magazine features, in which Walker Wear designs were featured in some way. (Id.) (emphasis in original). As an initial matter, Plaintiff is incorrect that media coverage, even at a far more considerable level, necessarily warrants a finding of fame. See Bd. Of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679 (W.D. Tex. 2008) (finding that a logo associated with the University of Texas football team was not famous, despite its frequently being prominently displayed on national television).
Furthermore, Plaintiff‘s allegations are simply insufficient to plausibly support an inference that the Marks are analogous to marks that are generally considered household names, such as those belonging to Coca-Cola, Nike, or Budweiser. That “multiple individuals and consumers reacted to Defendants’ use of the Marks . . . and believe[ed] them to be associated with Walker Wear,” (Pl. Mem. at 11), is scarcely probative of the Marks’ national stature, particularly when the individual commenter referenced in the FAC was a “friend” of the Plaintiff and a “fellow clothing designer,” and therefore far more likely to be familiar with the Marks than an average member of the public. (FAC ¶ 30) (describing Mr. Maldonado, who initially believed the Jacket to be a Walker Wear design, as “[Plaintiff‘s] friend and fellow clothing designer“). Such an allegation supports, at most, niche fame within the design or streetwear industry a form of fame that the TDRA, by design, rejects as unsupportive of a claim for dilution. See Luv N’ Care, 841 F. Supp. 2d at 757-58 (noting that inclusion of language limiting fame to brands recognized by the general consuming public “was intended to reject dilution claims based on niche fame“).
A review of Plaintiff‘s pleadings under the statutory factors provided by
Second, the Court considers the “amount, volume, and geographic extent of sales of goods or services offered under the [M]ark.”
As to the third factor, “actual recognition” of the Marks, see
All four of the statutory factors, therefore, militate against a finding that the Marks are famous, as required to state a claim for dilution under the TDRA. Because Plaintiff has not sufficiently pled that the Marks are famous, she has failed to state a claim for dilution under the TDRA. Defendants’ motion to dismiss the Dilution Claim is therefore granted.
Deceptive Acts and Practices
Section 349 of New York‘s General Business Law (“Section 349“) makes unlawful “deceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any service in this state.”
“It is well settled that trademark infringement claims are not cognizable under [S]ection 349 unless there is a specific and substantial injury to the public interest over and above ordinary trademark infringement or dilution.” Chanel, Inc. v. RealReal, Inc., 449 F. Supp. 3d 422, 447 (S.D.N.Y. 2020) (citation, alterations, and quotation omitted). Plaintiff alleges that Defendants’ unauthorized use of the Marks “already has caused multiple instances of actual confusion.” (Pl. Mem. at 13.) This assertion is insufficient to support a claim under Section 349. “This alleged injury-confusion and deception of the consuming public-. . . is not distinct from the very harm that trademark laws generally seek to redress and thus is not over and above ordinary trademark infringement.” Nomination Di Antonio E Paolo Gensini S.N.C. v. H.E.R. Accessories LTD, No. 07-CV-6959-DAB, 2009 WL 4857605, at *8 (S.D.N.Y. Dec. 14, 2009) (citation and internal quotation marks omitted). In general:
Claims that arise out of a trademark infringement action, and disputes between competitors where the core of the claim is harm to another business as opposed to consumers, both constitute situations which courts have found to reflect a public harm that is
too insubstantial to satisfy the pleading requirements [for a claim arising under Section 349].
RCA Trademark Management S.A.S. v. VOXX Intern. Corp., No. 14-CV-2694-LTS-HBP, 2015 WL 5008762, at *4 (S.D.N.Y. Aug. 24, 2015) (citation omitted). Plaintiff‘s conclusory allegation that “Defendants’ . . . consumer-oriented conduct[] has adversely affected the public interest and has resulted in injury to consumers in New York” (FAC ¶ 93) is plainly insufficient to support an inference that the gravamen of Plaintiff‘s claim is harm to the public, rather than harm to Walker Wear.
For these reasons, Defendants’ motion to dismiss Plaintiff‘s claim under Section 349 is granted.
CONCLUSION
For the foregoing reasons, Defendants’ motion to dismiss Plaintiff‘s claim for dilution under the Lanham Act (Third Cause of Action) and Plaintiff‘s claim arising under GBL Section 349 (Sixth Cause of Action) is granted in its entirety. This Memorandum Order resolves docket entry number 70. This case remains referred to Magistrate Judge Stewart Aaron for general pretrial management.
SO ORDERED.
Dated: New York, New York
August 31, 2022
/s/ Laura Taylor Swain
LAURA TAYLOR SWAIN
Chief United States District Judge