The opinion of the court was delivered by: NICKERSON
EUGENE H. NICKERSON, UNITED STATES DISTRICT JUDGE
The complaint alleges the following. Plaintiff Vitabiotics, Ltd. (Vitabiotics) is a British company engaged in the manufacture, sale and marketing of vitamins and defendant Karl J. Krupka is a resident of New York and the principal officer of the corporate defendants, all five of which were incorporated in New York. Communication Trade Research International, Inc. and Moor Life Products, Inc. have been dissolved. Since 1979, Vitabiotics has sold certain vitamins under the name "OMEGA-ZIII" in a distinctive trade dress consisting of a red and gold package and label. Defendants distributed OMEGA-ZIII vitamins in the United States under authority from Vitabiotics. Although Vitabiotics terminated that relationship in July 1981, defendants Krupka, C.T.R. International, Inc. and Omega Biologicals, Inc. continued to use the OMEGA-ZIII trade name and trade dress and are currently using them in connection with vitamins not manufactured, authorized or controlled by Vitabiotics. Defendants' vitamins allegedly contain unlawful substances and are promoted through false and/or misleading statements.
The complaint seeks injunctive relief, an accounting of defendants' profits, and damages pursuant to Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a)(Lanham Act), common law unfair competition, and state statutes prohibiting dilution, N.Y. Gen. Bus. Law § 368-d, deceptive trade practices, N.Y. Gen. Bus. Law § 349, and false advertising, N.Y. Gen. Bus. Law § 350. The sixth count of the complaint is for breach of contract and seeks to recover $ 11,806.08 for an unpaid quantity of vitamins.
By an order dated November 29, 1983, this court preliminarily restrained defendants from using the "OMEGA-ZIII" trademark and trade dress and ordered them to serve notice of the injunction on defendants' customers and suppliers, comply with plaintiff's demand for addresses of parties and names and addresses of principal officers of parties, and to file a written report of compliance with the order.
On March 8, 1984, following an evidentiary hearing, the court adjudged defendants in contempt of the order dated November 29, 1983 and referred the matter to a magistrate for an accounting.
Plaintiff now moves for summary judgment on the first five counts of the complaint and for a second order adjudging defendants in contempt. Defendants move to file an amended answer and counterclaims and for the return of certain documents.
Motion for Partial Summary Judgment
Defendants have not filed the statement required by Rule 3(g) of the Civil Rules of this district. Mat rule directs the party opposing a motion for summary judgment to submit a statement of the material facts as to which it is contended that there exists a genuine issue to be tried, and provides further that:
All material facts set forth in the statement required to be served by the moving party will be deemed to be admitted unless controverted by the statement required to be served by the opposing party.
If the facts set out in plaintiff's statement of material facto as to which there is no genuine issue are taken as admitted, plaintiff is entitled to summary judgment. Accordingly, defendants' non-compliance with Rule 3(g) is sufficient reason for the court to grant the motion. However, in the interest of justice the court will consider the motion on the merits and accordingly inquire whether defendants have at any point in their papers opposing the motion "set forth specific facts showing that there is a genuine issue for trial." Federal Rule of Civil Procedure 56(e).
Plaintiff argues that defendants' unauthorized sale of vitamins under exactly the same unregistered "OMEGA-ZIII" trademark and trade dress constitutes a "false designation of origin" in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Defendants admit to deliberately using the same trademark and trade dress. Indeed, they maintain that as a result of their creating the trademark and loaning Vitabiotics $ 50,000.00 for packaging, they and not plaintiff own the trademark and trade dress. Finally, defendant Karl J. Krupka asserts in his affidavit that even if his use of the trademark and trade dress does violate the Lanham Act, he ought not to be prohibited from selling vitamins identical in appearance to plaintiff's because vitamin supplements in brown gelatin capsules are commonplace and because it is his understanding that dark capsules are needed to prevent exposure of certain ingredients to the light.
It is established that "[a] defendant who deliberately passes off his goods as those of the plaintiff by means of a similar or identical trademark has used a 'false designation of origin' within Section 43(a)." 1 J. Gilson, Trademark Protection and Practice, § 7.02 (1982),citing Sutton Cosmetics (P.R.) Inc. v.Lander Co., 455 F.2d 285 (2d Cir. 1972). Except when a mark is suggestive or arbitrary and fanciful (as opposed to generic or descriptive) the plaintiff must demonstrate secondary meaning.See, e.g., DCA Food Industries, Inc. v.Hawthorn Mellody, Inc., 470 F. Supp. 574, 581 n.3 (S.D.N.Y. 1979). While the mark "OMEGA-ZIII" as applied to vitamins hardly seems generic or descriptive, plaintiff has sufficiently shown secondary meaning in this case. It is undisputed that from 1979 to 1981 "OMEGA-ZIII" vitamins were sold in the United States in packaging indicating that they were manufactured by Vitabiotics and imported by defendant C.T.R. International, Inc. Complaint, Exhibit B. After terminating its relations with defendants, Vitabiotics began to sell substantial quantities of the product through another American distributor and continues to do so. Affidavit of Charles Joseph Abbott, (para.) 30. Moreover, conscious imitation is strong evidence of secondary meaning.Harlequin Enterprises, Ltd. v.Gulf & Western Corp., 644 F.2d 946, 950 (2d Cir. 1981).
Trade dress, packaging, and other product features are also protected provided plaintiff demonstrates secondary meaning and non-functionality.See, e.g., Vibrant Sales, Inc. v.New Body Boutique, Inc., 652 F.2d 299, 303 (2d Cir. 1981). The particular red-and-gold packaging at issue here, like the "OMEGA-ZIII" trademark itself, possesses secondary meaning in the marketplace. That unique configuration of colors is entirely non-functional. As for the shape, color, and texture of the vitamins themselves, however, the affidavit of Karl J. Krupka is sufficient to raise triable issues both of secondary meaning and non-functionality. Even if a dark brown capsule is not necessary to protect ingredients from the light, consumers of a certain category of vitamins might associate color with therapeutic effect as did patients taking the drug capsules at issue inIves Laboratories, ...