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BANFF LTD. v. EXPRESS

December 29, 1995

BANFF LTD., Plaintiff, against EXPRESS, INC., Defendant.


The opinion of the court was delivered by: SCHEINDLIN

 SHIRA A. SCHEINDLIN, U.S.D.J.:

 After a six day trial in this copyright and trademark action, the jury returned a verdict for plaintiff Banff Ltd. ("Banff"), a knitwear manufacturer. The jury found that Defendant Express, Inc. ("Express"), a retail clothing chain, had infringed Plaintiff's copyright by selling a knockoff of Plaintiff's Aran fisherman's sweater. The jury awarded Plaintiff $ 200,685 in actual damages and $ 1,017,240 in profits it determined Defendant earned from the infringement. The jury also concluded that Defendant had violated § 43(a) of the Lanham Act by infringing Plaintiff's trade dress and by falsely designating the origin of the copied sweaters. However, the jury was not persuaded that Defendant violated the Lanham Act in a "willfully deceptive" manner, and awarded no damages on the trademark claims.

 Express now moves, pursuant to Fed R. Civ. P. 50(b), for judgment as a matter of law on a number of Banff's claims. First, Express contends that it is entitled to judgment on Banff's claim for actual damages under the Copyright Act. Second, Express contends that the jury's verdict as to the amount of profit it made from the infringing sweaters is unfounded, and should be reduced to no more than $ 274,812. Third, Express argues that it is entitled to judgment on Banff's claims for trade dress infringement and false designation of origin. Alternatively, pursuant to Fed. R. Civ. P. 59, Express seeks a new trial on each of the issues addressed in its motion. For the reasons set forth below, Express' motion for judgment as a matter of law is granted in part and denied in part. Express' motion for a new trial is granted in part, denied in part, conditionally granted in part, and conditionally denied in part. *fn1"

 In late 1990, Jeffrey Gray, an employee of Banff's Vanessa Division, designed the sweater that is the subject of this lawsuit. Trial Transcript ("Tr.") at 79-80. The sweater Mr. Gray designed conformed to the Aran style of knitting, and featured a combination of cabled patterns, traditional stitching and hand crocheted roses. See Banff Ltd. v. Limited, Inc., 869 F. Supp. 1103, 1105 (S.D.N.Y. 1994); Tr. at 205. *fn2" Banff produced both wool and cotton versions of this sweater, and sold it to a number of retailers, including Neiman Marcus, Bergdorf Goodman and Bloomingdale's. Tr. at 82, 84-85.

 In December 1992, a Banff employee named Lois Adelman noticed a similar sweater in the window of one of Express' Manhattan stores. Tr. at 90. She notified Herbert Vanefsky, the President of Banff's Vanessa division. Mr. Vanefsky purchased one of Express' sweaters, and brought it back to his showroom to compare it with Banff's sweater. Tr. at 92. Although the Express sweater was made of a combination of ramie and cotton, a less expensive material than Banff used, Mr. Vanefsky was convinced that its design was identical to that of the Banff sweater. Tr. at 92, 95, 105. Mr. Vanefsky called his attorneys, and promptly filed for a copyright of Banff's sweater. Tr. at 92. Soon thereafter, in April 1993, Banff brought this action.

 At trial, Banff offered evidence as to the originality of Mr. Gray's design. Kathleen Sibrizzi, a designer with seventeen years experience, testified that it was one of the most unique sweaters she had ever seen. Tr. at 316, 317. Ms. Sibrizzi also testified that the Sweater sold by Express was virtually identical to that designed by Mr. Gray. Tr. at. 324.

 In addition, Banff offered evidence suggesting that Express' employees were aware of Banff's sweater. The evidence established that Banff's sweater was advertised in both Bergdorf Goodman's and Bloomingdale's catalogues, and that the employee in charge of purchasing sweaters for Express read these catalogues. Tr. at 83, 87, 236. The evidence also established that Banff's sweater was featured in Glamour magazine, another publication which Express' sweater purchaser read. Tr. at 235.

 The evidence presented at trial clearly supported the jury's determination that Express infringed Banff's copyright. Notably, Express does not challenge this determination. Express challenges only the damages the jury awarded under the Copyright Act, and the jury's finding that its actions violated § 43(a) of the Lanham Act.

 B. Standards for Judgment as a Matter of Law or a New Trial

 
Fed. R. Civ. P. 50(a)(1) sets out the standard for granting a motion for judgment as a matter of law:
 
If during a trial by jury a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue, the court may determine the issue against that party and may grant a motion for judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue (emphasis added).

 The Court may only grant such a motion where "there is such a complete absence of evidence supporting the verdict that the jury's finding could only have been the result of sheer surmise and conjecture, or if the evidence is so overwhelming that reasonable and fair minded persons could only have reached the opposite result." Lambert v. Genesee Hospital, 10 F.3d 46, 56 (2d Cir. 1993), cert. denied, U.S. , 128 L. Ed. 2d 339, 114 S. Ct. 1612 (1994) (internal quotations omitted).

 In deciding a motion brought under Rule 50, the Court may not weigh the evidence or assess the credibility of witnesses. Rather, the Court must view the evidence in the light most favorable to the non-moving party, giving it the benefit of all legitimate inferences that may be made in its favor. See Samuels v. Air Transport Local 504, 992 F.2d 12, 14-16 (2d Cir. 1993); Alpex Computer Corp. v. Nintendo Company, Ltd., 1994 U.S. Dist. LEXIS 17515, 1994 WL 681752 (S.D.N.Y. Dec. 5, 1994).

 The standard for granting a motion for a new trial under Rule 59 is less restrictive. Such a motion may be granted where the Court finds "that the jury has reached a seriously erroneous result or that the verdict is . . . against the weight of evidence." Mallis v. Bankers Trust Co., 717 F.2d 683, 691 (2d Cir. 1983) (internal quotation omitted). In evaluating a motion for a new trial, the Court may weigh the evidence and is not required to view it in the light most favorable to the non-moving party. See Bevevino v. Saydjari, 574 F.2d 676, 684 (2d Cir. 1978); US East Telecommunications, Inc. v. US West Information Systems, Inc., 1993 U.S. Dist. LEXIS 13594, 1993 WL 385810, *5 (S.D.N.Y. Sept. 30, 1993), aff'd, 38 F.3d 1289 (2d Cir. 1994). However, "the grant of a new trial on weight of evidence grounds should be ...


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