The opinion of the court was delivered by: Constance Baker Motley, United States District Judge
On December 10, 2001, plaintiffs Cartier, a division of Richmont North America, Inc., ("Cartier NA") and Cartier International, B.V. ("Cartier International") (collectively "Cartier" or "plaintiffs") initiated litigation against defendants Four Star Jewelry Creations, Inc., Crown Jewelry Creations, Inc., and Globe Jewelry, Inc. (collectively "defendants"), alleging trade dress infringement under Section 43(a) of the Lanham Act, infringement of a registered mark under Section 32 of the Lanham Act, trademark infringement under Section 349 of the New York General Business Law, patent infringement, false designation of origin, and trademark dilution. These claims relate to Cartier's Tank Francaise, Tank Americaine, and Panthere lines of watches. On April 30, 2002 defendants filed their answer and counterclaims, denying plaintiffs' allegations and seeking declaratory relief ruling that plaintiffs' alleged trade dress and design patents are invalid, are unenforceable, and were not infringed. On December 17, 2002 this case was transferred from United States District Judge Deborah A. Batts to the undersigned. On February 28, 2003, plaintiffs moved by an Order to Show Cause to amend their complaint and for a preliminary injunction ordering, inter alia, cessation of further sales of a watch depicted in defendants' 2002 catalog, which plaintiffs contend infringes upon their alleged trade dress in their Pasha de Cartier watch and a registered trade mark for the associated Grille design.
Cartier manufactures and sells a well-known line of watches referred to as the Pasha de Cartier watches ("Pasha" or "Pasha de Cartier"). Pursuant to their assertion that the Pasha was designed to be instantly recognizable as a unique luxury watch, plaintiffs have enumerated a litany of "elements" or features of the Pasha design which, they contend, significantly distinguish the Pasha from other watches. See Pl.'s Mem. of Law at 4-6. For example, some of the Pasha watches feature what Cartier describes as a highly distinctive grid design on the face of the watch (the "Grille" or "Grille design").*fn1 Cartier contends that the design features which, in concert, constitute the Pasha trade dress, are unique to the Pasha and "instantly [associate] the watch with the Cartier Pasha line of watches," presumably in the hearts and minds of a discerning consuming public. Id. at 6.
Cartier claims that it recently discovered that defendants' 2002 catalog advertises the sale of a watch which allegedly copies the distinctive Pasha design and the associated Grille design. Cartier claims that in August of 2002 its private investigator was informed by defendants that they were out of catalogs and that new catalogs would be available at the end of the year. Id. at 8. Plaintiffs, through their private investigator, ordered a new catalog in December 2002 and received it in January 2003. Cartier claims that its receipt of the catalog first alerted it to the alleged infringements of which it now complains. Plaintiffs assert that the "Book 39 — 2002" catalog is defendants' most recent catalog. Defendants claim that a subsequent catalog was sent out which does not include pictures of the allegedly infringing watches.
Plaintiffs now move this court for leave to amend their complaint to reflect these additional claims and to take care of what amounts to some housekeeping of the pleadings. Plaintiffs also move a for a preliminary injunction with respect to the alleged copying of the Pasha and Grille watch designs. On May 1, 2003, the court held a hearing in order to address plaintiffs' two motions. For the reasons set forth below, Cartier's motion to amend is GRANTED. Plaintiffs' application for a preliminary injunction is GRANTED in part and DENIED in part.
I. PLAINTIFFS' MOTION FOR LEAVE TO AMEND THE COMPLAINT
A. Pasha and Grille Designs
Plaintiffs' motion for a preliminary injunction involves allegations of trade dress infringement and dilution with respect to watch designs — the Pasha and the Grille — which were not included in Cartier's original complaint. Accordingly, Cartier wishes to amend the complaint to reflect these new allegations of infringement. Since plaintiffs' reasons for requesting leave to amend are sound and will cause no discernible undue prejudice to defendants, their motion will be granted.
Under the Federal Rules of Civil Procedure, a party may amend its pleading once as a matter of right before a responsive pleading is served or, if no responsive pleading is permitted and the case has not yet been placed on a trial calendar, within twenty days after the pleading is served. After that point, absent consent from the opposing party, leave to amend must be obtained from the district court. Fed.R.Civ.P. 15(a). Rule 15(a) specifies that "leave shall be freely given when justice so requires." Id. The Supreme Court has emphasized that amendment should normally be permitted. The Court has ruled that refusal to grant leave without justification is "inconsistent with the spirit of the Federal Rules." Foman v. Davis, 371 U.S. 178, 182 (1962). In deciding a motion to amend, a district court "should consider such factors as undue delay, bad faith or dilatory motive on the part of the movant, undue prejudice to the opposing party and futility of the amendment." Henry v. Murphy, 2002 WL 24307 at *2 (S.D.N.Y. Jan. 8, 2002) (citing Rachman Bag Co. v. Liberty Mut. Ins. Co., 46 F.3d 230, 234-35 (2d Cir. 1995)); Tokio Marine & Fire Insur. Co. v. Employers Insur. of Wasau, 786 F.2d 101, 103 (2d Cir. 1986). Prejudice to the opposing party is perhaps the most important factor to consider in ruling on a motion to amend. See Rissman v. City of New York, 2001 WL 1398655 at *1 (S.D.N.Y. Nov. 9, 2001). For the purposes of Rule 15(a), prejudice occurs if "the opposing party would experience undue difficulty in defending a lawsuit because of a change of tactics or theories on the part of the movant." See Henry, 2002 WL 24307 at *2 (citing Heslop v. UCB, Inc., 2001 WL 1614154 at *1 (D.Kan. Dec. 13, 2001)). It is well established that "prejudice alone is insufficient to justify a denial of leave to amend; rather the necessary showing is undue prejudice to the opposing party." A.V. by Versace, Inc. v. Gianni Versace. S.p.A., 87 F. Supp.2d 281, 299 (S.D.N.Y. 2000) (internal quotations and citations omitted) (emphasis in original). See also Rissman, 2001 WL 1398655 at *1, n. 1 ("In determining whether a party's interests have been unduly prejudiced, the Second Circuit has instructed district courts to consider `whether the assertion of the new claim would: (i) require the opponent to expend significant additional resources to conduct discovery and prepare for trial; [or] (ii) signficantly delay the resolution of the dispute'") (quoting Block v. First Blood Assocs., 988 F.2d 344, 350 (2d Cir. 1993)) (emphasis added).
Judge Batts did not enter an order limiting the time in which the parties could amend the pleadings in this case. The Second Circuit has "held repeatedly that `mere delay' is not, of itself, sufficient to justify denial of a Rule 15(a) motion." Parker v. Columbia Pictures Industries, 204 F.3d 326, 339 (2d Cir. 2000). Moreover, the "`adverse party's burden of undertaking discovery, standing alone, does not suffice to warrant denial of a motion to amend a pleading.'" A.V. by Versace, 87 F. Supp.2d at 299 (quoting United States v. Continental Illinois National Bank and Trust Company, 889 F.2d 1248, 1255 (2d Cir. 1989)). "Allegations that an amendment will require the expenditure of additional time, effort or money do not constitute `undue prejudice.'" Id.
As an initial matter, the parties inform the court that defendants have offered and agreed to stop selling the watch which plaintiffs believe infringes the Pasha and Grille designs. Defendants contend that, accordingly, it is not necessary for Cartier to amend the complaint to add causes of action related to a product which they have voluntarily agreed not to sell.*fn2 The court disagrees. "A defendant's voluntary cessation of a challenged practice does not deprive a federal court of its power to determine the legality of that practice." Friends of the Earth Inc. v. Laidlaw Env'tl. Servs. (TOC). Inc., 528 U.S. 167, 189 (2000). "A suit will be rendered moot by a defendant's voluntarily change in a policy only if it is `absolutely clear that the alleged wrongful behavior could not reasonably be expected to recur.' . . . The party asserting mootness has a `heavy burden of persuading the court that the challenged conduct cannot reasonably be expected to start up again.'" Dodge v. County of Orange, 208 F.R.D. 79, 85 (S.D.N.Y. 2002) (citing Laidlaw, 528 U.S. at 189). Defendants have failed to meet this burden.
Cartier claims that with respect to the addition of claims for infringement, defendants only recently began their alleged infringing activity. Indeed, Cartier claims that it did not become aware of the alleged infringement until late January of 2003. Since defendants have failed to establish undue prejudice, and in light of the brief delay that amendment will cause, it is appropriate to allow leave for amendment. The motion to amend the complaint as to the Pasha and Grille design infringements is therefore GRANTED.
1. Corporate Reorganization
Cartier further moves the court to make certain "technical" amendments to the complaint which address the following issues:
First, Cartier, Inc., was recently renamed Richemont North America, Inc. The proposed Amended Complaint reflects this change. Whereas defendants do not oppose an amendment which reflects plaintiffs' corporate reorganization, the motion to amend the complaint with respect to this issue is GRANTED.
2. Withdrawal of Certain Claims
Second, Cartier wishes to withdraw one of its claims for infringement of U.S. Patent No. Des. 288,066, since that patent has expired. Although defendants initially opposed this attempt to simply withdraw the claim, on April 15, 2003 the parties submitted a Stipulation of Partial Dismissal ("stipulation") reflecting their resolution of this issue. The court accepts the terms of the stipulation and, in light of it, plaintiffs' motion to amend the complaint with respect to this issue is GRANTED.
3. Common law trademark infringement
Third, Cartier wishes to clarify vis-a-vis an amendment to the complaint its intention, in addition to its other claims, to assert claims under New York common law for trademark infringement. Defendants did not expressly object to this proposed amendment in their papers; the court assumes that this portion of the motion is unopposed. The court does not believe that amending the complaint to reflect this clarification unduly burdens defendants; defendants make no indication to the contrary. Accordingly, plaintiffs' motion to amend the complaint with respect to this issue is GRANTED.
4. Refined Trade Dress Description
Finally, plaintiffs wish to amend the complaint in order to clarify and/or refine their proffered definitions of Cartier's trade dress for the watch designs previously described in the original complaint. Defendants claim that amendment of the complaint to reflect refinements of plaintiffs' trade dress definitions will be unduly prejudicial. Defendants argue that they specifically tailored their document requests and interrogatories during discovery to the trade dress descriptions as they were previously represented by plaintiffs in the original complaint. Moreover, defendants claim that they have conducted extensive searches for watches which include the allegedly distinctive features of the Cartier trade dress as these features were represented by plaintiffs in the original complaint. Defendants argue that allowing Cartier to amend the complaint to include a refined description of the relevant trade dress will prejudice them insofar as it will force defendants to "redo" much of their costly discovery.
Trade dress "encompasses the design and appearance of the product together with all the elements making up the overall image that serves to identify the product presented to the consumer." Fun-Damental Too, Ltd. v. Gemmy Indus. Corp. 111 F.3d 993, 999 (2d Cir. 1997) (citing Jeffrey Milstein Inc. v. Gregor, Lawlor, Roth, Inc., 58 F.3d 27, 31 (2d Cir. 1995)). The legal principles governing the protection of unregistered trade dress are very similar to the principles governing other registered and unregistered marks. See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114 (2d Cir. 2001). Section 43(a) protects such trade dress by creating a cause of action against
[any] person who, on or in connection with any goods
or services . . ., uses in commerce any word, term,
name, symbol, or device, or any combination thereof
. . . which is likely to cause confusion, or to cause
mistake, or to deceive as to the affirmation,
connection, or association of such person with another
person, or as to the origin, sponsorship, or approval
of his or her goods, services, or commercial
activities by another person.
15 U.S.C. § 1125 (a)(1).
Trade dress consists of the "total image of a good as defined by its overall composition and design, including size, shape, color, texture, and graphics." Coach Leatherware Co. Inc. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir. 1991) (emphasis added). A product's trade dress is not, in a legal sense, the combination of words which a party uses to describe or represent this "total image." Rather, the trade dress is that image itself, however it may be represented in or by the written word. Inasmuch as a description which closely approximates, represents, or encapsulates the total image may aid the finder of fact in considering a trade dress infringement claim, it is not uncommon for courts to permit trade dress claimants to alter their formulations of what constitutes a given trade dress See e.g., Coach, Inc. v. We Care Trading Co. Inc., 2001 WL 812126 at *1, n. 3 (S.D.N.Y. 2001) ("Coach has provided various formulations of [its] trade dress in its pre-trial papers but offered this definition at the pre-trial conference when asked by the Court for a final statement of its trade dress."), aff'd without opinion, No. 01-7698 (2d Cir. May 20, 2002). Pursuant to bringing a trade dress claim under the Lanham Act, then, "the plaintiff must precisely articulate the specific elements that comprise its distinct trade dress, so that courts can evaluate claims of infringement and fashion relief that is appropriately tailored to the distinctive combination of elements that merit protection." Best Cellars Inc. v. Wine Made Simple Inc., LJG, 2002 WL 1212815, *4 (S.D.N.Y. Mar. 14, 2003). See also Landscape Forms Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997) (plaintiffs must articulate "a precise expression of the character and scope of the claimed trade dress"). As Judge Lynch observed in Best Cellars, the articulation requirement "helps to ensure that claims of trade dress infringement are pitched to the appropriate level of generality, for `just as copyright law does not protect ideas but only their concrete expression, neither does trade dress law protect an idea, a concept, or a generalized type of appearance.'" Id. at *5 (quoting Jeffrey Milstein, 58 F.3d at 32).
In the instant case, plaintiffs' proposed changes do not alter the alleged trade dress itself; rather, they may serve to refine plaintiffs' articulation and representation of the "total image" which constitutes the trade dress. Defendants have had access to this "total image" since this case was filed, inasmuch as it exists independent of and apart from the words which plaintiffs previously used to describe it or may wish to use to describe it in the future.
Plaintiffs' refinement of the written description of their claimed trade dress does not unduly prejudice defendants. Notwithstanding their contentions to the contrary, defendants fail to demonstrate that their discovery requests in this case were "tailored" to the rhetorical descriptions of the trade dress which appeared in the original complaint. See Pl.'s Mem. in Opp. at 4. Defendants' discovery requests made no explicit or implicit reference to the description which appears in the original complaint. Rather, defendants broadly requested documents and information with respect to broadly defined terms such as "intellectual property" and "plaintiffs' products." See Def. Document Production Requests. In addition, defendants fail to demonstrate that their "search" for watches which feature elements of Cartier's alleged trade dress was expressly based upon the written description of the trade dress which appeared in the original complaint. The "`adverse party's burden of undertaking discovery, standing alone, does not suffice to warrant denial of a motion to amend a pleading. . . . Allegations that an amendment requires expenditure of additional time, effort or money do not constitute `undue prejudice.'" A.V. by Versace, ...