have failed to articulate specifically the jewelry designs that they seek to protect as trade dress. In addition, the defendants have moved for summary judgment on the plaintiffs' claims for copyright infringement, arguing that under the applicable standard of similarity necessary for claims of infringement, there is an insufficient similarity between the plaintiffs' protected jewelry designs and the jewelry produced by the defendants.
The plaintiffs have moved for partial summary judgment dismissing any defense raised by the defendants that the plaintiffs' copyrights are invalid and striking the defendants' seventh affirmative defense of "unclean hands".*fn1
The plaintiffs in their Fourth Amended Complaint alleged six causes of action, including a claim for: (1) copyright infringement, in violation of 17 U.S.C. § 106; (2) trade dress infringement, in violation of 15 U.S.C. § 1125(a); and state law causes of action for (3) deceptive acts and practices; (4) unfair competition; (5) misappropriation; and (6) unjust enrichment. The defendants have moved for summary judgment on the claims for copyright infringement and trade dress infringement.
The standard for granting summary judgment is well established. Summary judgment may not be granted unless "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Gallo v. Prudential Residential Servs. Ltd. P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). "The trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution." Gallo, 22 F.3d at 1224. The moving party bears the initial burden of "informing the district court of the basis for its motion" and identifying the matter that "it believes demonstrate[s] the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323, 106 S.Ct. 2548. The substantive law governing the case will identify those facts that are material and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962)); see also Gallo, 22 F.3d at 1223. Summary judgment is improper if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994). If the moving party meets its burden, the burden shifts to the nonmoving party to come forward with "specific facts showing that there is a genuine issue for trial." Fed R. Civ. P. 56(e). The nonmoving party must produce evidence in the record and "may not rely simply on conclusory statements or on contentions that the affidavits supporting the motion are not credible." Ying Jing Gan v. City of New York, 996 F.2d 522, 532 (2d Cir. 1993); see also Scotto v. Almenas, 143 F.3d 105, 114-15 (2d Cir. 1998) (collecting cases).
Both the plaintiffs and defendants filed a statement of undisputed facts as required by Local Rule 56.1(a). The defendants' statement of undisputed facts does not contain undisputed facts, but is instead a collection of legal arguments. In addition, the defendants have failed to file a statement that either admits or denies any of the facts that the plaintiffs set forth as being undisputed, as required by Local Civil Rule 56.1(b). The defendants' failure to respond or contest the facts set forth by the plaintiffs in their Rule 56.1 statement as being undisputed constitutes an admission of those facts, and those facts are accepted as being undisputed. See Local Civil Rule 56.1(c); Gubitosi v. Kapica, 154 F.3d 30, 31 n. 1 (2d Cir. 1998); United States v. All Right, Title and Interest in Real Property and Appurtenances, 77 F.3d 648, 657-58 (2d Cir. 1996); John Street Leasehold, LLC v. Capital Mgmt. Res., L.P., 154 F. Supp.2d 527, 534 (S.D.N.Y. 2000), aff'd 283 F.3d 73 (2d Cir. 2002). The Court, consistent with the decision of the Court of Appeals in Giannullo v. City of New York, 322 F.3d 139, 140 (2d Cir. 2003), has conducted an independent review of the plaintiffs' allegedly undisputed facts that are cited below and found them to be adequately supported by the record in this case.
Beginning in or about 1982, Yurman began designing, manufactutring, promoting, and marketing a line of jewelry products that incorporate a cable design, together with other innovative and creative artistic elements. (Pls.' Rule 56.1 Stmt. ¶ 4.) Since the introduction of its cable designs, Yurman has spent enormous amounts of time, resources, and effort to cultivate a reputation for producing jewelry of the finest design, materials and craftsmanship, resulting in global recognition by consumers and the jewelry designs. (Pls.' Rule 56.1 Stmt. ¶ 5.) Under the direction of its president, David Yurman, a jewelry designer, the plaintiffs have become regarded as a leading jewelry design company. (Fourth Am. Compl. ¶ 8.) The plaintiffs have several signature jewelry collections, many of which incorporate the cable design, along with other elements. (Fourth Am. Compl. ¶¶ 9-10; see, e.g., Fourth Am. Compl. ¶ 15 (noting that the "Channel Collection" "has as a common theme yellow gold collars with colorful semi-precious stones placed on twisted sterling silver cable. The collars are composed of single bands of yellow gold on either side of square cut semiprecious colorful stones. The collars complete a circle around the sterling silver twisted cable that are then shaped into bracelets, necklaces, rings, and earrings.")
Yurman has received federal copyright protection for some of its jewelry designs. (Pls.' Rule 56.1 Stmt. ¶ 6.) The defendants manufacture, import, advertise, distribute and sell jewelry products under the labels "The Torcellato Collection" and "The Satinato Collection" which the plaintiffs allege infringe upon several of the plaintiffs' copyrighted jewelry designs and the plaintiffs protected trade dress in dozens of those designs. (Pls. Rule 56.1 Stmt. ¶¶ 7-10.)
The defendants have moved for summary judgment on the plaintiffs' claim for trade dress infringement. The plaintiffs' claim for trade dress infringement are governed by § 43(a) of the Lanham Act. To establish a claim for trade dress infringement, the plaintiffs must establish (1) ownership of valid and protectable trade dress and (2) the allegedly infringing trade dress is likely to confuse consumers as to the product's source or sponsorship. Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 118-19 (2d Cir. 2001). With respect to the first element, "trade dress is protected under the Lanham Act if it is not functional and if it is either inherently distinctive or has acquired secondary meaning in the marketplace." Id. at 118. The defendants have moved for summary judgment, arguing that (1) the plaintiffs have not appropriately identified any protectable trade dress; (2) the plaintiffs' trade dress is functional; and (3) the plaintiffs cannot establish secondary meaning for their trade dress. The defendants have not moved for summary judgment on the basis of a lack of consumer confusion. For the reasons explained below, with respect to each of the defendants' contentions, summary judgment dismissing the plaintiffs' trade dress claim cannot be granted.
The defendants first argue, on the basis of the decision by the Court of Appeals in Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001), that the plaintiffs have failed to specifically articulate the trade dress that it seeks to protect, and that the plaintiffs may not seek protection for an entire line of jewelry designs or for the entire line of David Yurman "cable jewelry."
In Yurman, the plaintiff, Yurman Design, Inc., who is also a plaintiff in the present action, had argued that "its trade dress could be discerned from an entire product line of 18 different Yurman pieces — eight rings, seven bracelets, and three pairs of earrings." Id. at 114. The Court of Appeals found that the plaintiffs trade dress infringement claim under the Lanham Act had to be dismissed because Yurman Design, Inc. had failed to identify the specific elements of its alleged trade dress and because "a plaintiff seeking to protect its trade dress in a line of products must articulate the design elements that compose the trade dress." Id. at 116.
The defendants argue that the plaintiffs have again failed to identify the specific elements of the trade dress that they seek to protect. This argument has no merit. In the Fourth Amended Complaint, the plaintiffs do not attempt to claim trade dress protection over an entire line of jewelry products without reference to specific elements; rather, the plaintiffs have set out in significant detail all of the various designs as embodied in particular pieces of jewelry, and it is clear that the plaintiffs seek to protect each of these designs individually as trade dress. (See Fourth Am. Compl. ¶ 19 (outlining and claiming trade dress protection for twenty four separate jewelry designs as embodied in different and specific pieces of jewelry, including necklaces, earrings and bracelets). The Fourth Amended Complaint specifies the design features that compose the specific and individualized trade dress sought to be protected. In addition, the plaintiffs make clear in their papers in response to the defendants' motion for summary judgment that they no longer are claiming the broad and unifying trade dress that was found to be insufficiently specified by the Court of Appeals, but seek protection of individual designs, and allege infringement of each of those individual designs. Besides the arguments of functionality addressed below, the defendants have not argued that those individual designs are insufficiently specific and rely exclusively on the decision by the Court of the Appeals in Yurman to dismiss the plaintiffs' claims. Because the plaintiffs no longer seek to protect and entire line of products as a singular trade dress, the defendants' reliance on Yurman is misplaced, and the defendants' motion on the basis of this argument is denied.*fn2
The defendants also argue that summary judgment is appropriate because the plaintiffs' trade dress is both functional in a utilitarian sense and because it is aesthetically functional. The Court of Appeals has consistently explained that liability under § 43(a) of the Lanham Act may be avoided if the trade dress element sought to be protected is functional. See Knitwaves, Inc. v. Lollytogs, Ltd. (Inc.), 71 F.3d 996, 1005-06 (2d Cir. 1995). A "`product feature is functional, and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" Yurman, 262 F.3d at 116 (quoting TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001) (internal quotations omitted ). Where trade dress involves an aesthetic feature, that feature is functional "if the right to use it exclusively would put competitors at a significant non-reputation-related disadvantage." Yurman, 262 F.3d at 116 (quotations omitted).
The defendants first argue that the plaintiffs' trade dress is functional because the cable dress designs sought to be protected have functional uses, namely that the cable designs allow for the creation of lightweight jewelry without sacrificing band strength and without the use of hinges. The defendants base this functionality argument on the existence of a utility patent that the plaintiffs have on a cable used in various products manufactured by the plaintiffs. The Supreme Court has recently explained that
A utility patent is strong evidence that the features
therein claimed are functional. If trade dress
protection is sought for those features the strong
evidence of functionality based on the previous
patent adds great weight to the statutory presumption
that features are deemed functional until proved
otherwise by the party seeking trade dress
protection. Where the expired patent claimed the
features in question, one who seeks to establish
trade dress protection must carry the heavy burden of
showing that the feature is not functional, for
instance by showing that it is merely an ornamental,
incidental, or arbitrary aspect of the device.