The opinion of the court was delivered by: VICTOR MARRERO, District Judge
Plaintiff Maharishi Hardy Blechman Ltd. ("Maharishi") moves to amend
its complaint, which the Court dismissed on a motion for summary judgment
by defendants Abercrombie & Fitch Company and Abercrombie & Fitch
Stores, Inc. (collectively, "Abercrombie"), but granted Maharishi leave
to replead certain claims. See Maharishi Hardy Blechman Ltd, v.
Abercrombie & Fitch Co., 292 F. Supp.2d 535 (S.D.N.Y. 2003).
The motion is granted.
The facts and procedural history of this case are explained more fully
in the Court's summary judgment opinion. Id. at 538-40.
Maharishi alleges, among other things, that certain Abercrombie garments
infringe upon the trade dress of a style of Maharishi pants known as
"Snopants." The Court granted Abercrombie summary judgment on the trade
on the ground that Maharishi's asserted trade dress was not
consistent throughout the line of widely-divergent Snopants.
Id. at 550. The Court noted that certain "muddy preliminary
issues overshadow[ed] the underlying merits," which required the Court to
decide the motion based upon suppositions which may not have accorded
with Maharishi's intentions. Id. at 543. In particular, the
case involved limited discovery (Abercrombie sought none), and it was
unclear exactly the nature of Maharishi's claimed trade dress, which the
Court characterized as a "moving target." Id. Maharishi
attempted to clarify and narrow the scope of its lawsuit in such a way as
to cure these deficiencies, but it did so for the first time in its
opposition to Abercrombie's motion to dismiss. See
Id. at 543-44. Because of this peculiarity, the Court's grant
of summary judgment to Abercrombie also permitted Maharishi to file a
motion for leave to amend its complaint the motion now before the
Court. See Id. at 554-55.
Leave to amend a complaint "shall be freely given," Fed.R.Civ.P.
15(a), and "there must be good reason to deny the motion" for leave to
amend. Acito v. IMCERA Group, Inc., 47 F.3d 47, 55 (2d
Cir. 1995). Abercrombie contends that Maharishi's amendments would be
futile because the proposed amended complaint would not survive a motion
to dismiss. However, Abercrombie's argument on this point reads more like
a summary judgment motion than an opposition to a proposed
amendment of a complaint a legal challenge that at this stage of
litigation is more akin to a Rule 12(b)(6) attack on the sufficiency of
the pleadings. In this regard, Abercrombie ignores the rule that "[i]n
considering a motion to dismiss for failure to state a claim, a district
court must limit itself to the facts stated in the complaint, documents
attached to the complaint as exhibits and documents incorporated by
reference in the complaint." Hayden v. County of Nassau,
180 F.3d 42, 54 (2d Cir. 1999). For example, Abercrombie argues that there is
no likelihood of confusion between its garments and Snopants, based upon
the factors set forth in Polaroid Corp. v. Polarad Elecs.
Corp., 287 F.2d 492 (2d Cir. 1961). However, the question of
likelihood of confusion is a fact-specific inquiry which would require
the Court to resolve disputed fact questions beyond the complaint, and it
is therefore a question not appropriate for resolution on a test that
considers only whether the complaint states a cognizable claim upon which
the plaintiff may obtain relief. See Manning Int'l Inc. v.
Home Shopping Network. Inc., 152 F. Supp.2d 432, 437 n.7 (S.D.N.Y.
2001). The Court expresses no opinion as to the ultimate merits of
Abercrombie's arguments; the Court here only concludes that those
arguments are premature.
The Court also notes that: Maharishi's proposed amended complaint
follows the Court's instructions and cures the precise deficiencies which
the Court had identified. The proposed amended complaint makes clear that
Maharishi is seeking trade dress protection for the trade dress
associated with two particular styles of pants, whose definitions are
For the stated reasons, it is hereby
ORDERED that the motion of plaintiff Maharishi Hardy Blechman
Ltd. for leave to amend it complaint is granted.
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