United States District Court, S.D. New York
October 11, 2005.
CARTIER, a division of RICHEMONT NORTH AMERICA, INC.; and CARTIER INTERNATIONAL, B.V., Plaintiffs,
SAMO'S SONS, INC.; FREDDIE SAMUEL; GABRIEL EFRAIM JEWELRY INC.; GABRIEL MUSHEYEV; SARDELL JEWELRY, INC.; ELI SARDAR; L&M JEWELRY CREATIONS, INC.; DAVID RAPPAPORT; AWAD II, INC.; ITALIANO GOLD MOUNTING and JOHN DOES 2-5, Defendants.
The opinion of the court was delivered by: RICHARD BERMAN, District Judge
DECISION AND ORDER
On or about September 14, 2004, Cartier and Cartier
International, B.V. (together, "Cartier" or "Plaintiffs") filed
an amended complaint ("Amended Complaint") against Sardell
Jewelry, Inc. and Eli Sardar (together, "Defendants") asserting
trade dress and trademark infringement in violation of Sections
32 and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and
Section 349 of the New York General Business Law, N.Y. Gen. B.L.
§ 349. (Amended Complaint ¶¶ 60, 61, 69, 70.)*fn1 Plaintiffs
allege that Defendants "without Cartier's authorization, have
advertised, offered for sale, sold and distributed imitations of
Cartier's watches and jewelry, . . . infringing the rights of
Cartier." (Id. ¶ 53.)
On or about May 6, 2005, Plaintiffs filed a motion for summary
judgment pursuant to Rule 56 of the Federal Rules of Civil
Procedure, arguing that Defendants "copied one of its famous and successful watch designs the Tank Francaise and sold
`knockoff' or `look-alike' watches." (See Plaintiffs'
Memorandum of Law in Support of Motion for Summary Judgment,
dated May 6, 2005 ("Plaintiffs' Memorandum"), at 1.) On or about
June 9, 2005, Defendants opposed the motion and cross-moved for
summary judgment, arguing that "the most prominent features of
the Cartier watch are functional," and that the evidence is
"inadequate to show that the design of the Cartier watch is . . .
distinctive." (See Defendants' Memorandum of Law in Opposition
to Plaintiffs' Motion for Summary Judgment and in Support of
Defendants' Cross Motion for Summary Judgment, dated June 8, 2005
("Defendants' Opposition"), at 2-3.)*fn2 On or about June
24, 2005, Plaintiffs filed their reply. (See Plaintiffs' Reply
Memorandum of Law in Further Support of Motion for Summary
Judgment, dated June 24, 2005 ("Plaintiffs' Reply").) For the
reasons stated below, Plaintiffs' motion for summary judgment is
granted in part and denied in part, and Defendants' motion for
summary judgment is granted in part and denied in part.
Plaintiffs have been a "world famous watch manufacturer and
jeweler" since 1847, and manufacture and distribute the Tank
Francaise family of luxury watches ("Tank Francaise").
(Plaintiffs' Memorandum at 1-2.) Plaintiffs own Trademark
Registration No. 2,322,769 for the Tank Francaise case design,
issued on February 29, 2000. (Amended Complaint ¶ 29.) Defendant
Sardell Jewelery, Inc. is a New York corporation which "generally
sells at wholesale to jewelry stores, although it has on occasion
sold to retail customers." (Plaintiffs' Memorandum at 4;
Plaintiffs' Statement of Material Facts Pursuant to Local Civil
Rule 56.1, dated May 6, 2005 ("Plaintiffs' 56.1 Stmt.") ¶ 3.)
Defendant Eli Sardar is president of Sardell Jewelry, Inc. and
"is responsible for and makes the final decision as to buying."
(Plaintiffs' 56.1 Stmt. ¶ 4.) On or about February 13, 2004,
Defendants sold a watch ("Defendants' Watch") to an investigator
hired by Plaintiffs for $1,000. (Id. ¶¶ 5-7.)
Plaintiffs claim that Defendants' Watch is "a close imitation"
of the trade dress for the Tank Francaise. (Id. ¶ 9;
Defendants' Statement of Material Facts Pursuant to Local Rule
56.1, dated June 2, 2005 ("Defendants' 56.1 Stmt.") ¶ a.)
Defendants argue that, other than producing a "square watch
with Roman numerals on the dial", "the remaining features of
Plaintiff's `Tank Francaise" watch . . . are not copied or
imitated by the watch sold by the defendants." (Defendants' 56.1
Stmt. ¶¶ A, F.)
Both watches are alike in that they each have (1) square watch
faces that feature Roman numerals, each of which "inclines to
conform to the angle-direction of the watch hands at such time as
the hands are juxtaposed to that numeral," (Plaintiffs' 56.1
Stmt. ¶ 10(c)), (2) a "metal chain bracelet . . . [which]
consists of alternating H-shaped and rectangular links," (id. ¶
10(f)), (3) "relatively thick concave vertical frames (or
brancards), both formed of the case metal. . . . [which] are
elongated beyond the bottom and top of the watch case, and end in
inwardly angled corners," (id. ¶ 10(a)), and (4) "chapter
ring[s] or minute guide[s] located between the center of the dial
and the numerals." (Id. ¶ 10(a); (see also photograph of
Defendants' Watch, attached as Exhibit B to Declaration of Hanice
Tavares, dated May 2005 ("Tavares Decl.")); photograph of the
Tank Francaise, attached as Ex. FF to Declaration of Milton
Springut, dated May 6, 2005 ("Springut Decl.").) Certain models
of the Tank Francaise include a square window showing the date in
place of the Roman numeral "six," and this is also true of
Defendants' Watch. The face of Defendants' Watch is marked
"GENEVE" on the upper portion and "QUARTZ" on the bottom portion,
while the Tank Francaise reads "CARTIER" on the upper portion of
the watch face and the bottom portion is blank. (See Tavares
Decl. Ex. B; Springut Decl. Ex. FF.) III. Legal Standard
Federal Rule of Civil Procedure 56(c) provides that summary
judgment "shall be rendered forthwith if 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 issue of fact and that the
moving party is entitled to a judgment as a matter of law."
Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317,
322 (1986). "The court must view the evidence in the light most
favorable to the party against whom summary judgment is sought
and must draw all reasonable inferences in [its] favor." Koch v.
Multiplan, Inc., No. 99 Civ. 11277, 2001 U.S. Dist. LEXIS 2142,
at *6 (S.D.N.Y. Feb. 16, 2001); Melwani v. Jain, No. 02 Civ.
1124, 2004 U.S. Dist. LEXIS 7590, at *12 (S.D.N.Y. Apr. 29,
2004). The Court must reserve any genuine issue of material fact
for a jury. See ResQNet.com, Inc. v. Lansa, Inc.,
382 F. Supp. 2d 424, 436 (S.D.N.Y. 2005).
When cross-motions for summary judgment are made, the standard
is the same as that for individual motions. See Morales v.
Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001); AFP
Imaging Corp. v. Philips Medezin Systeme Unternehmensbereich der
Philips GMBH, No. 92 Civ. 6211, 1994 U.S. Dist LEXIS 16504, *2
(S.D.N.Y. Nov. 17, 1994). The court must consider each motion
independently of the other. Morales, 249 F.3d at 121.
Section 43(a) of the Lanham Act prohibits a person from using
"any word, term, name symbol or device, or any combination
thereof" that is "likely to cause confusion . . . as to the
origin, sponsorship, or approval of his or her goods."
15 U.S.C. § 1125(a). Section 32 of the Lanham Act requires that the mark in
question has been registered. 15 U.S.C. § 1114(1).*fn3 In
order to prevail in an action for trade dress and trademark infringement pursuant to
Sections 32 and 43(a) of the Lanham Act, plaintiff must show "(1)
that the mark is distinctive as to the source of the good, and
(2) that there is a likelihood of confusion between its good and
defendant's." Yurman Design, Inc. v. Paj, Inc., 262 F.3d 101,
115-16 (2d Cir. 2001).*fn4 Even if plaintiff can show
distinctiveness and a likelihood of confusion, "a defendant may
avoid liability under [the Lanham Act] if he or she is able to
demonstrate that the allegedly similar trade dress feature is
`functional.'" Villeroy & Boch Keramische Werke K.G. v. THC
Sys., Inc., 999 F.2d 619, 620 (2d Cir. 1993). "A product feature
is functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article, that
is, if exclusive use of the feature would put competitors at a
significant non-reputation-related disadvantage." Knitwaves,
Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995).
(1) Distinctiveness of the Tank Francaise Mark
Plaintiffs argue that "Cartier has achieved secondary meaning
in the Tank Francaise design at issue" because, among other
things, "a consumer survey . . . shows 60% recognition among the
relevant consuming public," (i.e., fine watch owners or those
very likely to buy), and there has been "extensive media
commentary and recognition." (Plaintiffs' Memorandum at 14-15.)
Defendants respond that "even if plaintiff's product were well
recognized by the public," no secondary meaning exists because
Plaintiffs cannot show that "from observing the product, the
observer knows that it is the product of a particular
manufacturer." (Defendants' Opposition at 4.) Defendants also
contend that the consumer survey on which Plaintiffs rely "is
flawed and would likely be inadmissible at trial because it did
not test the perceptions of an ordinary observer." (Id. at 10.) "Distinctiveness may be proven by showing the intrinsic nature
of the mark serves to identify a particular source or that `in
the minds of the public, the primary significance of [the mark]
is to identify the source of the product rather than the product
itself.'" Cartier, Inc. v. Four Star Jewelry Creations, Inc.,
348 F. Supp. 2d 217, 240 (S.D.N.Y. 2004) (citing Yurman,
262 F.3d at 115.) Courts consider "advertising expenditures, consumer
studies, sales, competitors' attempts to plagiarize the mark, and
the length and exclusivity of the mark's use" in determining
whether a mark has acquired a secondary meaning. Friesland
Brands, B.V. v. Vietnam Nat'l Milk Co., 228 F. Supp. 2d 399, 405
(S.D.N.Y. 1983) (quoting Arrow Fastener Co., Inc. v. Stanley
Works, 59 F.3d 384, 393 (2d Cir. 1995)).
Plaintiffs provide substantial evidence that "Cartier has
engaged in extensive advertising and other promotion of its
products, including the Tank Francaise" by, among other things,
"plac[ing] print advertising in magazines, newspapers, and
billboards, both nationally and regionally, as well as `co-op'
advertising with its authorized dealers." (Plaintiffs' Memorandum
at 4; see Springut Decl. Exs. AA-DD, FF.) Plaintiffs show that
"media spending for the Tank Francaise has averaged in excess of
$1 Million per year," and that advertisements have appeared in
national publications such as Vogue, Town and Country,
Architectural Digest, The New Yorker, The New York Times,
Washington Post, Los Angeles Times, and The Chicago Tribune.
(Id.; see Springut Decl. Ex. X.) These extensive efforts to
advertise and promote Plaintiffs' products weigh in favor of a
finding that the Tank Francaise has acquired a secondary meaning.
See Four Star, 348 F. Supp. 2d at 241-42; Citigroup v. Citi
Holding Co., 171 F. Supp. 2d 333, 346 (plaintiff's marks,
"through extensive advertising and promotion over the decades,
garnered extraordinary acquired distinctiveness.") Consumer Studies
Plaintiffs retained an expert, Dr. Sidney Lirtzman, president
of Fairfield Consulting Associates, Inc. (a consumer consulting
company), to conduct a survey to assess whether the Tank
Francaise has acquired a secondary meaning. (See Declaration
and Expert report of Dr. Sidney I. Lirtzman, dated March 8, 2005
("Lirtzman Expert Report").) Dr. Lirtzman interviewed 149
customers at Tourneau watch stores in Manhattan, Long Island, and
Los Angeles who "reported owning a fine watch valued at $2,500 or
more" or "were very likely to buy a fine watch in the next year."
(Lirtzman Expert Report at 8.) The survey found that "sixty-one
percent of the respondents associated the design of the Tank
Francaise watch with a single company." (Id.) Defendants argue
that the Lirtzman Expert Report is "flawed" because it "did not
test the perceptions of an ordinary observer." (Defendants'
Opposition at 10.) Plaintiffs respond that "it is sufficient to
demonstrate secondary meaning in the limited market for such
watches." (Plaintiffs' Reply at 2.)
The Lirtzman Expert Report shows that a majority of consumers
who "reported owning a fine watch valued at $2,500 or more" or
"were very likely to buy a fine watch in the next year" identify
the Tank Francaise with one source. "The Plaintiff is not
required to establish that all consumers relate the product to
its producer; it need only show that a substantial segment of the
relevant consumer group makes this connection." Coach
Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162, 168 (2d Cir.
1991) (emphasis in original); Four Star, 348 F. Supp. 2d at 242
("[V]alid market research does not require a secondary meaning
survey to be conducted in a vacuum."). Because the findings in
the Lirtzman Expert Report show that the Tank Francaise has
acquired secondary meaning among fine watch owners or those
likely to purchase a fine watch in the next year, it supports a
ruling in Plaintiffs' favor. See Deere & Co. v. MTD Holdings
Inc., No. 00 Civ. 5936, 2004 U.S. Dist. LEXIS 2550, at **32-33
(Feb. 19, 2004); Schering Corp. v. Pfizer, Inc., No. 98 Civ.
7000, 2000 U.S. Dist. LEXIS 7071, at **24-25 (May 24, 2000). Sales
Plaintiffs present evidence that Cartier watches are sold in
the United States in 33 Cartier boutiques and by approximately
225 authorized dealers. (Plaintiffs' Memorandum at 5; Springut
Decl. Exs. Z, AA.) As of 2002, Cartier had sold approximately
93,750 Tank Francaise watches for more than $266 million.
(Plaintiffs' Memorandum at 5; Springut Decl. Ex. Y.) This
evidence of sales success also favors a finding that the Tank
Francaise has achieved secondary meaning. See Four Star,
348 F. Supp. 2d at 242; see also Deere & Co., 2004 U.S. Dist.
LEXIS at *33.
Competitors' Attempts to Plagiarize the Mark
Plaintiffs present evidence that "numerous merchants of
`knockoff' or `look-alike' merchandise make comparison . . . to
Cartier through use of such terms as `Cartier-style' or even the
specific Cartier models, e.g., `Tank Francaise.'" (Plaintiffs'
Memorandum at 9; Springut Decl. Exs. LL, NN-PP.) "Secondary
meaning may be supported by intentional copying, particularly
when the purpose is `to benefit from the good will of the prior
user through confusion.'" Four Star, 348 F. Supp. 2d at 243
(citing New Colt Holding Corp. v. RJG Holdings of Fla., Inc.,
312 F. Supp. 2d 195, 208-09 (D. Conn. 2004)). The intentional
copying identified by Plaintiffs is evidence that the Tank
Francaise has acquired a secondary meaning. See Centaur
Commc'ns Ltd. v. A/S/M Commc'ns, Inc., 830 F.2d 1217, 1224 (2d
Cir. 1987); N.Y. State Soc'y of CPAs v. Eric Louis Assocs.,
79 F. Supp. 2d 331, 340 (S.D.N.Y. 1999).
Length and Exclusivity of Use
The Tank Francaise was first marketed in 1996 and was an
"instant hit," and the design has been used continuously for over
nine years. (Plaintiffs' Memorandum at 5.) This length of time
supports a finding that the Tank Francaise has acquired secondary
meaning. See Four Star, 348 F. Supp. 2d at 243 (evidence of
secondary meaning exists where product design had been used for
eight years); Dana Braun, Inc. v. SML Sport Ltd., 2003 U.S.
Dist. LEXIS 21349, **39-40 (S.D.N.Y. 2003) (evidence of secondary meaning exists where
product design had been used for five years); Landscape Forms,
Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 367 (S.D.N.Y.
2000) (evidence of secondary meaning exists where product design
had been used for eleven years).
Plaintiffs also provide substantial evidence that Cartier has
protected the Tank Francaise mark. Plaintiffs "enforce a `zero
tolerance' policy with respect to infringements," and, among
other things, employ an investigator dedicated to discovering
possible infringements in Manhattan, send many "`cease and
desist' letters, which consist of alerting alleged infringers of
Cartier's rights and various claims of infringement," and
"[o]ccasionally, these efforts also include filing of
litigation." (Plaintiffs' Memorandum at 11.) These measures also
support a finding that the Tank Francaise has acquired a
secondary meaning. See Dana Braun, 2003 U.S. Dist. LEXIS at
Examining these factors in their totality, the Court concludes
that the Tank Francaise is distinctive and has acquired a
secondary meaning. See Four Star, 348 F. Supp. 2d at 244;
see also, Centaur Commc'ns, 830 F.2d at 1222; Deere & Co,
2004 U.S. Dist. LEXIS at **33-34; Energy Brands, Inc. v. Beverage
Mktg. USA, Inc., No. 02 Civ. 3227, 2002 U.S. Dist. LEXIS 7763,
at *3 (S.D.N.Y. May 1, 2002).
(2) Likelihood of Confusion
Plaintiffs argue that Defendants' Watch caused "confusion as to
sponsorship, initial interest (pre-sale) confusion and post-sale
confusion." (Plaintiffs' Memorandum at 18.) Defendants respond
that no such confusion existed because "potential purchasers of
fine watches costing thousands of dollars are highly
sophisticated and will not be fooled into believing that the
source of a watch is other than Cartier simply because its design
is similar." (Defendants' Opposition at 10.)
Courts consider the following factors in determining whether a
likelihood of confusion exists: "(1) the strength of plaintiffs'
mark; (2) the degree of similarity between plaintiffs' and
defendant's marks; (3) the proximity of the products; (4) the
likelihood that either owner will bridge the gap, using the mark on products closer to the other's area of
commerce; (5) the sophistication of the buyers and the quality of
defendants' product; (6) actual confusion; and (7) good or bad
faith." Four Star, 348 F. Supp. 2d at 244 (citing Polaroid
Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir.
1961)); see also TCPIP Holding Co. Inc. v. Haar Commc'n,
Inc., 244 F.3d 88, 100 (2d Cir. 2001). No one factor is
determinative and a court "should focus on the ultimate question
of whether consumers are likely to be confused." Tactica Int'l
v. Atl. Horizon Int'l, 154 F. Supp. 2d 586, 602 (S.D.N.Y. 2001);
see also Nora Beverages, Inc. v. Perrier Group of Am., Inc.,
269 F.3d 114, 199 (2d Cir. 2001).
(1) Strength of Plaintiffs' Mark
A plaintiff's mark is strong when it has a "tendency to
identify the goods sold under the mark as emanating from a
particular, although possibly anonymous source." 1-800-Contacts,
Inc. v. WhenU.com, 309 F. Supp. 2d 467, 495 (S.D.N.Y. 2003). The
Tank Francaise mark is strong and has acquired a secondary
meaning. See supra pp. 4-7. "The same type of evidence may
support a claim concerning the strength of a mark and a claim
concerning secondary meaning." PAJ, Inc. v. Barron's Gold Mfg.
Corp., No. 02 Civ. 1465, 2002 U.S. Dist. LEXIS 14227, at *6
(S.D.N.Y. Aug. 2, 2002).
(2) Similarity of the Marks
"The comparison of marks is an inquiry designed to determine
the general impression conveyed to the purchasing public by the
respective marks." Hasbro, Inc. v. Lanard Toys, Ltd.,
858 F.2d 70, 77 (2d Cir. 1988) (citation omitted). Courts "must appraise
the overall impression created by . . . the context in which they
are found and consider the totality of factors that could cause
confusion among prospective purchasers." Friesland Brands,
228 F. Supp. 2d at 405.
The Court has carefully examined Defendants' Watch and the Tank
Francaise "side by side." Both watches have (same sized) square
watch faces that feature Roman numerals, each of which "inclines to conform to the angle-direction of the watch
hands at such time as the hands are juxtaposed to that numeral,"
a "metal chain bracelet . . . [which] consists of alternating
H-shaped and rectangular links," "relatively thick concave
vertical frames (or brancards), both formed of the case metal. . . .
[which] are elongated beyond the bottom and top of the watch
case, and end in inwardly angled corners," and "chapter ring[s]
or minute guide[s] located between the center of the dial and the
numerals." (Plaintiffs' 56.1 Stmt. ¶ 10; see also Tavares Decl.
Ex. B; Springut Decl. Ex. FF.) Certain models of the Tank
Francaise include a square window showing the date in place of
the Roman numeral "six," and this is also true of Defendants'
Watch. (See id.) Defendants' Watch is yellow gold colored
(either 14 karat gold or gold-plated), and the Tank Francaise is
also manufactured in yellow gold. (See id.) The face of
Defendants' Watch is marked "GENEVE" on the upper portion and
"QUARTZ" on the bottom portion, while the Tank Francaise reads
"CARTIER" on the upper portion of the watch face and the bottom
portion is blank. (See id.)*fn5 Defendants' Watch
appears to be of inferior quality to the Tank Francaise; it did
not feel heavy and the case and bracelet were scratched. (See
Defendants' Watch, submitted with Letter from Plaintiffs to the
Court, dated October 6, 2005.)
Because Defendants' Watch so closely resembles the Tank
Francaise, there is a likelihood of confusion. See Four Star,
348 F. Supp. 2d at 245 ("watches will often be viewed in
isolation in display cases, in catalogs and on wearer's wrists.
In these multifarious contexts, the court finds that even
consumers who are familiar with Cartier's designs would be
unlikely to notice small but nonetheless significant differences
between . . . [a Cartier watch] and a copy.") (3) Proximity of the Products
This factor "addresses whether, due to the commercial proximity
of the competitive products, consumers may be confused as to
their source." Hasbro, 858 F.2d at 77. "Both Cartier's and
defendants' products are what might be termed luxury watches . . .
The products are similar and are designed for the same purpose.
The proximity of the watches is therefore sufficiently close to
create a likelihood of confusion." Four Star,
348 F. Supp. 2d at 246; (see Tavares Decl. Ex. C.)
(4) Likelihood of `Bridging the Gap'
"`Bridging the gap' refers to the probability of defendants
entering plaintiffs' business or of the average customer's
perception that defendants would enter plaintiffs' market." Four
Star, 348 F. Supp. 2d at 246 (citing Malletier v. Dooney &
Bourke, Inc., 340 F. Supp. 2d 415, 432 (S.D.N.Y. 2004)). Where,
as here, the goods compete in the same market (i.e., the luxury
watch market), "there is no gap to be bridged," and so this
factor is inapplicable. Four Star, 348 F. Supp. 2d at 246;
see Friesland Brands, 228 F. Supp. 2d at 407.
(5) Sophistication of Buyers and Quality of Defendants'
"Generally, the more sophisticated and careful the average
consumer of a product is, the less likely it is that similarities
in trade dress or trade marks will result in a conclusion
concerning the source or sponsorship of the product." Bristol
Myers Squibb, Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046
(2d Cir. 1992). In certain contexts, the sophistication of the
buyer "might not be determinative," Tough Travelers v. Outbound
Prods., 989 F. Supp. 203, 216-17 (N.D.N.Y. 1997), because "it is
sophisticated . . . buyers who pay the most attention" to certain
aspects of a luxury product. Lois Sportswear U.S.A., Inc. v.
Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986) (explaining
that sophisticated jeans purchasers were more likely to be
confused by jeans with similar stitching on the back pockets). Plaintiffs argue that, although the purchasers of luxury
watches are sophisticated, "actionable confusion includes not
only traditional point-of-sale confusion, but also other forms of
confusion, including post-sale, initial interest, and sponsorship
confusion, for all of which the supposed sophistication of the
customer is less important." (Plaintiffs' Reply at 4.) Defendants
respond that sophisticated purchasers "will not be fooled into
believing that the source of a watch is other than Cartier simply
because its design is similar." (Defendants' Opposition at 10.)
Actionable confusion can occur in several contexts, including
where "(1) prospective purchasers believe that the senior user
sponsored or otherwise approved of the junior user's trademark;
(2) potential consumers initially are attracted to the junior
user's mark by virtue of its similarity to the senior user's
mark, even though consumers are not actually confused at the time
of purchase; and (3) customers are confused as to the source of
the junior user's product when this product is observed in the
post-sale context." Jordache Enters., Inc. v. Levi Strauss &
Co., 841 F. Supp. 506, 514-15 (S.D.N.Y. 1993) (citations
There is no evidence "tending to show that initial or post-sale
confusion exists because of, rather than in spite of, the
sophistication of the luxury watch consumer," or that consumers
assume that a relationship exists between Plaintiffs and
Defendants. Four Star, 348 F. Supp. at 247; see also Tough
Travelers, 989 F. Supp. at 216-17 ("in absence of some evidence
that a relationship between the parties exists, to assume that
consumers are likely to suppose the existence of such a
relationship is overly speculative").
Courts must also consider "whether the senior user's reputation
could be jeopardized by virtue of the fact that the junior user's
product is of inferior quality." Sports Auth., Inc. v. Prime
Hospitality Corp., 89 F.3d 955, 965 (2d Cir. 1996); see also
Star Indus. v. Bacardi & Co., 412 F.3d 373, 389 (2d Cir. 2005).
An inferior product may cause injury to a superior product
because "people may think that the senior and junior products
came from the same source . . . or products of equal quality may tend to create confusion as to source because
of this very similarity." 1-800-Contacts,
309 F. Supp. 2d at 502 (citing Hormel Foods Corp. v. Jim Henson Prods.,
73 F.3d 497, 505 (2d Cir. 1996)). As noted, there is evidence that
Defendants' Watch is of inferior quality to the Tank Francaise.
(See Declaration and Expert Report of Leon Adams, dated March
10, 2005 at 4 ("I am surprised at the extremely poor quality of
the watch given the large price tag [$1,000]. Most of the metal
appears to be gold plated, not 14 karat gold (as stamped on the
back of the watch case), and the plating is beginning to wear off
in places."). "Where the allegedly infringing product is
inferior, the quality factor weighs in favor of Plaintiff."
Calvin Klein Jeanswear Co. v. Tunnel Trading, No. 98 Civ. 5408,
2001 U.S. Dist. LEXIS, at *31 (S.D.N.Y. Nov. 16, 2001); see
Forschner Group v. Arrow Trading Co., 124 F.3d 402, 405 (2d
Cir. 1997); Fun-Damental Too v. Gemmy Indus. Corp.,
111 F.3d 993, 1004 (2d Cir. 1996); Cartier v. Aaron Faber, Inc., No. 05
Civ. 6615, 2005 U.S. Dist. LEXIS 22251, at **11-12 (S.D.N.Y.
Sept. 30, 2005).
(6) Actual Confusion
"The Lanham Act does not require evidence of actual confusion
as a prerequisite to recovery." Four Star,
348 F. Supp. 2d at 247. Plaintiffs do not present any specific evidence of actual
confusion. (See Plaintiffs' Memorandum at 22.)
(7) Good or Bad Faith
The question is whether Defendants "adopted the marks with the
intention of capitalizing on Cartier's reputation and goodwill,
as well as any customer confusion as to the source of the
products." Four Star, 348 F. Supp. 2d at 248; see also
Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 482-83 (2d
Cir. 1996). Defendants' Watch appears similar to the Tank
Francaise, and Defendants, as jewelry sellers, must (should) have
"had knowledge of plaintiffs' design and did not innocently
choose a confusingly similar design." Four Star,
348 F. Supp. 2d at 248. In Four Star, defendant told plaintiff's private
investigator that "defendants' watches were exactly the same as Cartier watches . . . [and] compared defendants' watches to
advertisements of plaintiffs' watches and pointed out similar
features." Id. The court held that "[t]he foregoing all
suggests a showing of bad faith." Id. In the instant case,
Defendants promoted their watch as an "exact copy" of the Tank
Francaise. (See Tavares Decl. ¶ 4 (Defendants' salesman told
Plaintiffs' investigator that "these are exactly like
Cartiers."); see also Tavares Decl. Ex. A); Streetwise Maps,
Inc. v. Vandam, Inc., 159 F.3d 739, 745 (2d Cir. 1998); We
Media v. Ge, 218 F. Supp. 2d 463, 478 (S.D.N.Y. 2002) (bad faith
occurs where second-comer "intentionally copies a trademark or
Taken together, these factors establish that there is a
likelihood that consumers would confuse Defendants' Watch with
the Tank Francaise. See Four Star, 348 F. Supp. 2d at 249;
see also Virgin Enters. v. Nawab, 335 F.3d 141, 146 (2d Cir.
2003); Fun-Damental Too, 111 F.3d at 1005.
Defendants argue that "the most prominent features of the
Cartier watch are functional and for that reason cannot be
included in the collocation of features which could arguably make
the Cartier watch distinctive" namely, "the roman numerals and
the artful way in which they are placed" and "both watches appear
to be square." (Defendants' Opposition at 2.) Plaintiffs respond
that Defendants have improperly "select[ed] two out of the many
trade dress elements claimed by Cartier, labeling them the `most
prominent' and then attacking them individually as `functional.'"
(Plaintiffs' Reply at 2-3.)
"[A] product 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. Where aesthetic features are in question, "the dress is
functional if the right to use it exclusively `would put
competitors at a significant non-reputation-related
disadvantage.'" Four Star, 348 F. Supp. 2d at 249 (citing Fruit-Ices Corp. v. Coolbrands, Int'l
Inc., 335 F. Supp. 2d 412 (S.D.N.Y. 2004)).
The trade dress of the Tank Francaise is not functional. See
Four Star 348 F. Supp. 2d at 225 ("the watch designs at issue
are purely ornamental and do not play a functional, essential, or
cost-saving role in the manufacture of the watches."). It is
improper to "break [Plaintiffs'] trade dress into its individual
elements and then attack certain of those elements as
functional" because Plaintiffs "claim as [their] mark the
particular combination and arrangement of design elements that
identify its [watches] and distinguish them from other
[watches]." Le Sportsac, Inc. v. K Mart Corp., 654 F.2d 71, 76
(2d Cir. 1985). And, "the fact that a design feature performs a
function does not make it essential to the performance of that
function; . . . the true test of functionality is not whether the
feature in question performs a function, but whether the feature
is dictated by the functions to be performed." Brandir Int'l,
Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir.
1987) (internal citation omitted). None of the distinctive
features of the Tank Francaise are essential to the function of
the watch, nor do they render the Tank Francaise cheaper or
easier to manufacture. See Four Star, 348 F. Supp. 2d at 225;
Stormy Clime, Ltd. v. Progroup, Inc., 809 F.2d 971, 975 (2d
Cir. 1987) (a design feature is functional if it "affect[s] the
cost or quality of an article . . . [or] which permits the
article to be manufactured at a lower cost.") (citations
Because the Tank Francaise has acquired a secondary meaning,
there is a likelihood of confusion between the Tank Francaise and
Defendants' Watch. Moreover, the Tank Francaise's trade dress is
not functional. Plaintiffs succeed on their Lanham Act trade
dress and trademark infringement claims. See Four Star,
348 F. Supp. 2d at 249; Centaur Commc'ns, 830 F.2d at 1229.
Defendant Eli Sardar
Defendants admit that "Eli Sardar is responsible for and makes
the final decision as to buying." (Plaintiffs' 56.1 Stmt. ¶ 5;
Defendants' 56.1 Stmt. ¶ (a)); see Carrel v. Shubert Org.,
Inc., 104 F. Supp. 2d 236, 271 (S.D.N.Y. 2000). A showing that an
officer "authorized and approved the acts of unfair competition
which are the basis of [the] . . . corporation's liability . . .
is sufficient participation in the wrongful acts to make [the
officer] individually liable." Bambu Sales, Inc. v. Sultana
Crackers, Inc., 683 F. Supp. 899, 913-14 (E.D.N.Y. 1988) (citing
Donsco v. Casper, Inc., 587 F.2d 602, 606 (3d Cir. 1978).
Section 349 of New York General Business Law
Plaintiffs argue that "claims for trade dress infringement
under the laws of the State of New York are similar to those
under the Lanham Act," and should be "considered together."
(Plaintiffs' Memorandum at 13.) Although Defendants do not
respond, "most . . . trade dress infringement claims are deemed
to fall outside the ambit of Section 349." Perkins Sch. for the
Blind v. Maxi-Aids, Inc., 274 F. Supp. 2d 319, 327 (E.D.N.Y.
To prevail on a Section 349 claim, Plaintiffs must provide
proof of "consumer injury or harm to the public interest" or
evidence of "potential danger to the public health or safety."
Gucci Am., Inc. v. Duty Free Apparel, Ltd.,
277 F. Supp. 2d 269, 273 (S.D.N.Y. 2003). "Mere evidence of general consumer
confusion is insufficient." Starbucks Corp. v. Wolfe's Borough
Coffee, Inc., No. 01 Civ. 5981, 2004 U.S. Dist. LEXIS 19239, at
**29-30 (S.D.N.Y. 2004). Plaintiffs fail to provide sufficient
evidence of consumer injury or harm to the public interest. See
Starbucks Corp. v. Wolfe's Borough Coffee, Inc., No. 01 Civ.
5981, 2004 U.S. Dist. LEXIS 19239, at *30 (S.D.N.Y. Sept. 28,
2004) ("Harm to a business from a competitor, however, does not
constitute the kind of detriment to the public interest required
by the statutes."); digiGAN, Inc. v. iValidate, Inc., No. 02
Civ. 420, 2004 U.S. Dist. LEXIS 1324, *20 (S.D.N.Y. Feb. 3, 2004)
(finding that Section 349 had not been violated where "there are
no factual allegations . . . that suggest a broad impact on
consumers."). Trade dress infringement claims "are not cognizable
under [this] statute unless there is a specific and substantial
injury to the public interest over and above ordinary trademark infringement or dilution." Nat'l Distillers Prods Co., LLC v.
Refreshment Brands, Inc., 198 F. Supp. 2d 474, 486-87 (S.D.N.Y.
V. Conclusion and Order
For the reasons stated herein, Plaintiffs' motion for summary
judgment is granted in part and denied in part and Defendants'
motion for summary judgment is granted in part and denied in
The parties are requested to appear at a settlement/status
conference with the Court on October 28, 2005 at 9:45 a.m., in
Courtroom 706 of the Thurgood Marshall Courthouse, 40 Centre
Street, New York, New York. The parties are directed to engage
in good faith settlement negotiations prior to the conference.
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