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October 11, 2005.


The opinion of the court was delivered by: RICHARD BERMAN, District Judge


I. Introduction

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.

  II. Background

  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, 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.

  IV. Analysis

  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)).

  Advertising Expenditures

  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' ...

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