Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Eliya, Inc. v. Steven Madden, Ltd.

United States District Court, E.D. New York

March 30, 2017

ELIYA, INC., Plaintiff,
v.
STEVEN MADDEN, LTD., J&l, and John Doe 1-10. Defendants.

          The Law Offices of Tedd S. Levine, LLC Attorneys for Plaintiff By: Tedd S. Levine, Esq.

          Osterlenk Faber LLP Attorneys for Defendant By: Douglas A. Miro, Esq. Alan Federbush, Esq.

          MEMORANDUM & ORDER

          Denis R. Hurley United States District Judge

         Presently before the Court are objections by defendant to the Report and Recommendation, dated February 2, 2017 (“R&R”), of Magistrate Judge Steven I. Locke insofar as it recommends (1) granting plaintiff's motion for leave to file the Second Amended Complaint so as to amend the trade dress claims consistent with the proposed second amended complaint and (2) denying defendant's motion to strike as moot.[1]

         BACKGROUND

         I. Relevant Procedural History

         A. The Original Complaint

         Plaintiff, Eliya, Inc. (“plaintiff” or “Eliya”), commenced this trademark infringement action on March 11, 2015, asserting claims of false designation of origin and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as state law claims, against defendant, Steve Madden Ltd. (“defendant” or “Madden”). See DE 1. According to the original complaint (the “Complaint”), Eliya designed and created a line of shoes that possess a discernable trade dress, in which Plaintiff, therefore, now has rights regarding the overall look and specific features of certain named shoes in that line. Id. ¶¶ 10-15. It was alleged that the trade dress in Eliya's shoes "acquired distinctiveness through secondary meaning such that consumers are likely to associate the source of its products with Plaintiff.” Id. ¶ 13. It further alleged that Madden profited by copying the trade dress of Eliya's shoes by selling "direct knock-offs" of its shoes. Id. ¶¶ 12-13, 16.

         B. The First Motion to Amend the Complaint

         On October 6, 2015, Eliya sought leave to file an amended complaint adding allegations (1) regarding the trade dress and (2) of infringement regarding two additional lines of shoes, as well as to add Madden's unidentified supplier as a defendant for its alleged contributory infringement. A copy of the proposed amended complaint (“PAC”) was attached to the motion. As Defendant opposed the motion only to the extent that it sought to add its supplier as a defendant, that is the only issue that was addressed by the Court when it granted the motion. See De 30.

         C. The Filed Amended Complaint

         Without seeking any further leave of Court and after the court-ordered deadline set for the amendment of pleadings, [2] Eliya filed an amended complaint that differed markedly from the PAC attached to its motion. The filed amended complaint (“FAC”) focused on only three alleged product design trade dresses, to wit, its Lulia, Comfi, and Catwalk shoes, instead of the eight shoes set forth in the PAC. As to each of the three identified shoes, Madden asserts that the trade claims are comprised of elements not previously identified. A comparison of the FAC and the PAC reveals that in the FAC, which contains a more detailed description of previously identified elements as well as additional elements, Eliya is relying on the “overall look” of the shoes as the basis for its claim and no longer asserts that each element is individually protected.

         D. Defendant's Motion to Strike

         In response to the FAC, defendant moved to strike the FAC and have this matter dismissed in its entirely, arguing in support of its motion that (1) Eliya filed an unnoticed, unauthorized and substantially modified amended complaint, and (2) Eliya has failed to show good cause for, and Madden would be prejudiced by, the late filing. Eliya opposes defendant's motion asserting that (1) the FAC merely provides supporting details that do not alter the ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.