United States District Court, E.D. New York
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
R. Hurley United States District Judge
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.
Relevant Procedural History
The Original Complaint
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.
The First Motion to Amend the Complaint
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.
The Filed Amended Complaint
seeking any further leave of Court and after the
court-ordered deadline set for the amendment of pleadings,
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.
Defendant's Motion to Strike
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 ...