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Eliya, Inc. v. Steven Madden, Ltd.

United States District Court, E.D. New York

February 22, 2018

ELIYA, INC., Plaintiff,
v.
STEVEN MADDEN, LTD., a Delaware Corporation, J&L, a Peoples Republic of China Company, and Does 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, SENIOR DISTRICT JUDGE

         Presently before the Court are objections by plaintiff, Eliya, Inc. (“Plaintiff” or “Eliya”) to the Report and Recommendation, dated January 11, 2018 (“R&R”), of Magistrate Judge Steven I. Locke insofar as it recommends granting the motion of defendant Steven Madden, Ltd. (“Defendant” or “Madden”) to dismiss the First Amended Complaint (“FAC”) with prejudice for failure to state a claim upon which relief can be granted. For the reasons set forth below, the objections are rejected, the R&R is adopted in toto, and the motion to dismiss is granted.

         I. Standard of Review

         Federal Rule of Civil Procedure 72(b) provides that when a magistrate judge issues a report and recommendation on a matter “dispositive of a claim or defense of a party, ” the district court judge shall make a de novo determination of any portion of the magistrate judge's disposition to which specific written objection has been made. Fed.R.Civ.P. 72(b). Here, Plaintiffs objects to the R&R asserting that the Magistrate Judge erred in recommending dismissal by (1) “[p]roperly citing but misapplying the proper legal standard to survive a motion to dismiss;” (2) “[i]ncorrectly determining that the FAC should articulate those features of Eliya's trade dress that make it distinctive and the FAC lacks requisite specificity;” (3) “[i]ncorrectly determining that the FAC does not set forth a plausible assertion that Eliya's trade dress is non-functional but is instead ‘conclusory':” and (4) “[i]ncorrectly concluding that Eliya's trade dress infringement claim independently fails because it has not pled facts that plausibly show a likelihood of confusion.” (Pl.'s Objections at 1-2.) Given the breath of Plaintiff's objections, the Court shall conduct a de novo review of the entire R & R.

         II. Nature of this Action

         At issue in this case are three shoes created by Eliya. They are the Lulia shoe, the Comfi shoe and the Catwalk shoe (collectively the “Berni Mev shoes”). According to Eliya, each shoe has unique trade dress formed by “the aggregate of the specific features of such shoes.” (FAC ¶ 11.) As alleged in the relevant pleading, these three shoes have “[a]pproximately 1/4 inch multicolor or multi-shaded wide straps that form a woven distinctive alternating pattern on the upper portion of the shoe, ” and “an appendage on the heel that extends higher than the weave portion and includes cutouts th[r]ough which the weave can be seen.” (Id. ¶¶ 12, 15, 18.) The Lulia and Comfi shoes both have a “mary jane strap.” The Comfi shoe has an “open toe with an angular cut out shape, ” while the other two shoes have “closed toes with an angular shape on the top front portion of the shoe.” The sole portion of the Lulia shoe has “horizontal grooves” on and “weaved notches extending up from the bottom.” The Catwalk shoe has a flat sole and the Comfi shoe has “[a]n angular-like shape on the top portion” and “vertical grooves” on the sole. (Id. ¶¶ 12, 15, 18.)

         It is alleged that by combining the above enumerated feature, Eliya has given these shoe an “innovative and unique look;” consumers have come to identify Eliya as their source and their “trade dress is well known to the consuming public and the trade” as identifying “Eliya as the exclusive and unique source that use such trade dress.” It is the trade dress in the Bernie Mev shoes that Madden is accused of copying.[1]

         III. Judge Locke's Report and Recommendation

         In his report, Judge Locke recommends that the complaint be dismissed pursuant to Fed.R.Civ.P. 12(b)(6) for a number of reasons. First, Plaintiff has failed to sufficiently describe the character and nature of its claimed trade dress. Second, even if the character and nature of the trade dress was adequately alleged, there was a failure to adequately plead that the features at issue are non-functional. Finally, the trade dress infringement claim independently fails because facts plausibly alleging likelihood of confusion were not pled.[2]

         IV. The Report is Adopted

         A. Principles Regarding Trade Dress Infringement Claims

         In conducting a de novo review, the Court is guided by the following principles regarding ...


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