PAUL A. ENGELMAYER, District Judge.
In this trademark lawsuit, two fashion companies go toe-to-toe over the right to affix a metal plate to the toe of "luxury" men's sneakers. Plaintiff LVL XIII Brands, Inc. ("LVL XIII," pronounced "Level 13") is a New York start-up company that manufactures, markets, and sells men's luxury athletic footwear. LVL XIII brings this action against defendants Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc. (collectively, "LV"). It claims that LV, through its marketing and sale of the On the Road Sneaker ("OTR Sneaker"), infringed LVL XIII's trademark rights in a metal toe plate (the "TP") which was featured on all shoes in LVL XIII's first sneaker collection.
LVL XIII brings claims for (1) trademark infringement, unfair competition, and false designation of origin, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) New York common law unfair competition; and (3) deceptive business practices, under New York General Business Law ("GBL") § 349. It seeks actual and punitive damages, costs and fees, and an injunction barring LV from selling footwear bearing the allegedly infringing toe plate.
In response, LV brings counterclaims for (1) a declaratory judgment, under 28 U.S.C. § 2201, that LVL XIII has no exclusive right in the shape of a rectangular
The parties have filed cross-motions for summary judgment on each of LVL XIII's claims. In connection with its summary judgment motion, LV has also moved to preclude the report and testimony of LVL XIII's expert witness. Separately, LVL XIII has moved for summary judgment on each of LV's counterclaims.
For the reasons that follow, the Court grants (1) LV's motion to preclude LVL XIII's expert; (2) LV's motion for summary judgment on each of LVL XIII's claims; and (3) LVL XIII's motion for summary judgment on each of LV's counterclaims. The Court denies LVL XIII's motion for summary judgment on its own claims.
The end result is that all claims in this lawsuit are dismissed.
LVL XIII is a New York start-up company founded by Antonio Brown. JSF ¶¶ 1-2. Brown long had the goal of starting
In December 2012, LVL XIII was incorporated in New York. Def. Supp. 56.1 ¶ 286. By March 2013, it began preparing a formal business plan with the help of a third-party vendor. Id. ¶ 287. The business plan was completed and distributed to investors sometime after November 2013. Id. ¶ 288. It states that "LVL XIII believes its typical consumer will be an affluent male between the ages of 17 and 35 years of age who appreciates luxury goods and typically shops for designer labels." JSF ¶ 13.
In January 2013, LVL XIII hired Lamont Johnson to serve as its publicist. Sloane Decl., Ex. 3 ("Brown Dep. III"), at 172. Brown testified that because LVL XIII was operating on a "shoestring budget," he and Johnson knew it would be hard to obtain formal ad placements in major publications. MacMull Decl., Ex. 2 ("Brown Dep. II"), at 173-74. Accordingly, he testified, the two men "creatively came together ... [and devised] creative ways to submit the brand for press and publicity[,] like ceding shoes to celebrities and ... editors ... [to] garner[] interest." Id. at 174.
In addition to reaching out to celebrities, LVL XIII leveraged its social media presence to garner free publicity. See id. ¶¶ 298-99. In April 2013, Brown began posting images of LVL XIII sneakers on his personal Instagram account, which, by then, had 50,000 followers. Id. ¶ 300; see Sloane Decl., Ex. 39 ("Media Placements"), at 1.
Between July 21 and 23, 2013, LVL XIII debuted its first sneaker collection at the Project Sole event in New York City. Id. ¶ 293. There, samples of LVL XIII sneakers were displayed to retailers, from whom LVL XIII began taking orders and deposits. Id. ¶ 295; JSF ¶ 21. At the end of the event, male supermodel Tyson Beckford hosted a launch party for LVL XIII in New York City. Def. Supp. 56.1 ¶ 294. In August 2013, LVL XIII exhibited its sneakers at the Magic Show, a trade show in Las Vegas attended by wholesalers, retailers, press, and celebrities. Id. ¶ 302.
In the months that followed, Brown and LVL XIII were featured in a handful of online magazines including Details, Ebony, Paper, and Footwear News. Id. ¶ 297. The majority of the brand's media coverage, however, was on social media platforms and online blogs. See Media Placements.
In November 2013, LVL XIII's first sneaker collection became available for purchase at retail. Pl. 56.1 ¶ 230. LVL XIII produced 1,000 pairs of sneakers for it, each of which featured the TP. JSF ¶ 31; Def. Supp. 56.1 ¶ 325. The sneakers were sold at prices between $495 and $1,200, with most priced between $495 and $595. Pl. 56.1 ¶¶ 154-55. Between November 2013 and March 2014, they were sold in at least 10 locations, including in Houston, Texas; Atlanta, Georgia; Los Angeles, California; Harvey, Illinois; Chicago, Illinois; Miami, Florida; and Washington D.C. Id. ¶ 234. They were also sold through the Carbon Bazaar website. Id. ¶¶ 246-47.
In March 2013, LVL XIII filed two trademark registration applications with the U.S. Patent and Trademark Office ("PTO"). JSF ¶¶ 11-12. The first (the "`370 Application"), filed on March 4, was for the word mark "LVL XIII." Id. ¶ 11. The second (the "'102 Application"), filed on March 6, sought registration for a "shoe toe design featuring a rectangular metal plate across the front of the shoe toe with the wording LVL XIII engraved in the metal plate, and four small screws in the corners of the metal plate." Id. ¶ 12; Sloane Decl., Ex. 32, at 1.
On June 24, 2013, the PTO issued a non-final Office Action as to the '102 Application, requiring LVL XIII to submit a new drawing showing the screws in dotted lines, "as they cannot be part of the mark." Pl. 56.1 ¶ 102. The next day, LVL XIII submitted a revised application in accordance with the PTO's directive. Id. ¶¶ 104-05. It stated:
Id. ¶ 106. LVL XIII later amended the '102 Application to include two screws rather than four. Id. ¶ 107.
On July 10 and August 7, 2013, respectively, the PTO issued a Notice of Publication for the '370 and '102 Applications. JSF ¶¶ 22, 24. On September 24 and October 22, 2013, respectively, it issued a Notice of Allowance for each application. Id. ¶¶ 25-26. On March 24 and April 7, 2014, respectively, LVL XIII submitted a Statement of Use in connection with each application.
On July 18, 2014, two weeks after the initiation of this lawsuit, the PTO issued an Office Action for the '102 Application, declining to approve the application in its current form. See id. ¶¶ 43-44. It explained that "[a] product design can never be inherently distinctive as a matter of law [because] consumers are aware that such designs are intended to render the goods more useful or appealing rather than [to] identify their source." Id. ¶ 44. Accordingly, it directed, LVL XIII must "disclaim[]... the rectangular shape of the shoe toe plate ... because it is a configuration of a feature of the shoe design." Id. It warned that if LVL XIII did not do so, the PTO "may refuse to register the entire mark." Id. Sometime thereafter, the PTO, at LVL XIII's request, suspended the '102 Application, pending the outcome of this lawsuit. Id. ¶ 45.
Louis Vuitton Malletier S.A. ("LVM") is a French company, founded in Paris in 1854. Pl. Supp. 56.1 ¶ 374. It manufactures, sells, and distributes luxury merchandise, including handbags, luggage, apparel, shoes, watches, jewelry, and other fashion accessories. JSF ¶¶ 7-8. Louis Vuitton North America, Inc. is a Delaware corporation that markets and distributes Louis Vuitton merchandise in the U.S. Id. ¶¶ 5-6.
The Initials Logo consists of a stylized "L" and V" presented, in a Roman-like font, as a single, interlocking image, with the "V" overlapping the italicized "L" on a downward angle from right to left. The logo was created in 1897 by George Vuitton, in honor of his late father Louis Vuitton, the founder of the House of Louis Vuitton. Pl. Supp. 56.1 ¶ 375. It has been continuously used for more than 100 years in the U.S., and currently appears on hundreds of LV products. Id. ¶ 376.
LVM owns multiple registered U.S. trademarks for the Initials Logo, which apply to a wide variety of goods ranging from clothing to suitcases and stationery. See generally Sloane Decl., Ex. 59. Among these is a registered mark, which has become incontestable, for use of the Initials Logo on "shoes, boots[,] sandals, [and] tips for footwear." Id. at 1-3.
LV advertisements, at least some of which feature the Initials Logo, have appeared in magazines such as Vanity Fair, Vogue, and Elle. Pl. Supp. 56.1 ¶ 378. LV has also received media coverage in publications such as Marie Claire, Town & Country, and the "Pop Sugar" online blog. Id. ¶ 379. In 2015, Interbrand Rankings and Brand Z ranked LV as one of the 100 most valuable global brands. Id. ¶ 381.
LVL XIII's claims arise from LV's use of a metal toe plate on its OTR Sneaker. That sneaker was designed and developed in June 2013, in the weeks leading up to LV's Men's Spring/Summer 2014 fashion show (the "Fashion Show"), which took place in Paris on June 27, 2013. Sloane Decl., Ex. 1 ("Viti Aff.") ¶ 5. Fabrizio Viti, the Style Director for LVM's footwear division, oversaw the design process. See Dkt. 112 ("Viti Decl.") ¶¶ 1, 5.
The theme for the Fashion Show was a "road trip" through 1950s Americana, focusing on the style of icons such as James Dean, Steve McQueen, and Jack Kerouac, and mixing in an "astronaut mood." Pl. 56.1 ¶¶ 32, 40. In keeping with that theme, Viti decided to use the Converse Jack Purcell sneaker, worn by James Dean in a famous photo, as the inspiration for his design for the OTR Sneaker. Id. ¶ 41; Viti Aff. ¶ 6; Sloane Decl., Ex. 9 ("Viti Dep. I"),
On June 7, 2013, a member of LV's design team emailed the prototype for the OTR Sneaker to LV's in-house legal department. Pl. 56.1 ¶ 50; see Sloane Decl., Ex. 20. The email identified several characteristics of the Jack Purcell sneaker and asked whether, legally speaking, there were enough areas of difference between those two shoes. Pl. 56.1 ¶ 51; see Sloane Decl., Exs. 20-21.
The next day, Viti's assistant Mathieu Desmet
The final version of the OTR Sneaker was reviewed at a model fitting on June 22, 2013. Id. ¶ 62. The design featured a plain metal toe plate in the shape of an isosceles trapezoid, with the top slightly shorter than the bottom, as a "subtle reference to the Jack Purcell [s]mile." Viti Decl. ¶ 9; see Sloane Decl., Ex. 27.
On June 27, 2013, the OTR Sneaker was publicly debuted on the runway at the Fashion Show. Pl. 56.1 ¶ 74. In the ensuing months, it was pictured in several print and online publications in the U.S. See id.
Between March 4 and September 13, 2014, LV sold 714 pairs of the OTR Sneaker in the U.S., generating $764,000 in revenue. Id. ¶¶ 90-91.
Brown first learned about the OTR Sneaker in March 2014, when celebrity stylist Shaundell Hall called him to ask whether LVL XIII was collaborating with LV. See Brown Dep. IV, at 385-86; Dkt. 132 ("Hall Decl.") ¶ 8. Hall attested that, upon first seeing the OTR Sneaker, he assumed there had been a collaboration between the two brands because of the similarities between the metal toe plates that appeared on each sneaker. Hall Decl. ¶ 8.
LVL XIII has submitted declarations by six individuals, including Hall, who attest to having made such an assumption.
The remaining two declarants — Tavius Bolton and Kathleen Roque — are consumers who bought LVL XIII sneakers in early 2014. See Bolton Decl. ¶ 2; Roque Decl. ¶ 3. Each attested that, upon later seeing the OTR Sneaker, he or she assumed that LVL XIII had collaborated with LV. See Bolton Decl. ¶ 4; Roque Decl. ¶ 4. Each attested that he had been disappointed by what he perceived as LVL XIII's "selling out" to LV,
Brown testified that, shortly after his communication with Hall, LVL XIII began receiving "Instagram questions about whether or not [] the [OTR Sneaker] was LVL XIII." Brown Dep. IV, at 386. LVL XIII has identified two Instagram posts
On June 30, 2014, LVL XIII filed this lawsuit. Dkt. 1. Sometime thereafter, it removed its sneakers from the market. Def. Supp. 56.1 ¶ 339. Brown testified that a reason for that decision was that at least one retailer had refused to carry LVL XIII's shoes due to concerns about this lawsuit. Brown Dep. IV, at 439-41; Brown Dep. II, at 446-48.
In September 2015, LVL XIII launched its second shoe collection. Pl. 56.1 ¶ 128. The sneakers in that collection featured a new, modified toe plate, with rounded edges and no screws. Id. ¶¶ 130-32. The collection also included shoes without a metal toe plate. JSF ¶ 46.
On June 30, 2014, LVL XIII filed a complaint. Dkt. 1 ("Compl."). On September 22, 2014, LV filed an answer and counterclaims. Dkt. 18. On October 9, 2014, LVL XIII filed an answer to LV's counterclaims. Dkt. 21. On December 26, 2014, with leave of court, LV filed an amended answer and counterclaims. Dkt. 40. On January 16, 2015, LVL XIII filed an answer to the amended counterclaims. Dkt. 42.
On January 15, 2016, the parties filed the Joint Stipulated Facts, in anticipation of their respective forthcoming motions for summary judgment. Dkt. 102.
On January 21, 2016, LV moved to preclude the report and testimony of LVL XIII's expert witness, Charles E. Colman, Dkt. 103, and filed a memorandum of law, Dkt. 104 ("Def. Daubert Br."), and a declaration by its counsel, Dkt. 105, in support. That day, LV also filed a motion for summary judgment, Dkt. 106, along with a Rule 56.1 statement, Dkt. 110, a memorandum of law, Dkt. 108 ("Def. SJ Br."), and supporting declarations, Dkts. 107, 109, 112, 117.
On February 16, 2016, LVL XIII filed an opposition to LV's motion to preclude LVL XIII's expert. Dkt. 120 ("Pl. Daubert Opp. Br."). That day, LVL XIII moved to preclude the testimony of LV's expert witness, Michael Mazis. Dkts. 121-23. Also that day, LVL XIII filed a cross-motion for summary judgment, Dkt. 125, along with a memorandum of law, Dkt. 126 (Pl. SJ Br."), and a Rule 56.1 response and counterstatement, Dkt. 136. LVL XIII also filed nine supporting declarations, Dkts. 127-35, including by Erik Pelton, LVL XIII's trademark counsel, Dkt. 129 ("Pelton Decl.").
On March 15, 2016, LV filed an opposition to LVL XIII's motion to preclude LV's expert. Dkts. 145-47.
On March 22, 2016, LV filed reply briefs in support of its motion to preclude LVL XIII's expert, Dkt. 148 ("Def. Daubert Reply Br."), and its motion for summary judgment, Dkt. 152 ("Def. SJ Reply Br."),
On April 4, 2016, LVL XIII filed a reply brief in support of its motion to preclude LV's expert. Dkt. 159.
On April 21, 2016, LVL XIII filed a reply brief in support of its cross-motion for summary judgment, Dkt. 162 ("Pl. SJ Reply Br."), along with a response to LV's supplemental Rule 56.1 statement, Dkt. 163. That day, LVL XIII also filed a brief in opposition to LV's motion to strike. Dkt. 164.
On July 28, 2016, the Court heard argument. See Dkt. 172 ("Tr."). At the hearing, the Court ruled, at length, from the bench on LVL XIII's motion to preclude LV's expert and LV's motion to strike. For the reasons stated on the record at the hearing, the Court denied both motions. See Dkt. 170; Tr. 3-42.
Before the Court are (1) LV's motion to preclude the report and testimony of LVL XIII's expert witness; (2) the parties' cross-motions for summary judgment on LVL XIII's claims; and (3) LVL XIII's motion for summary judgment on LV's counterclaims. The ensuing analysis proceeds as follows: The Court first addresses, and grants, LV's motion to preclude the report and testimony of LVL XIII's expert witness. The Court next addresses the cross-motions for summary judgment on LVL XIII's claims. Finally, the Court addresses LVL XIII's motion for summary judgment on LV's counterclaims.
LVL XIII retained Charles E. Colman to provide an expert report and testimony on the issues of inherent distinctiveness and secondary meaning with regard to the TP. See Dkt. 105, Ex. 1 ("Colman Rpt."), at 1. LV has moved to preclude Colman's report and testimony in their entirety pursuant to Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579, 113 S.Ct. 2780, 125 L.Ed.2d 469 (1993). For the following reasons, that motion is granted.
Federal Rule of Evidence 702 gives an expert witness testimonial latitude unavailable to others, "so long as the witness is `qualified as an expert' and (1) `the testimony is based on sufficient facts or data,' (2) `the testimony is the product of reliable principles and methods,' and (3) `the expert has reliably applied the principles and methods to the facts of the case.'" United States v. Pryor, 474 Fed.Appx. 831, 834 (2d Cir.2012) (summary order) (quoting Fed. R. Evid. 702).
"[T]he proponent of expert testimony has the burden of establishing by a preponderance of the evidence that the admissibility requirements of Rule 702 are satisfied." United States v. Williams, 506 F.3d 151, 160 (2d Cir.2007). As the Supreme Court emphasized in Daubert, it is the Court's duty to act as a "gatekeep[er]," ensuring that an expert's testimony "both rests on a reliable foundation and is relevant to the task at hand." 509 U.S. at 597, 113 S.Ct. 2786. The Court's task "is to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Kumho Tire Co. v.
The Second Circuit instructs district courts to exclude expert testimony if it is "speculative or conjectural or based on assumptions that are `so unrealistic and contradictory as to suggest bad faith.'" Zerega Ave. Realty Corp. v. Hornbeck Offshore Transp., LLC, 571 F.3d 206, 214 (2d Cir.2009) (quoting Boucher v. U.S. Suzuki Motor Corp., 73 F.3d 18, 21 (2d Cir.1996)). Courts should also exclude "testimony that usurp[s] either the role of the trial judge instructing the jury as to the applicable law or the role of the jury in applying that law to the facts before it." Nimely v. City of New York, 414 F.3d 381, 397 (2d Cir. 2005) (internal quotation marks and citations omitted). Finally, as with all evidence, under Rule 403, the Court may exclude testimony if its probative value is substantially outweighed by the danger of unfair prejudice, confusion, or delay. Hart v. Rick's Cabaret Int'l, Inc., 60 F.Supp.3d 447, 465 (S.D.N.Y.2014).
LV moves to exclude Colman's report and testimony on the grounds that: (1) Colman is not qualified to offer expert testimony on any topic on which he opines; (2) his focus on the "urban male" population makes his opinions irrelevant and unreliable; and (3) his opinions are based on an unreliable methodology.
LV first argues that Colman is not qualified to offer expert testimony on any of the topics on which he opines. See Def. Daubert Br. 9-12; Def. Daubert Reply Br. 2-5.
"Whether a witness is qualified as an expert is a threshold question that precedes the court's relevance and reliability inquiries." Loyd v. United States, No. 08 Civ. 9016 (KNF), 2011 WL 1327043, at *4 (S.D.N.Y. Mar. 31, 2011) (citing Nimely, 414 F.3d at 396 n. 11). Rule 702 states that a witness may be "qualified as an expert by knowledge, skill, experience, training, or education." The Second Circuit has instructed that these words "be read in light of, the liberalizing purpose of Rule 702. United States v. Brown, 776 F.2d 397, 400 (2d Cir.1985), cert. denied, 475 U.S. 1141, 106 S.Ct. 1793, 90 L.Ed.2d 339 (1986). Accordingly, even if a proposed expert lacks formal training in a given area, he may still have "practical experience" or "specialized knowledge" that qualifies him to give opinion testimony. See McCullock v. H.B. Fuller Co., 61 F.3d 1038, 1043 (2d Cir.1995) (internal quotation marks omitted) (quoting Fed. R. Evid. 702). However, "[i]f the witness is relying solely or primarily on experience, then [he] must explain how that experience leads to the conclusion reached, why that experience is a sufficient basis for the opinion, and how that experience is reliably applied to the facts." Pension Comm. of Univ. of Montreal Pension Plan v. Banc of Am. Sec., LLC, 691 F.Supp.2d 448, 473 n. 148 (S.D.N.Y. 2010) (quoting Fed. R. Evid. 702 Advisory Committee Note). Where a witness's "expertise is too general or too deficient," the Court "may properly conclude that [he is] insufficiently qualified." Stagl v. Delta Air Lines, Inc., 117 F.3d 76, 81 (2d Cir.1997).
Colman is a 2009 law school graduate with a B.A. in linguistics. Colman Rpt., Appx. A, at 1. He was recently appointed Assistant Professor at the University of Hawaii William S. Richardson School of Law, where he will teach intellectual property law and other business-related subjects.
Since 2012, Colman has written, in various formats, on fashion and intellectual property law. See Colman Rpt. ¶¶ 13-14; id., Appx. A, at 2. He has contributed chapters on fashion and intellectual property law to practitioner reference guides and an undergraduate textbook. Id. ¶ 13. And he has published articles on fashion history, the contemporary fashion landscape, intellectual property law, and related topics in academic and online journals. See id. ¶ 13-14. His book, Patents and Perverts: The Hidden Moral Agenda of American Design Law, is slated to be published by the Cambridge University Press in 2016-2017. Id. ¶ 14.
Since 2011, Colman has practiced intellectual property law through his sole proprietor firm Charles Colman, PLLC. Id. ¶ 9. That firm "cater[s] primarily to clients in the fashion, media, and related industries." Id. To date, Colman has prosecuted approximately 10 trademark applications (approximately five of which were related to the fashion industry), and litigated approximately six oppositions or cancellation petitions. Colman Dep. 88-90, 206-07.
LV argues that Colman is not qualified to opine on whether the TP acquired secondary meaning primarily because: (1) he did not conduct a marketing analysis or a secondary meaning survey; (2) he has no background or experience in fashion marketing;
In response, LVL XIII argues that, "based on his extensive training, learning, experience[,] and recognition," Colman has expertise in "intellectual property [law]; the history, business and culture of fashion; and the cultural matrix where these intersect." Pl. Daubert Opp. Br. 1. LVL XIII asserts that Colman acquired that expertise "through many years spent in a university setting ... supplemented by thousands of hours of research, writing, and publishing on the fashion industry and U.S. intellectual property law, related cultural practices, and symbolic systems associated therewith[,] and years of professional experience spent representing parties in and writing about legal proceedings concerning the fashion industry." Id. at 8. LVL XIII argues that such expertise "amply qualif[ies] [Colman] to testify on ... whether the LVL XIII toe plate achieved secondary meaning." Id. at 9.
On this issue, the Court holds for LV. It is well established that even if "a witness qualifies as an expert with respect to certain matters or areas of knowledge, it by no means follows that he or she is qualified to express expert opinions as to other fields." Nimely, 414 F.3d at 399 n. 13 (citation omitted); see also United States v. Tin Yat Chin, 371 F.3d 31, 40 (2d Cir. 2004) ("To determine whether a witness qualifies as an expert, courts compare the area in which the witness has superior knowledge, education, experience, or skill with the subject matter of the proffered testimony."). Here, although Colman's experience and education may qualify him as an expert in certain areas of fashion history and intellectual property law, LVL XIII has not shown how such expertise qualifies him to testify as to the central, and largely empirical, issue addressed in his report: whether the TP acquired secondary meaning.
"Because the primary element of secondary meaning is `a mental association in buyer[s'] minds between the alleged mark and a single source of the product,' the determination whether a mark or dress has acquired secondary meaning is primarily an empirical inquiry." Sunbeam Products, Inc. v. W. Bend Co., 123 F.3d 246, 253 (5th Cir.1997) (citation omitted) (emphasis in original). Accordingly, courts have long held that consumer surveys are the most persuasive evidence of secondary meaning. See, e.g., Sports Traveler, Inc. v. Advance Magazine Publishers, Inc. ("Sports Traveler II"), 25 F.Supp.2d 154, 164 (S.D.N.Y.1998) ("[C]onsumer surveys have become the usual way of demonstrating secondary meaning."); Ergotron, Inc. v. Hergo Ergonomic Support
The expertise most germane to such a determination thus involves training or experience performing empirical analyses.
Under these circumstances, the Court is "not persuaded that [Colman] can offer opinion testimony [as to whether the TP achieved secondary meaning] that is anything other than conjecture." Loyd, 2011 WL 1327043, at *5 ("Though [a medical expert] need not be a specialist in the exact area of medicine implicated by the plaintiff's injury, he must have relevant experience and qualifications such that whatever opinion he will ultimately express would not be speculative." (internal quotation marks and citation omitted)). The Court, therefore, holds that Colman is not qualified to offer expert testimony on this issue.
In a separate aspect of its Daubert challenge, LV argues that Colman's assumption that "urban males" are LVL XIII's primary customer base is incorrect, and makes his resulting opinions irrelevant and unreliable. See Def. Daubert Br. 13 & n. 3; Def. Daubert Reply Br. 5-6. That critique is persuasive.
To be admissible, expert testimony must be of the type that will "help the trier of fact to understand the evidence or to determine a fact in issue." Fed. R. Evid. 702. This means that the testimony must be both reliable and relevant in that it "fits" the facts of the case. Daubert, 509 U.S. at 591-92, 113 S.Ct. 2786. The "fit" and "reliability" requirements overlap: Testimony is neither helpful nor reliable where "there is simply too great an analytical gap between the data [on which the expert relies] and the opinion proffered." Gen. Elec. Co. v. Joiner, 522 U.S. 136, 146, 118 S.Ct. 512, 139 L.Ed.2d 508 (1997).
Here, LV argues that Colman's opinions are, at best, unhelpful, and, at worst, unfairly prejudicial, because they rest on a faulty assumption: that LVL XIII's customer base consisted primarily of "urban male[s] (i.e., African-American and African-American cultured-inclined) luxury footwear, buyers between the ages of 17 and 36." Colman Rpt. ¶ 22 (internal quotation marks omitted); see Def. Daubert Br. 13 & n. 3; Def. Daubert Reply Br. 5-6. The Court agrees.
At the outset of his report, Colman posits that "urban males" are LVL XIII's primary customer base. Colman Rpt. ¶ 22. He then identifies characteristics of this demographic which he claims shape their perception as consumers. For instance, he states that such persons:
Id. ¶ 24. Based on this "extreme[] sensitivity," Colman concludes that the TP is "likely to be perceived by — and has been
Colman similarly anchors his other opinions on this assumption about LVL XIII's target market. These include that: (1) the TP achieved secondary meaning; (2) the TP "most likely served" as a "conventional trademark" rather than "product design"; and (3) the public will be harmed by LV's alleged infringement of the TP. See id. ¶ 39(c) ("LVL XIII achieved [] widespread penetration" of "brand/visual-feature awareness ... among actual or potential urban male high-end luxury footwear consumers aged 17 to 36 before [LV] first used a confusingly similar toe plate in U.S. commerce."); id. ¶¶ 23-24 (opining that, due to their "extreme[] sensitiv[ity] to the nuances of ... `sneaker culture,'" urban males were not likely to perceive LVL XIII's metal toe plate as product design); id. ¶ 39(d) ("The social media and remaining cultural landscape of 2013 reveal that Antonio Brown's leadership of LVL XIII resonated for countless members of the consumer group identified above [i.e., urban males], in no small part because Mr. Brown has consistently espoused values (like genuine design innovation, pride in one's individuality and accomplishments, and spiritual fulfillment) that a substantial portion of this group found compelling. The public would be harmed if [LV's] confusing imitation of LVL XIII's metal toe plate were permitted ... to (a) deprive LVL XIII of the financial means to create truly innovative designs ... and (b) disillusion the public, for whom Mr. Brown's and LVL XIII's beliefs and mission statement have so strongly resonated, by suggesting to the public that such idealistic ventures will only result in `selling out,' failure, and/or being overpowered or `bullied' by large, wealthy companies like defendants, without being protected by the courts.").
This testimony fails Daubert's "fit" requirement. It is a mismatch for the facts of this case, because Colman's definition of the relevant consumer market lacks record foundation. Colman offers no factual basis for positing that "urban males" are a material segment of LVL XIII's customer base. And LVL XIII has adduced no evidence to support that proposition.
Under these circumstances, Colman's characterization of LVL XIII's target market as consisting predominantly of urban males is conjecture. To the extent that his opinions are based on that unsupported assumption, they are not relevant.
Because the danger of confusion substantially outweighs any trifling probative value of Colman's proffered opinions, preclusion is required under both Rules 403 and 702.
Finally, LV argues that Colman's report and testimony must be precluded because his methodology is "neither discernable nor reliable." Def. Daubert Br. 14; see id. at 14-17; Def. Daubert Reply Br. 6-9. That argument, too, is convincing.
Under Daubert, the Court must ensure that expert testimony "is not only relevant, but reliable," 509 U.S. at 589, 113 S.Ct. 2786, that is, that the proffered testimony is "more than subjective belief or unsupported speculation," id. at 590, 113 S.Ct. 2786. The Supreme Court has clarified that this "gate-keeping function applies not just to scientific expert testimony... but also to testimony based on `technical' and `other specialized' knowledge." Brooks v. Outboard Marine Corp., 234 F.3d 89,
In Daubert, the Supreme Court set out a list of non-exclusive factors that the Court may consider in determining whether an expert's methodology is reliable. These are: (1) whether the expert's technique or theory can be or has been tested; (2) whether it has been subjected to peer review and publication; (3) whether there is a high error rate for the expert's technique, and whether there are "standards controlling the technique's operation"; and (4) whether the expert's technique or theory is generally accepted by the relevant scientific community. Daubert, 509 U.S. at 592-94, 113 S.Ct. 2786; accord Nimely, 414 F.3d at 396. How the Daubert factors apply in a particular case will depend on "the nature of the issue, the expert's particular expertise, and the subject of his testimony." Kumho Tire, 526 U.S. at 150, 119 S.Ct. 1167. The Court "should consider the specific factors identified in Daubert where they are reasonable measures of the reliability of expert testimony." Id. at 152, 119 S.Ct. 1167.
"In addition to setting forth these criteria for testing an expert's methodology, the Supreme Court has also stated that reliability within the meaning of Rule 702 requires a sufficiently rigorous analytical connection between that methodology and the expert's conclusions." Nimely, 414 F.3d at 396. "[N]othing in either Daubert or the Federal Rules of Evidence requires a district court to admit opinion evidence which is connected to existing data only by the ipse dixit of the expert." Gen. Elec., 522 U.S. at 146, 118 S.Ct. 512. Accordingly, "expert testimony should be excluded if it is speculative or conjectural," Boucher, 73 F.3d at 21, or where the proffered opinion is "based on data, a methodology, or studies that are simply inadequate to support the conclusions reached," Amorgianos, 303 F.3d at 266.
Colman purports to have used the VCS methodology to reach his opinions about the TP. See Colman Rpt. ¶¶ 15-20; Colman Dep. 61-63. According to Colman, scholars in the VCS field "employ the tools and insights of, inter alia, semiotics/linguistics, aesthetics, anthropology, social history, and law" to "engag[e] with ... `visual cultures,'" such as the "`culture' of contemporary luxury consumer goods." Colman Rpt. ¶ 16. Colman claims to have applied the VCS methodology here by: (1) reviewing Brown's social media history, press coverage of LVL XIII, and the other "visual and textual material generated by both parties"; and (2) using the insights he has derived from the scholarly literature and his professional and personal experience to (3) determine whether the TP achieved secondary meaning before LV's OTR Sneaker came on the market. See Id. ¶ 20; Colman Dep. 55, 61-64.
This methodology does not come close to withstanding scrutiny under Daubert — it does not satisfy a single one of the Daubert factors.
First, and most significant, Colman's methodology has not been — and, for multiple reasons, cannot be — tested or challenged in any objective sense. In forming his opinions, Colman claims to have relied primarily on data he retrieved from social media platforms, as well as press coverage he retrieved through Google. See Colman Dep. 55. Critically, however, he did not preserve, much less produce, the vast majority of the materials on which he purportedly relied. LVL XIII claims that Colman reviewed "over 100,000 unsolicited third-party online posts," Pl. Daubert Opp. Br. 7, but Colman — astoundingly — produced
Worse, it is impossible to reconstruct Colman's searches. He did not (1) retain a list of the search terms he used, his hit results, or the sites he reviewed but discarded as "duplicative" or "not relevant"; or (2) collect his results in a chart or table. Colman Dep. 55-59. Indeed, Colman conceded that without "go[ing] back into [his] computer," it would be "[im]possible to replicate the pool [of documents he relied upon] in the exact manner that [he] did the first time." Id. at 57; see also id. at 192 ("We know this from quantum physics that there are going to be differences that cannot be avoided, and to the extent that you are talking about replicating precise sort[s] of variables, that is not possible in the world that we live in that is not possible because you can't travel back in time.").
This elementary lapse makes it impossible for a court or adversary to test — or a jury to assess — Colman's methodology, as applied here, for veracity and reliability. See Amorgianos, 303 F.3d at 267 (in assessing the reliability of proposed expert's analysis, "the district court should undertake a rigorous examination of the facts on which the expert relies"). For this reason alone, exclusion of Colman's conclusions is mandatory under Daubert.
Third, Colman could not, when prompted at his deposition, identify a known or potential error rate for his methodology. See Colman Dep. 185 ("That is like asking what is the known rate of error in history."). He countered that "no one has ever, to [his] knowledge, criticized [his] employment of this methodology in visual culture studies or law with regard to very similar subject matter." Id. 189-90. But given that the Court has not located any prior occasion on which Colman applied this methodology to assess secondary meaning, his statement supplies little reassurance.
Colman has also not identified any standards controlling the application of the VCS methodology. To the contrary, when asked whether VCS offers "one specific methodology so that two people reviewing the information would reach the same conclusion," Colman answered: "People employ different methodologies in ways that can vary depending upon the project, right? ... [T]he tools that will be best suited to a given situation ... will vary depending on the situation and the sources examined in that situation." Id. at 179. And, based on his account of his application of the methodology here, Colman did not heed objective standards. He did not, for instance, establish parameters to guide his selection of data (e.g., social media posts). Rather, he simply "reviewed more and more material until [he] felt that [he] had achieved a view ... [as to] consumer perceptions of the metal toe plate." Id. at 64.
Finally, Colman has not shown that his methodology has been recognized by the courts or gained acceptance within the relevant expert community. He could not identify any expert who has been held qualified to testify in a court proceeding (as to secondary meaning or otherwise) based on the VCS methodology. See id. at 190, 236. On the contrary, he acknowledged that the VCS methodology is at odds with "traditional measures used to determine secondary meaning" and the "completely haphazard methodology sometimes used by federal courts" to determine whether a trademark is inherently distinctive. Colman Rpt. ¶ 19; Colman Dep. 235-36. He also failed to identify any study or scholarly literature in which VCS was applied to measure secondary meaning.
To be sure, that "testimony is qualitative, rather than quantitative, does not mean that it must be excluded [under Daubert]." Sunny Merch., 97 F.Supp.3d at 505. As the Court explained in a prior intellectual property case, "`[t]echnical ... or other specialized knowledge,' may be relevant and reliable, and therefore admissible under Daubert, even if the field of knowledge, be it marketing or plumbing, does not readily lend itself to a formal or
Here, as is apparent, the problems with Colman's methodology go far beyond foregoing a quantitative model: He has failed entirely to show a "sufficiently rigorous analytical connection between [his qualitative] methodology and [his] conclusions." Nimely, 414 F.3d at 396. Colman testified that he arrived at his conclusions by "reviewing the content of the images [of LVL XIII sneakers posted on social media platforms], the comments that accompany the images, [] the number of likes, [and] the dates." Colman Dep. 62. But he offered no non-conclusory, or remotely clear, explication as to how any of those factors bore on his analysis. Instead, he stated vaguely that "[w]hat was relevant was whether there were retweets, whether there were likes, whether there were comments, and if so, the nature of the retweets, the people retweeting, [and] what people said when they commented on the images." Id. at 63. Without any explanation how the content of a particular comment or retweet might support or negate a finding of secondary meaning, or how many "likes" or "retweets" are necessary to show acquired distinctiveness, the Court is left with no meaningful guidance as to how Colman reached his conclusion. See Fed. R. Evid. 702, Advisory Committee Note ("The trial court's gatekeeping function requires more than simply `taking the expert's word for it.' ... The more subjective and controversial the expert's inquiry, the more likely the testimony should be excluded as unreliable." (internal quotation marks and citations omitted)).
On this point, Linde v. Arab Bank, PLC, 922 F.Supp.2d 316 (E.D.N.Y.2013), and Koppell, 97 F.Supp.2d 477, supply a revealing contrast. In Linde, plaintiff's expert, Spitzen, described his methodology as "collect[ing] [] information from many sources[,] ... cross-referencing them, [and] examin[ing] [] new information that support[ed] or contradict[ed] previous assumptions that ha[d] been made in the course of [his] research." 922 F.Supp.2d at 322 (internal quotation marks omitted). Unlike Colman, however, Spitzen did not leave the court to speculate how his review of those sources ultimately led to his conclusion. The opposite: Spitzen "describe[d] eighteen criteria, derived from his professional experience, academic studies, and other documents ... that he used when [formulating his opinions]." Id. at 322-23. Admitting Spitzen's expert testimony, the court noted that Spitzen's explication of those factors had "ma[de] plain and transparent
The shortcomings of the expert excluded in Koppell provide a closer analogue. There, defendants' expert, Chapin, purported to base his opinions on his political experience, historical education, and the "methodology of history." 97 F.Supp.2d at 481. In his report, he explained that, in reaching his conclusions, he "relied on campaign literature, newspapers, conversations with certain undisclosed individuals, and his `own memories.'" Id. He did not, however, "cite particular facts, pieces of literature, or articles" that shaped his analysis. Id. Nor did he (or defendants) produce the particular articles upon which he relied. Id. Citing these lapses, the court held that Chapin's report "fail[ed] to meet the threshold for reliability required by Daubert" because it "d[id] not rely upon any discernible methodology." Id. Rather, it held, the report was "essentially a compendium of Dr. Chapin's [personal] opinions." Id. As such, it was "not methodologically sound enough to provide reliable evidence." Id.
The same outcome is necessary here. Like Chapin, the Koppell expert, Colman has supplied virtually no insight into the considerations that shaped his qualitative analysis. There is thus no basis on which to hold that his opinions derive from a reliable methodology. The Court is left to assume that they are the product of Colman's "subjective belief or unsupported speculation." Daubert, 509 U.S. at 590, 113 S.Ct. 2786.
In sum, the Court holds that Colman's report and testimony are inadmissible for at least three independent reasons: first, Colman is not qualified to offer the proffered testimony; second, his opinions are unhelpful and unreliable because they do not "fit" the facts of this case; and third, he did not use a reliable methodology. The Court, therefore, grants LV's motion to preclude Colman's report and testimony in its entirety. Accordingly, it will not consider this evidence in resolving the parties' cross-motions for summary judgment on LVL XIII's claims.
To prevail on a motion for summary judgment, the movant must "show[] that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The movant bears the burden of demonstrating the absence of a question of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
When the movant has properly supported its motion with evidentiary materials, the opposing party must establish a genuine issue of fact by "citing to particular parts of materials in the record." Fed.
"A court faced with cross-motions for summary judgment need not `grant judgment as a matter of law for one side or the other,' but `must evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration.'" Cariou v. Prince, 784 F.Supp.2d 337, 345 (S.D.N.Y.2011) (quoting Heublein, Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir.1993)).
LVL XIII brings claims for (1) trademark infringement, unfair competition, and false designation of origin, under § 43(a) of the Lanham Act; (2) New York common law unfair competition; and (3) deceptive business practices, under GBL § 349. The parties have filed cross-motions for summary judgment on each claim.
For the reasons that follow, the Court holds that LV is entitled to summary judgment on (1) LVL XIII's Lanham Act claims, because LVL XIII has not established secondary meaning or a likelihood of confusion; (2) LVL XIII's common law unfair competition claim, because LVL XIII has not shown bad faith or a likelihood of confusion; and (3) LVL XIII's deceptive business practices claim, because LVL XIII has not shown material deception or public harm.
Section 43(a) of the Lanham Act protects registered and unregistered marks against the use of any word, term, name, symbol, or device "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." 15 U.S.C. § 1125(a). To prevail on a trademark infringement, false designation of origin, or unfair competition claim under this provision, a plaintiff must show, first, that he or she has a valid mark that is entitled to protection, and, second, that the defendant's actions are likely to cause confusion as to the origin or sponsorship of the defendant's goods. See, e.g., Louboutin, 696 F.3d at 224; Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir.2001).
As to the first requirement, for a mark to be "protectable," it must be "distinctive." Louboutin, 696 F.3d at 216. A mark is "inherently distinctive" if its "intrinsic nature serves to identify a particular source." Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753; see also Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162-63, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (inherently distinctive marks "almost automatically tell a customer that they refer to a brand") (emphasis in original). Even if a
Section 43(a) protects "not just word marks, such as `Nike,' and symbol marks, such as Nike's `swoosh' symbol, but also `trade dress' — a category that originally included only the packaging, or `dressing,' of a product, but in recent years has been expanded by many Courts of Appeals to encompass the design of a product." Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209, 120 S.Ct. 1339, `146 L.Ed.2d 182 (2000); see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). However, the Supreme Court and Second Circuit have instructed that courts must exercise "particular `caution,' when extending protection to product designs." Yurman Design, 262 F.3d at 114 (quoting Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir.1997)); see also Wal-Mart, 529 U.S. at 215, 120 S.Ct. 1339. That is because, unlike word marks and product packaging, whose "predominant function [is often] source identification," id. at 212, 120 S.Ct. 1339, product design "almost invariably" serves another purpose: "to render the product itself more useful or more appealing," Yurman Design, 262 F.3d at 114-15 (quoting Wal-Mart, 529 U.S. at 213, 120 S.Ct. 1339).
A plaintiff asserting rights in product design, therefore, must "surmount additional hurdles." Yurman Design, 262 F.3d at 115. Relevant here, in Wal-Mart, the Supreme Court held that product design can never be inherently distinctive, and thus always requires secondary meaning to be protected. 529 U.S. at 216, 120 S.Ct. 1339. Thus, whereas word marks and product packaging can be held distinctive by virtue of either inherent distinctiveness or secondary meaning, "[t]he product design plaintiff ... must always make the second, more difficult showing." Yurman Design, 262 F.3d at 115 (citing Wal-Mart, 529 U.S. at 213-14, 120 S.Ct. 1339).
In Wal-Mart, the Supreme Court did not provide definitive guidance on how to
This is not a close case. Even a cursory examination of the TP discloses that it does not qualify as a trademark or product packaging. The trademark designation is virtually always applied to two-dimensional words or symbols — not three-dimensional configurations like a metal toe plate. See Decorations for Generations, Inc. v. Home Depot USA, Inc., 128 Fed. Appx. 133, 136 (Fed.Cir.2005) ("[W]hile a two-dimensional symbol or drawing may be considered a trademark, three-dimensional product designs or packaging may, under the right circumstances, be considered trade dress.").
Tellingly, LVL XIII has not offered any admissible evidence to support its claim that the TP falls within either of these categories.
First, the "packag[ing]" described in LVL XIII's business plan consists solely of "distinctive branded shoe boxes" and "black cotton dust bags" — it does not include the TP. See Pl. Supp. 56.1 ¶ 404.
Second, in declining to register the `102 Application, the PTO stated that "the rectangular shape of the shoe toe plate... is a configuration of a feature of the shoe design," which "can never be inherently distinctive as a matter of law." JSF ¶ 44 (emphasis added); see also id. (requiring LVL XIII to "disclaim" the "rectangular shape of the shoe toe plate ... because it is a configuration of a feature of the shoe design") (emphasis added). Although
Despite this evidence, LVL XIII argues that the TP is an inherently distinctive trademark because its uniform size and placement on LVL XIII's line of sneakers renders it "arbitrary" and "fanciful," and thus apt to be an automatic indicator of source. See Pl. SJ Br. 10-12; Tr. 74.
That argument is not persuasive. In In re Slokevage, the Federal Circuit flatly rejected it when faced with a materially identical fact pattern. There, Slokevage had sought PTO protection for a "`configuration' that consist[ed] of a label with the words `FLASH DARE!' in a V-shaped background, and cut-out-areas located on each side of the label[,] ... [which] consist[ed] of a hole in a garment and a flap attached to the garment with a closure device." 441 F.3d at 958. The PTO refused to register the mark on the ground that it was "product design/configuration," which, under Wal-Mart, could not be registered without a showing of secondary meaning. Id. at 958-59. On appeal, Slokevage argued that her mark should not be so classified because (1) "it d[id] not alter the entire product but [was] more akin to a label being placed on a garment," and (2) it was "located on the rear hips of garments, which is a location that consumers frequently recognize as identifying the source of the garment." Id. at 960, 962. The Federal Circuit disagreed. It rejected Slokevage's premise that "product design trade dress must implicate the entire product," and held that "design features" incorporated into a garment also fall within this category. Id. at 962. That holding, it explained, is consistent with the "reasoning behind the Supreme Court's determination that product design cannot be inherently distinctive": that the "predominant function" of product design is often not source identification, but rather to render a product "more useful or more appealing." Id. (quoting Wal-Mart, 529 U.S. at 212-13, 120 S.Ct. 1339) (internal quotation marks omitted). The court noted that Slokevage's design "c[ould] serve such utilitarian and
The same is so here. Despite LVL XIII's efforts to shoehorn the TP into the trademark category, it does not fit. Rather, like the configuration in Slokevage, the TP serves a primarily aesthetic function: making LVL XIII's sneakers appear more enticing. Accordingly, the TP can be classified only as a product design feature which is not inherently distinctive.
A mark has secondary meaning when "in the minds of the public, the primary significance of a product feature... is to identify the source of the product rather than the product itself." Louboutin, 696 F.3d at 216 (quoting Inwood Labs., 456 U.S. at 851 n. 11, 102 S.Ct. 2182). The Second Circuit has identified six non-exclusive factors that bear on this inquiry: "(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark's use." Id. at 226 (internal quotation marks and citation omitted). "Although the Second Circuit has stated that district courts should be cautious in weighing these factors at the summary judgment stage, it has nonetheless supported summary judgment in cases where the proponent of the alleged trademark has failed to raise a material issue of fact on the question of secondary meaning." Jewish Sephardic Yellow Pages, 478 F.Supp.2d at 344 (collecting cases).
"[P]roof of secondary meaning entails vigorous evidentiary requirements." Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir.1985) (internal quotation marks and citation omitted). A plaintiff bears the burden of proving that his mark acquired secondary meaning by the time the allegedly infringing product came on the market. Id. The relevant inquiry here, then, is whether the TP acquired secondary meaning by March 2014, when the OTR Sneaker became available for purchase in the U.S. The Court examines the relevant factors in turn.
Advertising expenditures are regarded as "indirect evidence of the possible effect that advertising may have on
Here, it is undisputed that LVL XIII did not engage in any traditional paid advertising. See Brown Dep. I, at 158-59 (LVL XIII did not engage in TV advertising or purchase any newspaper or magazine advertisements). And it spent only $82,000 in 2013 for marketing and promotion. See JSF ¶ 35.
Even if the Court were to relax the standard given the small scale of LVL XIII's business, the result would not differ. That is because LVL XIII has not shown that its marketing activities "succeeded in reaching a relevant segment of the population." Lopez, 883 F.Supp.2d at 426. To the contrary, nearly half of LVL XIII's advertising expenditures were spent in connection with its launch party and the two trade shows it attended in summer 2013 — none of which were open to the general public. See Pl. 56.1 ¶¶ 163, 224-26; Def. Supp. 56.1 ¶ 302. Such promotion cannot be assumed to have fostered consumer association of the TP with LVL XIII.
Even more damaging, LVL XIII has not established that any of its promotional materials called attention to the TP as an indication of source. See Kaufman & Fisher Wish Co., Ltd. v. F.A.O. Schwarz, 184 F.Supp.2d 311, 318 (S.D.N.Y.2001) ("handful of media articles" did not support secondary meaning because they "d[id] not explicitly link the product's design to its source"), aff'd, 51 Fed.Appx. 335 (2d Cir.
LVL XIII argues that its "savvy exploitation of low- and no-cost promotion via social media" and celebrity endorsements eliminated the need for traditional paid advertising. Pl. SJ Br. 20-21; see also Brown Dep. II, at 175-76 (testifying that he "didn't feel like it was necessary to invest [LVL XIII's] dollars into print ads and things of that nature, especially with the dying business of print publications this day and age").
Accordingly, on the summary judgment record, there is no basis to conclude that LVL XIII's social media presence compensated for its minimal paid advertising expenditures. This factor therefore favors LV.
As discussed above in connection with LV's Daubert motion, consumer surveys have been consistently cited as the most persuasive evidence of secondary meaning. See, e.g., Jewish Sephardic Yellow Pages, 478 F.Supp.2d at 370; Ergotron, 1996 WL 143903, at *8. And, "in a borderline case where it is not at all obvious that [a] designation has been used as a mark, survey evidence may be necessary to prove trademark perception." McCarthy on Trademarks § 3.3; see also Denimafia, 2014 WL 814532, at *12 (failure to submit consumer study weighed against finding of secondary meaning); Jewish Sephardic Yellow Pages, 478 F.Supp.2d at 370 (same); Chum Ltd. v. Lisowski, 198 F.Supp.2d 530, 534-35 (S.D.N.Y.2002) (same).
Here, LVL XIII did not conduct a secondary meaning survey, ostensibly due to the "large expense involved." Pl. SJ Br. 25 (quoting McCarthy on Trademarks § 32:195); Pl. 56.1 ¶ 203. But that excuse is not convincing. LVL XIII did commission an expert to opine on secondary meaning — just not one who performed a survey or used an otherwise reliable methodology. See discussion supra, at 635-48; see also Cross Commerce, 2014 WL 11343849, at *8 (defendant's decision not to commission a survey due to expense "makes little sense in light of the significant resources the parties have spent litigating this case"). In any event, resource constraints do not relieve a plaintiff of the burden of coming forth with evidence on this factor.
LV, for its part, retained a well-recognized survey expert, Michael B. Mazis, to conduct a survey to assess whether and to what extent the TP acquired secondary meaning. See Pl. 56.1 ¶¶ 180-82; Dkt. 123, Ex. 5 ("Mazis Rpt.). The Mazis survey sampled 587 men, ages 18-34, who had purchased in the past 12 months, or expected to purchase in the next 12 months, a pair of men's shoes costing $500 or more. See Mazis Rpt. ¶¶ 11-12.
In its motion to preclude Mazis's report and testimony, LVL XIII identified a number of methodological flaws in the survey, which it claims reduce its probative value. See Pl. SJ Br. 25; Dkt. 122. As the Court noted in denying that motion, some of those objections, although not justifying preclusion, have merit.
As with paid advertising, LVL XIII has supplied only minimal evidence of unsolicited media coverage. Of the 25 pre-March 2014 media placements it has identified, all but four were the result of pitches by its publicist. See Pl. 56.1 ¶ 218. As such, they were not unsolicited. See Gameologist, 838 F.Supp.2d at 159 (articles solicited by plaintiff as part of its promotional strategy would not support finding of unsolicited media coverage); Distillers Prods. Co., LLC v. Refreshment Brands, Inc., 198 F.Supp.2d 474, 481 (S.D.N.Y.2002) (evidence of media coverage did not favor plaintiff where such coverage was, in part, in response to efforts of public relations firm hired by plaintiff).
As to the remaining four — (1) an interview of Brown posted on vervesocialmag.com; (2) Jason Derulo's July 19, 2013 performance on Good Morning America, during which he wore a pair of LVL XIII sneakers; (3) Obvious Mag's review of LVL XIII's participation at the Project Sole tradeshow; and (4) a feature on the "Chris B. Fashion" Tumblr page — none refer or call attention to the TP, as an indicator of source or otherwise. See Pl. 56.1 ¶¶ 220-21; MacMull Decl., Ex. 21; id., Ex. 10, at 7; Tr. 78.
LVL XIII argues that its sneakers "received additional unsolicited press coverage in the form of reviews, testimonials, and social media placements." Pl. SJ Br. 22. But that argument is, for many reasons, unavailing.
First, LVL XIII has produced evidence of only 12 social media posts, and none appear to be from the relevant time period, i.e., before LV's OTR Sneaker came on the market. See Sloane Decl., Ex. 41; cf. Jewish Sephardic Yellow Pages, 478 F.Supp.2d at 374 (unsolicited media coverage that predated mark at issue and focused on plaintiff's other product not probative of secondary meaning); Sports Traveler II, 25 F.Supp.2d at 164 ("[A]ny media reference after June 26, 1996 is irrelevant because that is the date upon which Sports Traveler's trade dress must have attained secondary meaning.").
The record evidence, therefore, falls "far short of the type of media coverage necessary
LVL XIII's evidence also falls short with respect to sales success. Of the 1,000 pairs of sneakers LVL XIII manufactured for its first collection, only half sold, generating $141,241 in revenue. JSF ¶¶ 31-32, 34. The remainder were returned to LVL XIII to be donated. Id. ¶ 33. This sales level does not constitute "success" for purposes of establishing secondary meaning.
LVL XIII argues that it should not be penalized for its modest sales figures, because one reason it stopped selling its sneakers was that "some retailers refused to carry [them] ... because of the consumer confusion that is the subject matter of this lawsuit." Pl. SJ Br. 23. But even if that were true, it would not change matters, because LVL XIII must show that the TP acquired secondary meaning before LV's OTR Sneaker came on the market. Only sales achieved before March 2014 bear on this analysis. This factor, therefore, also favors LV.
"Evidence that a mark has been widely copied is persuasive evidence of secondary meaning because it demonstrates that the mark has become a `strong source identifier in the eyes of the purchasing public.'" Lopez, 883 F.Supp.2d at 428 (quoting T. Anthony, Ltd. v. Malletier, No. 93 Civ. 6900 (KC), 1993 WL 659682, at *3 (S.D.N.Y. Nov. 24, 1993)); accord Centaur I, 652 F.Supp. at 1109. The key question is "whether the copying was done deliberately, so as to benefit from [the plaintiff's] name and good will." Cartier,
Here, LVL XIII concedes that, aside from LV's alleged infringement, it is not aware of any third-party attempts to plagiarize the TP. Pl. 56.1 ¶ 120. And it has submitted no direct evidence that LV copied its design. Rather, it argues that the "timeline of events leading up to the 2014 Runway Show" is "circumstantial evidence" of LV's plagiarism. Pl. SJ Br. 19, 23-24. It postulates:
Id. at 7-8.
But LVL XIII has not produced a shred of evidence to support this narrative. See Conte v. Newsday, Inc., No. 06 Civ. 4859 (JFB), 2013 WL 978711, at *20 (E.D.N.Y. Mar. 13, 2013) ("`[S]peculative assertions' of copying do not create secondary meaning." (quoting Sports Traveler II, 25 F.Supp.2d at 165)).
In any event, even if the Court were to credit LVL XIII's conspiracy theory, it would not support secondary meaning. LVL XIII does not claim that the alleged copying was done "so as to benefit from [LVL XIII's] name and good will." Cartier I, 348 F.Supp.2d at 243. To the contrary, it implies that it was LVL XIII's anonymity that made it a less "risky" target to copy. That theory is at odds with the notion that the TP had acquired distinctiveness in the marketplace.
LVL XIII next argues that this factor favors it because LV has not offered a "credible explanation" for the similarity between the parties' toe plates, or "how [the TP] suddenly appeared only months after LVL XIII's." Pl. SJ Br. 24 (quoting Centaur II, 830 F.2d at 1224). LVL XIII bases this argument on Centaur II, 830 F.2d 1217, where the plaintiff claimed that the defendant's use of the title "ADWEEK's Marketing Week" infringed plaintiff's "Marketing Week" mark. In that case, there was evidence that the defendant had been aware of the plaintiff's publication, that the parties had previously discussed a joint venture, and that the defendant's principal had copies of the plaintiff's publication in his office. Id. at 1224. Given those facts, the Centaur II court held, the "obvious similarity of the titles and the fact that [the defendant] failed to provide a credible explanation for [its] change [of title]" supported an inference of intentional copying. Id.
This case bears no resemblance to Centaur II. First, there is no evidence of a preexisting relationship between LVL XIII and LV or that LV was aware of LVL XIII before this lawsuit.
On this record, there is zero basis to infer intentional copying. See, e.g., Kaufman & Fisher Wish Co., 184 F.Supp.2d at 320 (declining to infer bad faith absent evidence defendants knew of plaintiff's doll, as there was "insufficient similarity between the appearances of the two dolls to give rise to any inference of copying of the actual design"). This factor, too, favors LV.
With respect to the length of use, viewed generously, LVL XIII began "using" the TP in July 2013, when it first took orders from retailers at the Project Sole trade show. See Def. Supp. 56.1 ¶ 295.
Critically, too, LVL XIII has not shown that its use of a metal toe plate was at any point exclusive. See Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113, 118 (2d Cir.1999) (directing courts to look at "[t]he use of part or all of the mark by third parties" since third-party use "weakens its overall strength"). Quite the contrary, the record is replete with examples of toe plates and other metal shoe ornaments used by LV and other luxury brands as early as 2010.
In sum, not one relevant factor supports a finding of secondary meaning. Rather, each decisively favors LV. Given LVL XIII's minimal advertising expenditures and sales success, the dearth of unsolicited media coverage calling attention to the TP, the absence of attempted plagiarism, and the ubiquity of metal shoe accents in the marketplace, no reasonable juror could find that, by March 2014, consumers had come to perceive the TP as an indicator of source. LV's survey evidence to that effect — and LVL XIII's failure to produce survey evidence to the contrary — only bolsters that conclusion.
Because LVL XIII has not shown that the TP acquired secondary meaning, it cannot succeed on its Lanham Act claims. LV is thus entitled to summary judgment on those claims.
Even if LVL XIII had established that the TP acquired secondary meaning, its Lanham Act claims would still fail because it has not shown a likelihood of confusion. See Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753 ("[L]iability under § 43(a) [also] requires proof of the likelihood of confusion."); Giggle, 856 F.Supp.2d at 630 ("Even if a mark is valid and protectable, a plaintiff must still prove a likelihood of confusion to succeed on its claims."); Lopez, 883 F.Supp.2d at 419.
To establish this element, a plaintiff must show that "numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the defendant's mark," Gruner + Jahr Printing & Publ'g Co. v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir.1993), "or that there may be confusion as to [the] plaintiff's sponsorship or endorsement of the [defendant's] mark," Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 502 (2d Cir.1996); see also Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir. 2005) ("The public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.") (quoting Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir.1979)). "Affiliation confusion exists where use of a `unique and recognizable identifier' could lead consumers to `infer a relationship' between the trademark owner and the new product." De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 440 F.Supp.2d 249, 274 (S.D.N.Y. 2006) (quoting Star Indus., 412 F.3d at 384).
Here, LVL XIII's claims are based primarily on a theory of reverse confusion. See Tr. 84.
In assessing the likelihood of confusion, courts in this Circuit consider the "Polaroid factors" articulated by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961). Star Indus., 412 F.3d at 384; see also W.W.W. Pharm., 984 F.2d at 572 (applying Polaroid test to reverse confusion claim). Those are: (1) the strength of the plaintiff's mark; (2) the degree of similarity between the plaintiff's and defendant's marks; (3) the competitive proximity of the products sold under the marks; (4) the likelihood that the plaintiff will bridge the gap; (5) actual confusion; (6) the defendant's good faith, or lack thereof, in adopting
In applying the Polaroid test, "[t]he proper approach is to weigh each factor in the context of the others to determine if, on balance, a likelihood of confusion exists." W.W.W. Pharm., 984 F.2d at 572. The court "generally should not treat any single factor as dispositive; nor should [it] treat the inquiry as a mechanical process by which the party with the greatest number of factors wins." Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 162 (2d Cir.2004).
The Second Circuit has held that "summary judgment in a trademark action may be appropriate ... where the undisputed evidence would lead only to one conclusion as to whether confusion is likely." Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir.1996); see, e.g., Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir.1984) (affirming grant of summary judgment for defendant where plaintiff "failed to raise a question of fact on the issue of the likelihood of consumer confusion"). "If a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment." Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 215 (2d Cir.2003) (internal quotation marks and citation omitted). However, "[t]he fact that on summary judgment the evidence must be construed in a light favorable to the non-moving party does not modify the standard itself, which requires a showing of a probability, or likelihood, of confusion." Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d 114, 121 (2d Cir. 2001). The Second Circuit has emphasized that "courts retain an important authority to monitor the outer limits of substantial similarity within which a jury is permitted to make the factual determination whether there is a likelihood of confusion as to source." Universal City Studios, 746 F.2d at 116 (internal quotation marks and citations omitted) (collecting cases). Accordingly, "summary judgment is appropriate if the court is satisfied that the products or marks are so dissimilar that no question of fact is presented." Id.
With these principles in mind, the Court considers each Polaroid factor.
The first Polaroid factor "focuses on `the distinctiveness of the mark, or more precisely, its tendency to identify the goods' as coming from a particular source." Lang, 949 F.2d at 581 (quoting McGregor-Doniger Inc., 599 F.2d at 1131). Assessing this factor, courts consider both the inherent distinctiveness of a mark and the distinctiveness it has acquired in the marketplace, i.e., secondary meaning.
A mark's "strength" is "crucial to the likelihood of confusion analysis" because a plaintiff's well-known association with the claimed mark "makes it much more likely that consumers will assume wrongly that [the plaintiff] is somehow associated with [the defendant's product] or has authorized the use of its mark." Lois Sportswear, 799 F.2d at 873; see also H. Lubovsky, Inc. v. Esprit De Corp., 627 F.Supp. 483, 486-87 (S.D.N.Y.1986) ("The strength of a mark is directly related to likelihood of confusion, for the stronger the mark, the more likely that the consumer will associate it with the familiar purveyor."). By contrast, where the plaintiff's mark is not associated with any particular source, defendant's use of a similar mark is unlikely to generate confusion. See Thompson Med. Co., 753 F.2d at 215-16 ("If a mark has secondary meaning, a purchaser will associate it with a certain producer, and will be likely to make that same association when an identical mark (or a confusingly similar mark), is used on another producer's product. In the absence of secondary meaning, however, there will be no such association in the minds of the purchasing public.").
Here, the TP, being product design, cannot be inherently distinctive. Wal-Mart, 529 U.S. at 216, 120 S.Ct. 1339. And, for the reasons set forth above, a reasonable jury could not find that it acquired secondary meaning. There is also substantial evidence of third-party use of metal shoe ornaments and toe plates predating LVL XIII's first sneaker collection. This factor, therefore, strongly militates against a finding of a likelihood of confusion.
"In assessing similarity, courts look to the overall impression created by the [marks] and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers." Gruner + Jahr, 991 F.2d at 1078. This inquiry goes beyond a mere side-by-side comparison; that two marks appear similar is not dispositive.
Here, both parties' trade dress consists of a metal toe plate affixed to the outsole of a men's sneaker. But that alone does not make them "confusingly similar." Polaroid requires the Court to consider the similarity of the marks in context. See Gruner + Jahr, 991 F.2d at 1078. Here, that includes a high-end shoe market permeated by metal shoe ornaments. Given the pervasiveness of such design features, the mere fact that two brands use metal toe plates does not imply an association. Rather, the toe plates would have to be sufficiently similar for consumers to assume that they originated from the same source or sponsor.
That is clearly not the case here. There are virtually no points of commonality between the parties' toe plates.
Despite these differences, LVL XII argues that "the marks are virtually identical" because their distinguishing features are unlikely to be perceived "at a distance or from a height [] of five feet or more." Pl. SJ Br. 28. Having observed the sneakers, the Court rejects that assessment. See Malletier v. Dooney & Bourke, Inc., 561 F.Supp.2d 368, 384-85 (S.D.N.Y.2008) (marks were sufficiently different to distinguish
In sum, because the parties' toe plates do not generate the same "overall impression," they are unlikely to confuse consumers. Gruner + Jahr, 991 F.2d at 1078. This factor, therefore, also strongly favors LV.
The "competitive proximity" factor concerns whether and to what extent products bearing the two parties' marks compete with each other. Cadbury Beverages, 73 F.3d at 480. Courts assessing this factor consider "whether the products serve the same purpose and whether they share similar geographic distribution, market position and audience appeal." La Cibeles, Inc. v. Adipar, Ltd., No. 99 Civ. 4129 (AGS), 2000 WL 1253240, at *7 (S.D.N.Y. Sept. 1, 2000) (internal quotation marks and citation omitted); see also Jordache Enterprises, Inc. v. Levi Strauss & Co., 841 F.Supp. 506, 517 (S.D.N.Y.1993) ("Factors to consider in determining the competitive proximity of the products include appearance, style, function, fashion appeal, advertising orientation and price.") (citing McGregor-Doniger, 599 F.2d at 1134). If the products "serve the same purpose, fall within the same general class or are used together, the use of similar designations is more likely to cause confusion." Lang, 949 F.2d at 582.
Here, LV rightly concedes that the "content" and "audience appeal" considerations favor LVL XIII. Def. SJ Br. 32. The parties' respective toe plates are featured on virtually identical products: luxury men's sneakers with a price exceeding $490. See Jack Schwartz Shoes, 2002 U.S. Dist. LEXIS 25699, at *78 ("There is no dispute that the products in issue are both men's shoes, and are therefore closely related."). And it is undisputed that LVL XIII targeted LV's customers.
LV nevertheless argues that this factor is neutral because the "geographic distribution" and "market position" considerations favor it. Def. SJ Br. 32. LV notes that "consumers [would] never encounter LVL XIII and LV shoes together at [the] point of purchase" because the OTR Sneaker was sold only through LV-operated stores and LV's website, whereas LVL XIII sneakers could be purchased only in small regional stores in five states and Washington D.C. and through the Carbon Bazaar website. Id.
Were LVL XIII claiming point-of-sale confusion, LV's argument may have had some purchase. But it is misplaced here, where LVL XIII's allegations predominantly involve initial-interest and post-sale
Accordingly, the Court finds that any discrepancies in geographic distribution and market position are not so substantial as to outweigh the similarities between the parties' products in terms of content, price, and target clientele. This factor, therefore, favors LVL XIII.
"`Bridging the gap' refers to the likelihood that the senior user will enter the junior user's market in the future, or that consumers will perceive the senior user as likely to do so." Star Indus., 412 F.3d at 387. This factor "protects the plaintiff's interest in being able to enter a related field at some future time." Cartier II, 294 Fed.Appx. at 619. Where, as here, the parties' products are already in competitive proximity, there is "no gap to bridge, and this factor is irrelevant to the Polaroid analysis." Star Indus., 412 F.3d at 387 (citing Patsy's, 317 F.3d at 218) (treating this factor as neutral where both parties used marks on liquor bottle labels); accord Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir.2009) (same, where both parties used marks in connection with sale of coffee products); Sunny Merch., 97 F.Supp.3d at 496 (same, where both parties' marks appeared on sunglasses).
Although "actual confusion need not be shown to prevail under the Lanham Act," Lois Sportswear, 799 F.2d at 875, "[t]here can be no more positive or substantial proof of the likelihood of confusion." Dooney & Bourke, 561 F.Supp.2d at 385 (quoting Savin Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir.2004)). Accordingly, "courts have concluded that the absence of such evidence may favor the junior user." Paco Sport, 86 F.Supp.2d at 319 (collecting cases); accord McGregor-Doniger, 599 F.2d at 1136 ("[I]t is certainly proper for the trial judge to infer from the absence of actual confusion that there was
"Evidence of actual confusion may consist of anecdotal or survey evidence." Paco Sport, 86 F.Supp.2d at 319. To be relevant under the Lanham Act, the confusion must be of a type that "could inflict commercial injury [on the plaintiff] in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation." Lang, 949 F.2d at 583; see also Trustees, 964 F.Supp. at 747 ("[T]here is a difference between isolated expressions of momentary confusion and confusion that leads to actual purchasing decisions.").
Here, LVL XIII has not presented survey evidence as to consumer confusion. See Orb Factory, Ltd. v. Design Sci. Toys, Ltd., No. 96 Civ. 9469 (RWS), 1999 WL 191527, at *12 (S.D.N.Y. Apr. 7, 1999) ("[A] plaintiff's failure to offer a survey showing the existence of confusion is evidence that the likelihood of confusion cannot be shown.") (collecting cases). Instead, it relies on 12 anecdotes of oral communications made to Brown or LVL XIII,
As to the anecdotes, most involve inquiries by fashion industry professionals whether LVL XIII had collaborated with LV on the OTR Sneaker. See Brown Dep. II, at 232-42; Brown Dep. IV, at 424-32; id. at 432 ("[E]veryone pretty much had the same question. I mean it was either one of two things. Did you do a collaboration with Louis Vuitton or did they copy your design?"). Courts have held such inquiries not probative of actual confusion. See, e.g., Nora Beverages, 269 F.3d at 124 ("Inquiries about the relationship between an owner of a mark and an alleged infringer do not amount to actual confusion. Indeed, such inquiries are arguably premised upon a lack of confusion between the products such as to inspire the inquiry itself."). And nine of the 12 purportedly confused persons had a pre-established personal or business relationship with Brown or LVL XIII. Pl. 56.1 ¶ 268.
As to the text messages, each was sent by a friend or former colleague of Brown's. See Brown Dep. IV, at 388-91, 393; Sloane Decl., Exs. 46-47.
The third text message and the two Instagram posts, by contrast, reflect actual confusion. The text message and first Instagram post each consist of a photo of the OTR Sneaker and an inquiry whether it was made by LVL XIII. See Sloane Decl., Ex. 46, at 2-3. The second Instagram post tags a photo of the OTR Sneaker "New #LVLXIII shoe." Id. at 1. Each evinces confusion as to source. Critically, however, none indicates that the speaker made a purchasing decision based on his confusion. Indeed, Brown admitted he was unaware of any consumer who experienced confusion at the point of purchase. Brown Dep. IV, at 437-38.
"The inquiry into willfulness or bad faith `considers whether the defendant adopted its mark with the intention of capitalizing on the plaintiff's reputation and goodwill and on any confusion between his and the senior user's product.'" De Beers, 440 F.Supp.2d at 278 (quoting Savin Corp., 391 F.3d at 460). "Evidence of intentional copying by a junior user may be indicative of an intent to create a confusing similarity between the products." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1044 (2d Cir. 1992).
As discussed above, there is zero evidence that LV copied the TP — much less that it did so with the goal of capitalizing on LVL XIII's reputation. Quite the contrary, LV's evidence is that (1) the OTR Sneaker's principal designer had never heard of LVL XIII or its sneakers before this lawsuit, and (2) LV's design team acted in good faith to avoid infringement — including by soliciting the advice of LV's in-house counsel and modifying its design to distance it from the Jack Purcell sneaker. See Pl. 56.1 ¶¶ 44-45, 50-54, 58-60; see also Lang, 949 F.2d at 583 ("[R]eliance on the advice of counsel ... support[s] a finding of good faith."); Sports Traveler II, 25 F.Supp.2d at 166 (same). That LV prominently displayed its own logos on the OTR Sneaker
LVL XIII nevertheless argues that the Court should infer bad faith from LV's failure to submit evidence of a trademark search. Pl. SJ Br. 33. But a defendant's failure to conduct a trademark search is "not sufficient to demonstrate bad faith." J.T. Colby & Co. v. Apple Inc., No. 11 Civ. 4060 (DLC), 2013 WL 1903883, at *23 (S.D.N.Y. May 8, 2013) (citing Star Indus., 412 F.3d at 388), aff'd, 586 Fed. Appx. 8 (2d Cir.2014) (summary order). And the Second Circuit "has never held adoption of a mark with no knowledge of a prior similar mark to be in bad faith[,] even in the total absence of a trademark search." Star Indus., 412 F.3d at 388.
The seventh Polaroid factor, the quality of the defendant's product, "directs courts to weigh cross-cutting considerations." Akiro, 946 F.Supp.2d at 340.
Id. (quoting Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133, 142 (2d Cir.1999)). Here, LVL XIII "attempts to take both forks of this road," id., arguing first, that the OTR Sneaker is inferior to LVL XIII sneakers in "workmanship [and] consumer satisfaction," and second, that even if the sneakers were of the same quality, this factor would favor LVL XIII because buyers would "be more likely to substitute the products." Pl. SJ Br. 34.
In support of its first argument, LVL XIII relies entirely on an email from a shoe manager at a Boston LV store. The email states:
MacMull Decl., Ex. 28, at 6. The negative account of LV's OTR Sneaker embedded in this email is inadmissible double hearsay, not cognizable on a motion for summary judgment. And even if it were admissible, this evidence would be too skimpy to show LV's sneaker was of lesser quality than LVL XIII's. Indeed, the record is devoid of evidence as to the quality of, or consumer satisfaction with, either product.
The final Polaroid factor, consumer sophistication, "consider[s] the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods." Star Indus., 412 F.3d at 390 (internal quotation marks and citation omitted). In a reverse confusion case, "the consumers relevant to [this] inquiry are those who purchase [the plaintiff's] products." Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir.1994); accord Denimafia, 2014 WL 814532, at *24.
In general, "[t]he greater the value of an article the more careful the typical consumer can be expected to be." McGregor-Doniger, 599 F.2d at 1137 ("[T]he average purchaser of an automobile will no doubt devote more attention to examining different products and determining their manufacturer or source than will the average purchaser of a ball of twine."); accord Dooney & Bourke, 561 F.Supp.2d at 389 ("If the goods are expensive, the reasonably prudent buyer does not buy casually, but only after careful consideration. Thus, confusion is less likely than where the goods are cheap and bought casually." (quoting McCarthy on Trademarks § 23:96) (internal quotation marks omitted)). And "the more sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks in the marketplace." Sly Magazine, LLC v. Weider Publ'ns L.L.C. ("Sly Magazine II"), 346 Fed.Appx. 721, 723 (2d Cir.2009) (summary order) (internal quotation marks and citation omitted); see also Centaur II, 830 F.2d at 1228 (existence of sophisticated consumers "usually militates against a finding of a likelihood of confusion").
Here, the sophistication of LVL XIII's consumers can be inferred from the high price points of its sneakers.
Viewed in combination, the Polaroid factors lopsidedly favor LV. The proximity factor favors LVL XIII, and the bridging-the-gap and quality factors are neutral, but the remaining factors all point against a likelihood of confusion.
"The essence of an unfair competition claim under New York law is that the defendant has misappropriated the labors and expenditures of another." Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980). To prevail, a plaintiff "must couple its evidence supporting liability under the Lanham Act with additional evidence demonstrating [the defendant's] bad faith.'" Info. Superhighway, Inc. v. Talk Am., Inc., 395 F.Supp.2d 44, 56 (S.D.N.Y.2005) (quoting Philip Morris USA Inc. v. Felizardo, No. 3 Civ. 5891 (HB), 2004 WL 1375277, at *6 (S.D.N.Y. June 18, 2004)). It must prove: (1) actual confusion or a likelihood of confusion; and (2) the defendant's bad faith. Sly Magazine II, 346 Fed.Appx. at 723.
Because LVL XIII has failed to establish either element, its common law unfair competition claim fails as a matter of law. LV is thus entitled to summary judgment on this claim. See, e.g., Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 485 (2d Cir.2005); Denimafia, 2014 WL 814532, at *26 n. 101; Gameologist, 838 F.Supp.2d at 165; Lopez, 883 F.Supp.2d at 430-31.
GBL § 349(a) prohibits "[d]eceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any service" in New York. To establish liability, a plaintiff must show that: (1) the defendant engaged in an act or practice that was materially misleading, and (2) that the plaintiff was injured thereby. See Sports Traveler, Inc. v. Advance Magazine Publishers, Inc. ("Sports Traveler I"), No. 96 Civ. 5150 (JFK), 1997 WL 137443, at *2 (S.D.N.Y. Mar. 24, 1997). "The standard for whether an act or practice is misleading is objective, requiring a showing that a reasonable consumer would have been misled by the defendant's conduct." Pelman ex rel. Pelman v. McDonald's Corp., 396 F.Supp.2d 439, 444 (S.D.N.Y.2005). For conduct to be "materially" misleading it must affect consumers' choice of product. See Bildstein v. MasterCard Int'l Inc., 329 F.Supp.2d 410, 414 (S.D.N.Y.2004).
Corporate competitors may bring claims under § 349(a) only if "some harm to the public at large is at issue." Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264 (2d Cir.1995) (internal quotation marks and citation omitted). "Because section 349 is modeled after the Federal Trade Commission Act, federal courts have interpreted the statute's scope as limited to the types of offenses to the public interest that would trigger Federal Trade Commission intervention under 15 U.S.C. § 45, such as potential danger to the public health or safety." Sports Traveler I, 1997 WL 137443, at *2. Accordingly, many courts have found that mere evidence of consumer confusion is not enough to satisfy this element.
The Court turns now to LV's counterclaims. These fall into two sets. The first mirrors LVL XIII's Lanham Act claims: LV seeks (1) a declaratory judgment that LVL XIII has no exclusive right in the shape of a rectangular metal toe plate; and (2) an injunction requiring LVL XIII to disclaim the non-distinctive elements of the TP (i.e., all elements other than the "LVL XIII" inscription). LV has acknowledged that these counterclaims would be mooted by a holding that the TP is not protectable under the Lanham Act.
LV's second set of counterclaims stems from LVL XIII's use of the "LVL XIII" word mark. LV brings claims for trademark infringement, under § 32(a) of the Lanham Act, and unfair competition and
Each of these counterclaims is analyzed under the "familiar two-prong test" that applies to infringement claims brought under § 43(a): LV must show, first, that its Initials Logo is entitled to protection, and second, that LVL XIII's use of its word mark is likely to cause consumer confusion as to the origin or sponsorship of its products. Virgin Enters., 335 F.3d at 146; see Nabisco II, 220 F.3d at 45; Gameologist Grp., 838 F.Supp.2d at 152-53.
LVL XIII concedes that the Initials Logo is a valid mark entitled to protection. Pl. SJ Br. 51. The sole issue for decision, therefore, is whether a reasonable juror could find that LVL XIII's use of its word mark is likely to cause confusion. Although this presents a considerably closer question than LVL XIII's claims, an analysis of the Polaroid factors reveals that the answer is no. The Court, again, addresses each factor in turn.
As noted, in gauging the strength of a mark, courts consider both its inherent distinctiveness and its "acquired distinctiveness, i.e., fame, or the extent to which prominent use of the mark in commerce has resulted in a high degree of consumer recognition." Virgin Enters., 335 F.3d at 147 (internal quotation marks omitted). As to inherent distinctiveness, "the law accords broad, muscular protection to marks that are arbitrary or fanciful in relation to the products on which they are used, and lesser protection, or no protection at all, to marks consisting of words that identify or describe the goods or their attributes." Id. As to acquired distinctiveness, "[i]f a mark has been long, prominently and notoriously used in commerce, there is a high likelihood that consumers will recognize it from its prior use." Id. at 148. Such widespread consumer recognition "increases the likelihood that consumers will assume [the mark] identifies the previously familiar user, and therefore increases the likelihood of consumer confusion if the new user is in fact not related to the first." Id.
Here, there is no question that LV's Initials Logo is strong by virtue of both its inherent and acquired distinctiveness. As a registered trademark, it is presumptively distinctive. See Savin Corp., 391 F.3d at 457; McGregor-Doniger, 599 F.2d at 1132. And although personal names are generally descriptive, they may be inherently distinctive where, as with LV's Initials Logo, they are presented in a "stylized" form. Patsy's, 317 F.3d at 217 ("[A] personal name rendered in a distinctive lettering style may be considered strong even without a showing of secondary meaning.").
To the extent, however, that LV claims a broader exclusive right to use the non-stylized "LV" letter combination, the same conclusion does not follow. On this point, Gruner + Jahr, 991 F.2d 1072, is instructive. The district court there held that, even though the registered "PARENTS" logo was strong, the mark was weak in its non-stylized form. Gruner + Jahr USA Pub., a Div. of Gruner + Jahr Printing & Pub. Co. v. Meredith Corp., 793 F.Supp. 1222, 1231 (S.D.N.Y.1992), aff'd, 991 F.2d 1072 (2d Cir.1993). As the court explained, the "origin-indicating quality" of the mark "l[ay] in the customized manner in which it [was] displayed, and not in the mere use of the word `parents.'" Id. (internal quotation marks omitted). The Second Circuit affirmed. It held that "the trademark registration of the title PARENTS in its distinctive typeface did not confer an exclusive right to plaintiff on variations of the word `parent.'" Gruner + Jahr, 991 F.2d at 1077. And the descriptive nature of the mark and extensive third-party use "lessen[ed] the possibility that a purchaser would be confused and think the mark came from a particular source." Id. at 1078. Accordingly, the Second Circuit upheld the ruling that "the `parents' portion of the mark — divorced from the stylized typeface and its particular placement on [plaintiff's] magazine cover — was extremely weak." Id.
Similarly, here, although the Initials Logo is strong in its stylized form, that does not mean that LV has the "exclusive right to ... [every] variation[ ]" of the "LV" initials. Gruner + Jahr, 991 F.2d at 1077. And because LV has offered no evidence of using those initials in a non-stylized form, there is no basis to conclude that they have acquired secondary meaning in that context.
Because this factor cuts both ways, the Court, drawing all reasonable inferences in LV's favor, holds that it can support, but only weakly, a likelihood of confusion.
In the context of word marks, similarity is a "holistic consideration that turns on the marks' sight, sound, and overall commercial impression under the totality of the circumstances." Bath & Body
Here, both parties' marks use the letters "LV" in a Roman-like font. But that alone does not make them "similar" for purposes of a Polaroid analysis. That two marks share an element does not mean they are likely to be confused. See Brockmeyer v. Hearst Corp., 248 F.Supp.2d 281, 296 (S.D.N.Y.2003) ("[S]imply because [the marks] contain [a] common element does not mean that they are `similar' for the purpose of assessing confusion under the Polaroid factors.").
On this point, Judge Koeltl's analysis in Brockmeyer, 248 F.Supp.2d 281, is apt. The plaintiff there alleged that the publishers and distributors of "O The Oprah Magazine" infringed its ">>O<<" trademark. Assessing the two marks' similarity, Judge Koeltl noted that both parties' magazines featured the letter "O" prominently on their covers in a similar size and typeface, such that the magazines could each be referred to as "O Magazine." Id. at 296. But, he held, notwithstanding those similarities, the marks were not confusingly similar because "plaintiff's use of guillemets
So too, here. In this case, any similarity between the parties' marks is more than offset by their differences. Most significant are the obvious visual distinctions between the two logos: LV's Initials Logo presents the letters "L" and "V" as a single interlocking image, with the "V" overlapping the italicized "L" on a downward angle from right to left. By contrast, the "LV" in LVL XIII's mark is invariably followed by "L XIII," with all characters arranged collinearly. These differences in visual presentation render the marks dissimilar as a matter of law. See, e.g., SLY Magazine, LLC v. Weider Publications L.L.C. ("SLY Magazine I"), 529 F.Supp.2d 425, 439 (S.D.N.Y.2007) (fact that both marks included word "SLY" did not make them confusingly similar, where defendant's "SLY" was always shown in block capital letters, whereas plaintiff's was always presented in italicized script or followed by a tagline), aff'd, 346 Fed.Appx. 721 (2d Cir.2009) (summary order).
Moreover, given the common use of roman numerals and the "LVL" abbreviation,
Indeed, LV ultimately eschewed the broad argument that the two marks, in all contexts, are confusingly similar. Rather, it argues that the particular way LVL XIII presented its mark on social media and the
That argument is unpersuasive. To be sure, in assessing similarity, the Court must consider "how [the marks] are presented in the marketplace." The Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 962 (2d Cir.1996). But LV's characterization of that presentation here is misleading. Although many of the photographs do present LVL XIII's shoes on an angle, they do not, as LV claims, highlight the "LV" portion of its mark. To the contrary, in most photographs on which LV relies, the literal element of the toe plate is barely, if at all, legible. See, e.g., Sloane Decl., Ex. 37, at 30-33; id., Ex. 41, at 4-5, 9-10; id., Ex. 35, at 3, 5-11. And in every instance, the page displaying the photograph also presents the full "LVL XIII" mark — either as a standalone reference to the brand or as a link to its website (www. lvlxiii.com). See id.; see also Starbucks, 588 F.3d at 106 ("To the extent the Charbucks Marks are presented to the public through Black Bear's website, the dissimilarity between the marks is still evident as the Charbucks brand of coffee is accompanied by Black Bear's domain name, www. blackbearcoffee.com, and other products, such as shirts and cups, displaying Black Bear's name."). Therefore, because the "LVL XIII" mark and the Initials Logo are demonstrably dissimilar, this factor weighs strongly against a likelihood of confusion.
It is undisputed that LV has featured its Initials Logo on the OTR Sneaker, among many other products. Pl. Supp. 56.1 ¶ 407. As discussed above, supra, at 670-71, that product is competitively proximate to LVL XIII's sneakers. This factor, therefore, favors LV.
Because the parties' products are already in competitive proximity, there is "no gap to bridge," and this factor is neutral. See Starbucks, 588 F.3d at 115 (internal quotation marks and citation omitted); Star Indus., 412 F.3d at 387.
As discussed above, although "actual confusion need not be shown to prevail under the Lanham Act," Lois Sportswear, 799 F.2d at 875, courts have held that the absence of such evidence "is a strong indicator that the likelihood of confusion is minimal." Plus Prods. v. Plus Discount Foods, Inc., 722 F.2d 999, 1006 (2d Cir. 1983). This inference is weakened, however, where the parties' products have been competing for only a short time. See Lois Sportswear, 799 F.2d at 875.
Here, LV has not offered evidence of actual confusion. To the contrary, its 30(b)(6) witness testified that she was "not aware of any actual confusion" between the LVL XIII word mark and the Initials Logo. Def. Supp. 56.1 ¶ 371. Therefore, accounting for the brevity of the parties' co-existence in the marketplace, this factor slightly favors LVL XIII.
As noted, the inquiry into bad faith "considers whether the defendant adopted its mark with the intention of capitalizing on [the] plaintiff's reputation and goodwill and [on] any confusion between his and the senior user's product." Savin Corp., 391 F.3d at 460 (internal quotation marks and citation omitted). "The burden of proving bad faith rests with the party claiming infringement." J.T. Colby & Co., 2013 WL 1903883, at *23 (citing Star Indus., 412 F.3d at 388). As the Second Circuit has explained, "[w]hile... caution must be exercised in granting summary judgment when state of mind is in issue, `[t]he summary judgment rule would be rendered sterile ... if the mere incantation of intent or state of mind would operate as a talisman to defeat an otherwise valid motion.'" Nora Beverages, 269 F.3d at 125 (quoting Res. Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 141 (2d Cir.1991)).
Here, LV argues that LVL XIII's bad faith can be inferred from the following facts: (1) Brown has long been familiar with LV and its Initials Logo; (2) LVL XIII considers LV "both an inspiration for its planned line of shoes and a competitor"; (3) "[o]ut of all the fonts and all the presentations possible of the name `Level Thirteen,'" Brown chose to use the "LVL XIII" abbreviation in a "near-identical font to LV's signature font"; and (4) the photos LVL XIII supplied to Carbon Bazaar present its sneakers in such a way that the "LV" portion of the "LVL XIII" logo is predominant. Def. SJ Reply Br. 33; Tr. 90. In combination, LV argues, these facts could lead a reasonable juror to find that LVL XIII deliberately sought to capitalize on LV's reputation and goodwill.
Although LV's notion that Brown sought to exploit LV's goodwill is intuitively understandable, its evidence of bad faith is, ultimately, weak. As to Brown's familiarity with LV, it is well established that "[p]rior knowledge of a senior user's mark does not, without more, create an inference of bad faith." Playtex Prods., 390 F.3d at 166; accord Malaco Leaf, 287 F.Supp.2d at 376 ("While it is undisputed that PIM's President... was aware of plaintiff's Swedish Fish candy before introducing Famous Sqwish Candy Fish, adoption of a mark with actual knowledge of another's mark is not, alone, evidence of bad faith."). Courts have typically found such knowledge probative of bad faith only where it is "accompanied by similarities so strong that it seems plain that deliberate copying has occurred." Paddington, 996 F.2d at 587.
As to LVL XIII's choice of abbreviation, Brown has offered a credible explanation for selecting this moniker: He testified that because "level thirteen" would have been "too long" to fit on a toe plate, he referenced allacronyms.com to select an abbreviation for "level." Brown Dep. V, at 192-93. Of the options, Brown testified, "LVL" "stood out" out as the most obvious choice. Id. at 193. Consistent with this, "LVL" is the website's top ranked abbreviation; the alternative options are more cryptic. See https://www.allacronyms.com/ level/abbreviated; Pl. Supp. 56.1 ¶ 395 (noting that "Lev," "LEL," and "L" are among the listed abbreviations); see also Nora Beverages, 269 F.3d at 125 (no fact issue as to bad faith where only evidence was the similarity of the parties' bottle designs and that defendant chose its design from a "limitless array of available design options") (internal quotation marks omitted).
Finally, as discussed above, the record evidence does not support LV's claim that the Carbon Bazaar photos effectively showcased the "LV" portion of the mark. The toe plate's literal element is indecipherable in most of the photos. And the full "LVL XIII" logo is displayed beside each photo on the webpage. See Sloane Decl., Ex. 35. Accordingly, these images do not bespeak an intent to deceive. Cf. Nora Beverages, 269 F.3d at 125 ("[B]y placing its labels prominently upon its bottles, [defendant] negated an inference of intent to deceive consumers as to the source of its product.").
In sum, the Court holds that, although there is a smidgeon of evidence favoring LV, the "suspicious facts" highlighted by LV, considered separately or together, are insufficient to create a material question of fact as to bad faith.
Because LV has failed to proffer any non-speculative evidence of bad faith, and LVL XIII has produced evidence of its good faith, this factor favors LVL XIII.
As discussed above in connection with LVL XIII's claims, there is no record evidence as to the relative quality of the parties' products. The seventh Polaroid factor is thus neutral and does not affect the Court's analysis. See Star Indus., 412 F.3d at 389; Bath & Body Works, 7 F.Supp.3d at 398.
The eighth Polaroid factor, consumer sophistication, weighs against finding a likelihood of confusion for the same reasons discussed in connection with LVL XIII's claims: Given the "high price point of both LVL XIII's and LV's products," Def. SJ Br. 35, it can be assumed that the typical customer is sophisticated and unlikely to be confused by any similarities between the parties' logos. Indeed, "several courts have noted[ that] purchasers of Louis Vuitton products tend to be sophisticated[,] discerning," and less susceptible to confusion. Sunny Merch., 97 F.Supp.3d at 498 (internal quotation marks and citation omitted) (collecting cases). This factor, therefore, also favors LVL XIII.
In light of the above considerations, the Court holds that the Polaroid factors, on balance, favor LVL XIII. Although two factors — strength and proximity — to some degree favor LV, they do not outweigh the four which, strongly, point against a likelihood of confusion.
The Court, therefore, grants LVL XIII's motion for summary judgment on each of LV's Lanham Act counterclaims.
For the foregoing reasons, the Court grants LV's motion to preclude the report and testimony of LVL XIII's expert witness. The Court also grants LV's motion for summary judgment with respect to all of LVL XIII's claims, and denies LVL XIII's motion for summary judgment on the same. Finally, the Court grants LVL XIII's motion for summary judgment with respect to all of LV's counterclaims.
The Clerk of Court is respectfully directed to terminate the motions pending at docket numbers 88, 103, 106, and 125, and to close this case.
SO ORDERED.
Here, LV concedes that the TP is not functional, see Tr. 58, and has not argued that it is generic. Because LVL XIII's claims fail on other grounds, the Court has no occasion to consider, sua sponte, whether the TP is generic. But the issue whether LVL XIII's toe plate is so, and hence unprotectable even if it had acquired secondary meaning, appears substantial: The claimed trade dress consists of an unadorned metal toe plate — which, as discussed below, is a common design feature in the high-end footwear industry. See Yurman Design, 262 F.3d at 115 ("[E]ven a showing of secondary meaning is insufficient to protect product designs that are overbroad or `generic.'"); Fun-Damental, 111 F.3d at 1000 ("A trade dress that consists of the shape of a product that conforms to a well-established industry custom is generic and hence unprotected. For example, the cosmetics industry's common use of black, rectangular-shaped compacts renders that packaging generic."); Jeffrey Milstein, Inc., 58 F.3d at 33 ("Despite its initial novelty within the greeting card industry[,] ... Paper House's trade dress cannot qualify for trade dress protection because Paper House is effectively seeking protection for an idea or concept — die-cut photographic greeting cards.").
LVL XIII cites Mortellito v. Nina of California, Inc., 335 F.Supp. 1288 (S.D.N.Y.1972), for the proposition that the sales volume achieved by a small business owner need not mirror that of a large national retailer. Pl. SJ Br. 23. The court there held that the plaintiff's $184,000 in sales supported secondary meaning, given her "meager means" and the modest scale of her business. Mortellito, 335 F.Supp. at 1290-91, 1295. Notably, Mortellito was decided in 1972 — the plaintiff's $184,000 in revenue today would amount to more than $1 million. LVL XIII's sales ($141,241) are far less.
LVL XIII objects to this evidence as "irrelevant" and "unsubstantiated." Pl. SJ Br. 25-26. The Court, for the most part, rejects that critique.
LVL XIII first argues that, because it claims rights only in a toe plate affixed to men's sneakers, LV's evidence of third-party use is irrelevant to the extent it involves other footwear. Id. at 26 (citing W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 661 (2d Cir.1970) (third-party use did not weigh against secondary meaning where "the third-party products cited by [defendant] range[d] from very different to slightly different products from [plaintiff's], [and] most of the third-party products ha[d] names slightly different from [plaintiff's], or else the third-parties did not promote their [marks] with as much effort and money as [plaintiff] did"); New Colt Holding Corp. v. RJG Holdings of Fla., Inc., 312 F.Supp.2d 195, 229 (D.Conn.2004) (rejecting evidence of third-party uses not relevant to market claimed by plaintiff)). But that argument is not persuasive here, given Brown's testimony that (1) "luxury athletic footwear" is a "niche market" which bridges the gap between athletic shoes and dress shoes, see Brown Dep. I, at 47-48; and (2) LVL XIII's initial sneaker line included "sneaker boots," i.e., "hybrid[s] between [] boot[s] and [] sneaker[s]," id. at 146. See Nabisco v. Warner-Lambert Co. ("Nabisco I"), 32 F.Supp.2d 690, 698 (S.D.N.Y.1999) ("confections" as opposed to "mints" was "relevant product category" for gauging third-party use because "the consumer has the freedom to choose among mints, gums, or candies to achieve breath freshening and cool taste"). A reasonable juror would have to conclude that at least some of the many third-party uses cited by LV diluted LVL XIII's claim to exclusive use, thereby hindering its accrual of secondary meaning.
LVL XIII next argues that LV's screenshots are improperly authenticated and do not establish that "the third-party marks ... were promoted in commerce" or "recognized by consumers in any way." Pl. SJ Br. 26. It relies on cases discounting evidence of third-party trademark registrations, on the ground that such registrations do not alone establish the actual use of the registered marks in commerce. See, e.g., Scarves by Vera, 544 F.2d at 1173-74; Bear U.S.A., Inc. v. Kim, 71 F.Supp.2d 237, 255 (S.D.N.Y.1999), aff'd, 216 F.3d 1071 (2d Cir.2000). But those cases are inapposite. LV's evidence is not of third-party registrations; it consists instead of screenshots of websites and articles which reflect the actual use of metal shoe ornaments in commerce. See Bear U.S.A., 71 F.Supp.2d at 255 ("[E]vidence of third party registrations, in contrast to evidence of third party usage in the marketplace, is not persuasive evidence that a mark is weak.") (emphasis added); Giggle, 856 F.Supp.2d at 632-33 ("[w]hen reliable," screenshots of advertisements and websites of third-party use can be "very persuasive in proving lack of secondary meaning"); Icon Enters. Int'l, Inc. v. Am. Products Co., No. 4 Civ. 1240 (SVW), 2004 WL 5644805, at *33 (C D.Cal. Oct. 7, 2004) ("[A] website is arguably more probative of actual use than either a trademark search or telephone listing."); see also New Colt Holding Corp., 312 F.Supp.2d at 209 ("[R]equiring Defendants to demonstrate that competing users are recognized by customers misplaces the burden of proof and places the proverbial cart before the horse.").
Nor is LV's authentication of these documents fatally deficient. Almost every screenshot was authenticated by the person who produced it and who attested that it is a "true and correct copy of a screen print of an article" retrieved from a particular website on a particular date. See Harmon Decl. Most bear time stamps showing the publication date. Although an attestation from a person responsible for each website publication as to its timing would have been more reliable, LV's proof is sufficiently reliable to be received, at least to show that, in the aggregate, numerous third parties used and publicly promoted metal toe plates before LVL XIII. Cf. Sunny Merch., 97 F.Supp.3d at 503 (rejecting objection to third-party advertisements, internet search results, and various articles and reports); Giggle, 856 F.Supp.2d at 632-33 (screenshots of websites and advertisements depicting third-party use of "GIGGLE" mark not hearsay).
In any event, even if the Court disregarded all evidence of third-party use, the evidence of LV's earlier use of metal accents would preclude a finding of exclusivity.
LVL XIII cites GTFM, Inc. v. Solid Clothing, Inc., 215 F.Supp.2d 273, 302 (S.D.N.Y.2002), and Burberry Ltd. & Burberry USA v. Designers Imports, Inc., No. 07 Civ. 3997 (PAC), 2010 WL 199906, at *8 (S.D.N.Y. Jan. 19, 2010), for the proposition that a plaintiff may satisfy the "public harm" requirement merely by showing general consumer confusion. But those cases involved intentional counterfeiting, which is distinct from, and arguably more harmful than, garden-variety trademark infringement. Accordingly, they are not persuasive authority here.
Having dismissed LV's counterclaims on other grounds, the Court need not resolve LVL XIII's summary judgment motion based on these affirmative defenses. See Sunny Merch., 97 F.Supp.3d at 501 n. 8. It notes, however, that there is no evidence that LV had either actual or constructive knowledge of LVL XIII's marks before this lawsuit. See Perfect Pearl Co. v. Majestic Pearl & Stone, Inc., 887 F.Supp.2d 519, 545 (S.D.N.Y.2012) ("doctrine of constructive knowledge [did] not apply" because: (1) plaintiff was unaware of defendant's existence until shortly before it filed its claims; (2) plaintiff's "use of the marks long predated [defendant's] founding"; and (3) defendant "fail[ed] to explain what facts known to [plaintiff] purportedly gave rise to a duty to inquire as to [defendant's] use of the marks"). Accordingly, LV "delayed" at most three months (as to the counterclaims concerning the TP) and six months (as to those concerning the word mark) before filing its counterclaims. See Dkts. 18, 40. Such delay, without more, would not rise to the level of barring relief. See, e.g., Inc. Pub'g Corp. v. Manhattan Magazine, Inc., 616 F.Supp. 370, 397 (S.D.N.Y.1985) ("If plaintiff's had made a strong showing of likelihood of confusion, I would not have regarded plaintiffs' inaction between April and July as rising to the level of an equitable bar to relief."). And, at least as to LV's second set of counterclaims, LVL XIII has not alleged, much less proved, prejudice from that delay. See Perfect Pearl Co., 887 F.Supp.2d at 545 (burden is on party asserting laches defense to show prejudice from delay); Bath & Body Works, 7 F.Supp.3d at 393 n. 7 (plaintiff's laches defense to counterclaims "insufficient to warrant summary judgment" because plaintiff "offered no evidence to demonstrate it was prejudiced by [defendant's] delay").
