Who registers the watchmen? court needs more info in (c) case

Sara Designs, Inc. v. A Classic Time Watch Co., —
F.Supp.3d —-, 2017 WL 627461, No. 16CV03638 (S.D.N.Y. Feb. 15, 2017)
Sara sued for copyright infringement, trade dress
infringement, state trademark infringement and dilution, unfair trade practices,
and deceptive practices and false advertising under New York General Business
Law §§ 349 and 350. The court granted a motion to dismiss and denied a motion
for a preliminary injunction.
Sara sells a highly successful series of wrap watches,
including several styles of wrap watches using gradient chains, leather
strands, adjustable links that include a lobster claw closure connected to the
gradient chains with a ring, and an extension chain with a Sara Designs
leaf-shaped logo connected to the watch. A representative from NY & Co. allegedly
visited Sara’s booth at a trade show to ask whether it would lower prices or
produce their product with lower-end materials under the NY & Co. brand. Sara
declined, and NY & Co. allegedly had A Classic Time copy several of Sara’s
watches. 
Bonus question: after Varsity
Brands
, are these watches protectable?
The copyright aspects had a problem: the complaint included certificates
of copyright registration for several watches, “and numerous images of what
appear to be internet screenshots of various iterations of Plaintiff’s watches
and Defendants’ allegedly infringing watches.” But each of the submitted
certificates of registration were text-only, and none were accompanied by any
corresponding images of the work it purported to cover nor any specific
descriptions of the work, other than the title of the work. The internet images
of the allegedly infringed watches weren’t alleged to correspond to any
particular registration number.
[Scroll down for more]
 

from complaint

More allegedly infringing watches

The court ordered Sara to file a supplemental submission “clarifying
the scope of the copyright application and grant covering the allegedly
infringed watches.” The resulting declaration didn’t provide further evidence
to show that the certificates of registration corresponded to the images of the
various watches submitted with the complaint. For example, although Sara alleged
that “the W03 All Chain Wrap Watch” was infringed, it didn’t submit a
certificate of registration referencing any “W03” watch, nor did it allege a
plausible basis for a determination that any of the certificates covered that
watch. “The declaration proffers, without explanation, multiple and seemingly
different watches as being covered by single certificates of registration, and
refers to watch titles that differ from the titles in the certificates and the
Complaint.” There was no plausible factual basis from which to infer that a
valid copyright registration covered any of the specific watches shown in the
screenshots.  The complaint was dismissed
with leave to amend.
The trade dress claims were conclusory and
insufficient.  The complaint failed to
identify the “precise nature of the trade dress” allegedly at issuse, “and
merely contains a high level description of features of several watches, such
as ‘gradient chain,’ ‘lobster claw closure,’ and ‘leaf-shaped logo,’ without
allegations as to whether and how those features are distinctive.” Sara also
didn’t properly allege secondary meaning, merely “asserting in a conclusory
manner” that Sara was “known primarily for its unique and famous Wrap Style
Watches,” and that its trade dress was “widely recognized by consumers as being
associated with Plaintiff and has developed secondary meaning in the
marketplace.” The complaint didn’t plead facts about advertising expenditures,
consumer surveys, marketing coverage or prior attempts to plagiarize Sara’s
trade dress that would support a proper inference of secondary meaning.
State dilution claims require a plaintiff to show “(1) that
it possesses a strong mark, one which has a distinctive quality or has acquired
a secondary meaning such that the trade name has become so associated in the
public’s mind with the plaintiff that it identifies goods sold by that entity
as distinguished from goods sold by others, and (2) a likelihood of dilution by
either blurring or tarnishment.” The allegedly infringing watches were marked with
“NY & Co.” or “New York & Company” logos. If Sara ought to claim that
the term “wrap style watch” or the appearance of its watches constituted
protectable marks, it didn’t allege sufficient facts or legal theories to make
infringement or dilution claims plausible.
Sara’s unjust enrichment claim was preempted by the
Copyright Act, like the unfair competition claim to the extent that it was also
based on misappropriation of copyright. The claims similar to the Lanham Act
claim were dismissed for the reasons above, and for the additional reason that
the complaint didn’t adequately allege bad faith. The deceptive practices/false
advertising claims under GBL §§ 349-350 were dismissed for want of alleged
facts supporting an inference of harm to the public interest or consumers
outside of harm to Sara’s own products and its related property rights.

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