Court Finds Jurisdiction Over Declaratory Judgment Action for Trademark Non-Infringement

In an April 27, 2015 ruling, Judge Thomas P. Griesa found that the Court had summary judgment matter jurisdiction to entertain a declaratory judgment action trademark non-infringement, but that exercising such jurisdiction would serve no useful purpose. In this action, the owner of the “Rolcx” trademark for watches and jewelry sued to invalidate the registered “RLX RALPH LAUREN” and “RALPH LAUREN RLX” marks for the same goods, and the defendant counterclaimed for non-infringement. In finding a justiciable declaratory judgment controversy, Judge Griesa noted:

Multiple facts in the record demonstrate that this question meets the Medlmmune standard for justiciability. First, Rolex acknowledges it will bring an infringement action if [the declaratory judgment plaintiff] produces watches and jewelry bearing those marks.…Second, [the declaratory judgment plaintiff] has already offered and sold, between 2004 and 2007, a watch bearing the RLX mark, demonstrating the reality of the controversy, as well as [its] ability and willingness to launch the products in question. …Third, [the declaratory judgment plaintiff] has entered into a joint venture with [a] watchmaker .… Both sides have vigorously pursued this litigation at considerable expense. All this tends to show that the parties here have a real, substantial dispute concerning the trademarks in question, satisfying the Medlmmune standard and establishing the court's declaratory judgment jurisdiction.

The Court nevertheless found that exercising jurisdiction would not be useful, based in part on “legitimate concerns about whether the parties can litigate questions of infringement or dilution (in connection with the declaratory judgment claim) without evidence flowing from the products’ existence in the markets” (and based in part on redacted material unavailable to the public).

Court Declines to Dismiss Unclean Hands Defense

In a March 19, 2015 ruling, Judge Thomas P. Griesa declined to strike the defendant’s defense of unclean hands. Although the plaintiff is asserting a patent infringement claim, the unclean hands defense relates to the plaintiff’s alleged inequitable interference with the defendant’s supply agreement with a third party. The Court held that by “seeking an injunction against defendant [on the patent infringement claim], plaintiff comes to the court in equity” so the “defense of unclean hands deserves to be tried on the merits.”

Court Dismisses Copyright Complaint as Inadequately Plead Because It Does Not Identify All Infringed Works

In a March 31, 2014 ruling, Judge Thomas P. Griesa dismissed under Fed. R. Civ. P. 12(b)(6) Palmer Kane LLC’s copyright infringement claims against Scholastic Corporation over the use of the plaintiff’s photographs. The Court wrote that the plaintiff failed to adequately allege two of the four necessary elements for a copyright infringement claim. First, the “complaint does not properly specify which photographs are at issue in the case” because although the complaint attaches an exhibit with 146 registered photographs, it further alleges that that is “not an exhaustive list of the photographs infringed by Scholastic.” Judge Griesa ruled these allegations insufficient because “Scholastic cannot know all of the works that Palmer Kane claims it infringed.”

Second, the Court found that “the complaint also fails to properly allege the infringing acts committed by Scholastic.” Specifically, although the complaint alleges that “books published by Scholastic . . . contain unauthorized photographs,” “these acts are not sufficient because Palmer Kane does not specify the timeframe during which Scholastic committed the infringement.”

Dismissal of False Designation of Origin Claim Denied

In an August 19, 2013 ruling, Judge Thomas P. Griesa denied defendants' motion to dismiss plaintiff Pop Bar, LLC's complaint, including a Lanham Act unfair competition claim.  Pop Bar makes and sells customizable Italian gelato, sorbet and frozen yogurt on a stick under its Popbar and Popbar system marks, and licenses others to do the same.  The defendant, Hip Pops, LLC, approached Pop Bar about becoming a franchisee, and signed a confidentiality agreement before receiving Pop Bar's "recipes and formulas, specially designed equipment, systems and methods of making customized Popbar products, and ideas for Popbar food trucks."  Negotiations then broke down under circumstances that Pop Bar contended show that Hip Pop never intended to enter into a deal with Pop Bar, and merely acted as if it would do so to gain access to Pop Bar's confidential information.  Hip Pop subsequently introduced competing products under the HipPOP mark.  Pop Bar sued, asserting a variety of claims, including false designation of origin under the Lanham Act.