Opinion
04 Civ. 3136 (HB).
January 3, 2005
OPINION ORDER
Defendant GreenLight (Switzerland) S.A. ("GreenLight (Switzerland)") moves pursuant to Federal Rule of Civil Procedure ("Fed.R.Civ.P.") 12(b)(1)-(3), (6) to dismiss federal and state trademark infringement, unfair competition, and deceptive acts and practices claims brought by plaintiff Greenlight Capital, Inc., ("Greenlight Capital"), which, in essence, allege that GreenLight (Switzerland) uses a confusingly similar name in the same financial industry in which the parties both work as investment advisors. For the reasons set forth below, Greenlight (Switzerland)'s motion is granted in part and denied in part.
I. BACKGROUND
The facts alleged in the complaint, which are assumed to be true for the purposes of this motion, are, in pertinent part, as follows. Greenlight Capital is a corporation organized under the laws of Delaware with its principal place of business in New York, New York. Greenlight Capital owns the federally registered trademark "Greenlight Capital Inc. and Design." Greenlight Capital is one of a group of entities that provide investment management services, all of which use the name "Greenlight" in some fashion. Since at least 1996, Greenlight Capital and its related entities have traded in corporate debt and equity and managed investment funds on behalf of private investors.
By way of example, Greenlight Capital notes that it manages another entity, Greenlight Capital, L.P.
GreenLight (Switzerland) is a corporation organized under the laws of Switzerland with its principal place of business in Geneva, Switzerland. GreenLight (Switzerland) trades corporate securities in its capacity as investment advisor of its clients. Greenlight Capital avers that GreenLight (Switzerland)'s use of the name "green light" in its capacity as investment advisor "has caused brokers, investors and others with whom Greenlight Capital does business to be confused between Greenlight Capital and Greenlight Switzerland and is likely to confuse people who do business with Greenlight Switzerland into thinking that it has a relationship with Greenlight Capital." Compl. ¶¶ 3, 12. In its pleading, Greenlight Capital asserts five causes of action, including trademark infringement, 15 U.S.C. §§ 1114, 1125(a) and N.Y. Gen. Bus. Law § 360-k, common law unfair competition, and deceptive acts and practices, N.Y. Gen. Bus. Law §§ 349- 350, and seeks monetary and injunctive relief.
In its motion papers, GreenLight (Switzerland) contends that it holds no investments of its own and merely seeks out and assesses opportunities for its sole client, Crescent International, an institutional investor organized under the laws of Bermuda. In this posture, we must, however, accept all allegations in the Complaint as true.
Although Greenlight Capital spells the name of GreenLight (Switzerland) with a lower case "l" and no parenthesis, I have spelled the companies' names in this Opinion and Order as each party has identified itself in its own pleadings and motion papers.
II. DISCUSSION
GreenLight (Switzerland) moves to dismiss on the grounds that: (1) this Court lacks personal jurisdiction over GreenLight (Switzerland); (2) forum non conveniens; (3) Greenlight Capital lacks standing to bring its deceptive acts and practices claim because it is a competitor and not a consumer; (4) Greenlight Capital's state law claims are barred by the applicable statutes of limitations and laches; and (5) the Complaint fails to state a Lanham Act claim because the term "green light" is a patently generic term in the financial industry. I address each of GreenLight (Switzerland)'s argumentsseriatim.
A. Personal Jurisdiction
GreenLight (Switzerland) argues that the Court lacks personal jurisdiction over it as it does not have sufficient contacts with New York. On a motion to dismiss for lack of personal jurisdiction pursuant to Fed.R.Civ.P. 12(b)(2), the plaintiff bears the burden to demonstrate that the Court has jurisdiction.World Film Servs. v. RAI Radiotelevisione Italiana S.P.A., No. 97 Civ. 8627, 1999 U.S. Dist. LEXIS 985, at *7 (S.D.N.Y. Jan. 28, 1999). To resolve the jurisdictional question, the Court may rely solely upon the motion papers, allow discovery, or conduct an evidentiary hearing. Marine Midland Bank, N.A. v. Miller, 664 F.2d 899, 904 (2d Cir. 1981). Should the Court, as here, "choose not to conduct a full-blown evidentiary hearing on the motion, the plaintiff need make only a prima facie showing of jurisdiction through its own affidavits and supporting materials." Id. But because the question of personal jurisdiction is "inherently a matter requiring the resolution of factual issues outside of the pleadings," the Court, in deciding the motion, may consider all relevant documentation submitted by the parties. St. Paul Fire Marine Ins. Co. v. Eliahu Ins. Co., Ltd., No. 96 Civ. 7269, 1997 WL 357989, at *1 (S.D.N.Y. June 26, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998). While the Court "will not draw 'argumentative inferences' in the plaintiff's favor," it will "construe jurisdictional allegations liberally and take as true uncontroverted factual allegations." Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994).
"Eventually, of course, the plaintiff must establish jurisdiction by a preponderance of the evidence, either at a pretrial evidentiary hearing or at trial. But until such a hearing is held, a prima facie showing suffices, notwithstanding any controverting presentation by the moving party, to defeat the motion." Marine Midland Bank, N.A., 664 F.2d at 904.
"In a federal question case where a defendant resides outside the forum state, a federal court applies the forum state's personal jurisdiction rules 'if the federal statute does not specifically provide for national service of process.'" PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir. 1997) (quoting Mareno v. Rowe, 910 F.2d 1043, 1046 (2d Cir. 1990)). As the Lanham Act does not provide for nationwide service of process, this Court must look to New York's jurisdictional statutes to determine personal jurisdiction. Sunward Elec., Inc. v. McDonald, 362 F.3d 17, 22 (2d Cir. 2004). In New York, personal jurisdiction over non-domiciliaries is governed by N.Y.C.P.L.R. § 302, New York's long-arm statute. Triad Sec. Corp. v. Mfrs. Indem. Ins. Co. of Am., No. 93 Civ. 8019, 1994 WL 330395 (S.D.N.Y. July 8, 1994). N.Y.C.P.L.R. § 302(a)(1) provides that a court may exercise limited personal jurisdiction over a non-domiciliary defendant who "transacts any business within the state or contracts anywhere to supply goods or services in the state." A defendant transacts business in New York under N.Y.C.P.L.R. § 302(a)(1) when "the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." Hanson v. Denckla, 357 U.S. 235, 253 (1958); McKee Elec. Co. v. Rauland-Borg Corp., 20 N.Y.2d 377, 382 (1967) (same). "A single transaction might be sufficient to fulfill this requirement so long as the relevant cause of action also arises out of that transaction." Mende v. Milestone Tech. Inc., 269 F. Supp. 2d 246, 251 (S.D.N.Y. 2003); see also Bluestone Capital Partners, L.P. v. MGR Funds Ltd., No. 98 Civ. 3128, 1999 WL 322658, at *4 (S.D.N.Y. May 20, 1999) (describing N.Y.C.P.L.R. § 302 as a "single act" statute). "A claim arises out of a defendant's transaction of business in New York when there exists a substantial nexus between the business transacted and the cause of action sued upon." Agency Rent A Car Sys., Inc. v. Grand Rent A Car Corp., 98 F.3d 25, 31 (2d Cir. 1996) (internal quotation marks omitted).
Here, GreenLight (Switzerland) argues that it is an entirely foreign company that has no contacts with the United States, much less New York. According to GreenLight (Switzerland), it has never maintained a place of business or been licensed to do business in New York. Greenlight Capital, however, avers that GreenLight (Switzerland) has been actively trading U.S. corporate securities as an investment advisor for its clients — investments that are made by buying and selling stocks traded on the stock exchanges located in this District. GreenLight (Switzerland) protests that these allegations are conclusory and without the sufficient factual support to carry its burden. Nonetheless, with its opposition papers, Greenlight Capital has supplied documentation of this trading activity. Specifically, Greenlight Capital has provided an excerpt from 2001 Annual Report of Dar Al-Maal Al-Islami Trust ("DAMAIT"), also located in Geneva, Switzerland, in which GreenLight (Switzerland) and Crescent International, Ltd. ("Crescent Int'l") are among the entities listed as wholly owned subsidiaries. Further, Greenlight Capital has supplied publicly available Securities and Exchange Commission ("SEC") filings that document the purchase of a large volume of shares by DAMAIT entities, for which GreenLight (Switzerland) has voting rights and is listed as a beneficial owner.
Rule 13d-1, 17 C.F.R. § 240.13d-1, promulgated under the Securities Exchange Act of 1934, 15 U.S.C. § 78a et seq., provides, inter alia, that any person who acquires beneficial ownership of more than 5% in a class of equity security shall file a Schedule 13G with the SEC within ten days of such acquisition. "Schedule 13G is designed to provide information about significant ownership interests in publicly-owned issuers. . . ." Peter G. Samuels, Schedules 13D and 13G: Reporting Beneficial Ownership of Registered Voting Securities, 1392 PLI/Corp 493, 496 (Oct. 2003). Greenlight Capital has supplied a list of Crescent Int'l's Schedule 13G and 13G/A filings from 1998 to 2004, which it obtained from the SEC's website, as well as a sample of these schedules. Several of these filing indicate that GreenLight (Switzerland), as Crescent Int'l's principal investment manager, may be deemed a beneficial owner with the power to vote or direct the vote of large quantities of stock. One such example is the 9.9% of American Access Technologies, Inc. common stock (457,056 shares), which were purchased on May 2, 2000. As Greenlight Capital points out, to effectuate the purchase of stocks traded on the NASDAQ, GreenLight (Switzerland) must necessarily "communicate with companies, vendors and traders in the U.S. using its name Green[l]ight (Switzerland). . . ." Pl. Mem. in Opp. at 3 (alteration in original).
Schedule 13G is the short-form of Schedule 13D.
"Institutional investors who acquire equity securities in the normal course of business may file, instead of a Schedule 13D, a Schedule 13G within 45 days after the calendar year-end. Such investors include . . . investment advisors. . . ." David M. Brodsky and Daniel J. Kramer, Federal Securities Litigation: Commentary and Forms, at 8-2 n. 10 (1997).
These uncontroverted allegations and evidence present in Greenlight Capital's complaint and supporting materials constitute a prima facie showing of personal jurisdiction, as "[i]t is well settled that the quality of a non-domiciliary's contacts with New York are sufficient to confer jurisdiction when it maintains an ongoing investment account in New York and conducts securities transactions through such an account."Bluestone Capital Partners, L.P., 1999 WL 322658, at *3 (basing jurisdiction on defendant's maintenance of accounts with various New York securities brokers for more than two months during which time it conducted 22 transactions, which were delivered and paid for in New York); see also Credit Lyonnais Sec. (USA), Inc. v. Alcantara, 183 F.3d 151, 154 (2d Cir. 1999) (ruling that personal jurisdiction was proper based on defendants' active account with plaintiff security broker, from which a series of transactions were made that formed the basis of the lawsuit);Picard v. Elbaum, 707 F. Supp. 144, 146 (S.D.N.Y. 1989) (finding personal jurisdiction where the defendants maintained an ongoing investment account with a New York investment service and made at least three transactions during a two-year period). Similarly, courts have held that a single purchase of mutual funds in New York constitutes "transaction of business,"Correspondent Servs. Corp. v. JVW Invs. Ltd., No. 99 Civ. 8934, 2000 WL 1718785, at *3 (S.D.N.Y. Nov. 14, 2000), as does trading on the New York Merchantile Exchange, In re Sumitomo Copper Litig., 120 F. Supp. 2d 328, 338 (S.D.N.Y. 2000)). It can certainly be said that GreenLight (Switzerland) transacts business in New York where, during a six-year period, as a part of its regular business as an investment advisor for Crescent Int'l, it has made repeated purchases of stock traded on the NASDAQ in sufficient volume to trigger the reporting requirements of Rule 13d-1. These transactions suffice to confer jurisdiction in this case where all of Greenlight Capital's claims stem directly from this activity. Credit Lyonnais Sec. (USA), Inc., 183 F.3d at 154.
In addition to N.Y.C.P.L.R. § 302(a)(1), jurisdiction must also satisfy the due process standard set forth in Int'l Shoe v. Washington, 326 U.S. 310 (1945). "Ordinarily, however, if jurisdiction is proper under the CPLR, due process will be satisfied because CPLR § 302 does not reach as far as the constitution permits." Topps Co., Inc. v. Gerrit J. Verburg Co., 961 F. Supp. 88, 90 (S.D.N.Y. 1997). The requirement that the defendant undertake "purposeful activity" to be subject to jurisdiction in a New York forum embodied in New York's long-arm statute was created to satisfy due process requirements.Abbacor, Inc. v. Miller, No. 01 Civ. 0803, 2001 U.S. Dist. LEXIS 13385, at *13 (S.D.N.Y. Aug. 31, 2001). As noted above, GreenLight (Switzerland)'s investment activities enabled it to avail itself of New York stock exchanges in the course of its business. These activities constitute "minimum contacts . . . such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice," Int'l Shoe, 326 U.S. at 316 (internal quotation marks omitted), and show that GreenLight (Switzerland) "purposefully availed itself of the privilege of conducting business in New York and therefore it could reasonably anticipate being haled [sic] into court in this forum," QRS 10-12 (Texas), Inc. v. Calcomp Tech., Inc., No. 99 Civ. 1612, 1999 U.S. Dist. LEXIS 10261, at *6 (S.D.N.Y. July 8, 1999).
B. Forum Non Conveniens
GreenLight (Switzerland) argues that the doctrine of forum non conveniens compels dismissal, as Greenlight Capital has commenced a similar lawsuit in Switzerland. "The decision to grant or deny a motion to dismiss under the doctrine of forum non conveniens lies wholly within the broad discretion of the district court." Scottish Air Int'l, Inc. v. British Caledonian Group, PLC, 81 F.3d 1224, 1232 (2d Cir. 1996). To evaluate aforum non conveniens motion, the Court must first determine how much deference to give a plaintiff's choice of forum. Gross v. British Broad. Corp., 386 F.3d 224, 230 (2d Cir. 2004). "[A] plaintiff's choice of forum should rarely be disturbed." Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 (1981). This is particularly so when the plaintiff is a U.S. citizen, suing in their home forum, Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88, 102-3 (2d Cir. 2000), and the plaintiff's choice of forum was based on convenience, not tactical advantage, Iragorri v. United Techs Corp., 274 F.3d 65, 73 (2d Cir. 2001). As Greenlight Capital is a U.S. corporation, with its principal place of business located in this District, there is an initial presumption that this forum is appropriate.
To determine whether to depart from this presumption, the Second Circuit has instructed that "the greater the plaintiff's or the lawsuit's bona fide connection to the United States and to the forum of choice and the more it appears that considerations of convenience favor the conduct of the lawsuit in the United States, the more difficult it will be for the defendant to gain dismissal for forum non conveniens." Gross, 386 F.3d at 230. Here, this analysis weighs in favor of Greenlight Capital, as Greenlight resides in this District and its claims are based on trades that occurred on markets that exist in this District. Moreover, much of the financial community that Greenlight Capital claims was confused by the parties' names is located and does business here and thus is available to testify. Finally, the deference afforded to a plaintiff's choice of forum grows stronger where that plaintiff is a U.S. citizen whose claims arise under U.S. law. VictoriaTea.com., Inc. v. Cott Beverages, Canada, 239 F. Supp. 2d 377, 381 (S.D.N.Y. 2003). Consequently, deference must accrue to Greenlight Capital's choice of forum.
After the Court decides how much deference to give the plaintiff's choice of forum, it must then determine: (1) if there is an adequate alternative forum; and if so, (2) whether the public and private interests favor the plantiff's or defendant's choice of forum. Gross, 386 F.3d at 230. "The defendant seeking dismissal bears the burden as to both questions." Aguinda v. Texaco, Inc., 303 F.3d 470, 476 (2d Cir. 2002). We need not reach the second inquiry because Switzerland is not an adequate alternative forum.
An adequate alternative forum exists if: "(1) the defendants are amenable to service of process there, and (2) the forum permits litigation of the subject matter of the dispute.VictoriaTea.com, Inc., 239 F. Supp. 2d at 383. The first criterion is evidently satisfied given that Greenlight Capital has already commenced similar trademark infringement litigation in Switzerland regarding its Swiss trademark rights. However, there is no evidence that Greenlight Capital will be able to fully litigate its U.S. trademark rights in Switzerland because "[t]rademark rights are largely territorial, as they 'exist in each country solely according to that country's statutory scheme.'" Jose Armando Bermudez Co. v. Bermudez Int'l, No. 99 Civ. 9346, 2000 U.S. Dist. Lexis 12354, at *11 (S.D.N.Y. Aug. 29, 2000) (quoting Fin. Matters, Inc. v. PepsiCo, Inc., 806 F. Supp. 480, 484 (S.D.N.Y. 1992)); see also Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 599 (5th Cir. 1985). In recognition of this, "[t]he courts of this district have declined to dismiss cases pursuant to forum non conveniens where plaintiff asserts U.S. trademark or copyright claims." Id. at *12. While GreenLight (Switzerland) has generally alleged that Swiss courts can adjudicate trademark disputes, it has not addressed the critical issue of whether Swiss courts can or should enforce U.S. trademark rights. It is true that Greenlight Capital has commenced suit in Switzerland, but that suit is not duplicative of this litigation, as GreenLight (Switzerland) contends, simply because the substantive rights at issue — U.S. and Swiss trademarks — differ, as does the governing law. Indeed, as the Second Circuit has noted
when trade-mark rights within the United States are being litigated in an American court, the decisions of foreign courts concerning the respective trade-mark rights of the parties are irrelevant and inadmissible. Similarly, the rights and liabilities of United States citizens who compete with foreign nationals in their home countries are ordinarily to be determined by the appropriate foreign law.
Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir. 1956).
This, the Second Circuit clarified some years later, is to say that "a claimant's rights (or lack of rights) to a trademark in the United States cannot be established by the fact that the claimant was found by a foreign court to have (or not to have) rights over the same mark in a foreign country." Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 272 (2d Cir. 1999). Thus, it is clear that the pending Swiss litigation will not decisively resolve Greenlight Capital's U.S. trademark claims.
Nor is it evident, as GreenLight (Switzerland) asserts, that Swiss courts have the expertise to interpret and apply U.S. trademark law. See Motown Record Co., L.P. v. iMesh.com, Inc., No. 03 Civ. 7339, 2004 U.S. Dist. LEXIS 3972, at *20 (S.D.N.Y. Mar. 12, 2004) (holding that where the defendants failed to carry their burden where their submissions were silent on the issue of whether Israeli courts could enforce U.S. copyrights). As the record does not reflect that Swiss courts permit the consideration of U.S. trademark claims, Switzerland cannot be considered an adequate alternative forum. Jose Armando Bermudez Co., 2000 U.S. Dist. Lexis 12354, at *13, 16 (ruling that the Dominican Republic was not an adequate alternative forum when the record did not show that Dominican courts could consider U.S. trademark infringement claims).
Moreover, should the Court reach the public-private interests analysis, the public interest weighs heavily in favor of the adjudication of U.S. intellectual property disputes in domestic forum. E.g., id. at *14 ("The public interest in having local controversies adjudicated locally is particularly important here. The U.S. trademark laws are primarily consumer protection laws, designed to shield domestic consumers from fraud and deception in the marketing and sales of products."). This Court has an interest in protecting those, like Greenlight Capital, who create intellectual property in this jurisdiction. World Film Servs. v. RAI Radiotelevisione Italiana S.p.A., No. 97 Civ. 8627, 1999 U.S. Dist. LEXIS 985, at *26 (S.D.N.Y. Jan. 28, 1999) ("It is well-settled that the United States has an interest in protecting the intellectual property rights of its citizens."); see also Deston Songs LLC v. Wingspan Records, No. 00 Civ. 8854, 2001 U.S. Dist. LEXIS 9763, at *14 (S.D.N.Y. July 16, 2001) (noting that "this jurisdiction has an interest in the convenient adjudication of the rights of resident copyright holders"). For all of these reasons, Greenlight Capital's complaint will not be dismissed on forum non conveniens grounds.
C. Standing
GreenLight (Switzerland) argues that Greenlight Capital's deceptive acts and practices claim under N.Y. Gen. Bus. Law §§ 349, 350 must be dismissed, as claims under the statute may only be brought by consumers, not by competitors. Apparently conceding this prong of the motion, Greenlight Capital makes no argument to the contrary. Indeed, harm to the consumers is an essential element of this tort. Oswego Laborers' Local 214 Pension Fund v. Marine Midland Bank, N.A., 85 N.Y.2d 20, 24 (1995) ("As shown by its language and background, section 349 is directed at wrongs against the consuming public."). A prima facie case under N.Y. Gen. Bus. Law § 349 requires that "(1) the defendant's deceptive acts were directed at consumers, (2) the acts are misleading in a material way, and (3) the plaintiff has been injured as a result." Maurizio v. Goldsmith, 230 F.3d 518, 521 (2d Cir. 2000). Private disputes do not fall within the ambit of the statute. Oswego Laborers' Local 214 Pension Fund, 85 N.Y.2d at 25. Instead, "'the gravamen of the complaint must be consumer injury or harm to the public interest.'" Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264 (2d Cir. 1995) (quotingAzby Brokerage, Inc. v. Allstate Ins. Co., 681 F. Supp. 1084, 1089 n. 6 (S.D.N.Y. 1988)). Competitors may bring a deceptive acts and practices claim only when it is premised on a harm to the public at large, id., which is generally based on "potential danger to the public health or safety." Gucci Am., Inc. v. Duty Free Apparel, Ltd., 277 F. Supp. 2d 269, 273 (S.D.N.Y. 2003). Where no such showing is made, "[c]ourts in this District routinely reject claims brought under § 349." Id. Plainly, Greenlight Capital has not adequately pled its deceptive acts and practices claim, as the only public harm it has alleged is confusion or likelihood of confusion on the part of investors, brokers, and others in the financial services industry as a result of GreenLight (Switzerland)'s use of the name "green light." In reality, this is but an element of Greenlight Capital's trademark infringement and unfair competition claims, not a separate harm unto itself. Accordingly, Count V must be dismissed.
The public harm analysis of a N.Y. Gen. Bus. Law § 349 holds true for § 350 claims, which are based on a specific type of deception, to wit, false advertising. In any event, Greenlight Capital has not alleged any facts to support a false advertising claim.
D. Timeliness
1. Statute of Limitations
GreenLight (Switzerland) argues that Greenlight Capital's state law claims are time-barred under the applicable statute of limitations and the doctrine of laches because it has been using the name "green light" since as early as 1998 and this suit was not initiated until 2004. The parties agree that New York common law unfair competition and N.Y. Gen. Bus. Law §§ 349, 350, and 360 claims are subject to a three-year statute of limitations set forth in N.Y.C.P.L.R. § 214(2). They disagree, however, as to whether these claims are continuing torts, for which the statute of limitations has not yet run. Greenlight Capital's N.Y. Gen. Bus. Law §§ 349, 350 claim fails for the reasons stated above and it is settled that trademark infringement is a continuing tort,e.g., De Medici v. Lorenzo De Medici, Inc., 475 N.Y.S.2d 391, 393 (1st Dep't 1984); Barry Corp. v. Mushroom Makers, 436 N.Y.S.2d 927, 930 (Sup.Ct.), aff'd, 444 N.Y.S.2d 922 (1st Dep't 1981). Therefore, I need only address this argument with respect to the unfair competition claim.
The statute of limitations applicable to an unfair competition claim is not nearly as settled as the parties suggest. In reality, "the period for claims of unfair competition has been treated disparately in New York." Ediciones Quiroga, S.L. v. Fall River Music, Inc., No. 93 Civ. 3914, 1995 WL 103842, at *8 (S.D.N.Y. March 7, 1995), reconsideration granted in part, 1995 WL 366287 (S.D.N.Y. June 20, 1995). "Courts have held that unfair competition claims are subject to the six-year period for fraud claims, see Charles Atlas, Ltd. v. DC Comics, Inc., 112 F. Supp. 2d 330, 334 (S.D.N.Y. 2000) (applying N.Y.C.P.L.R. § 213(1)), the six-year period of N.Y.C.P.L.R. § 213(2) for breach of contract claims, see Katz v. Bach Realty, Inc., 595 N.Y.S.2d 455, 456 (1st Dep't 1993), the three-year statute of limitations of N.Y.C.P.L.R. § 214(2) for actions to recover damages for injury to property, see Bausch Lomb Inc. v. Alcon Lab[s.], Inc., 64 F. Supp. 2d 233, 245 (W.D.N.Y. 1999), and the three-year statute of limitations of N.Y. C.P.L.R. § 214(4) for actions to recover upon a liability imposed by statute, see Byron v. Chevrolet Motor Div. of Gen. Motors Corp., No. 93 Civ. 1116, 1995 WL 465130, at *3 (S.D.N.Y. Aug. 7, 1995); De Medici , 475 N.Y.S.2d [at] 392 ." Mopex, Inc. v. Am. Stock Exch., LLC, No. 02 Civ. 1656, 2002 WL 342522, at *11 (S.D.N.Y. March 5, 2002), amended by, 2002 WL 523417 (S.D.N.Y. April 5, 2002).
New York's high court has ruled that an unfair competition claim premised on the misappropriation and unauthorized use of a master phonographic recording was subject to a three-year statute of limitations under N.Y.C.P.L.R. § 214. Sporn v. MCA Records, Inc., 58 N.Y.2d 482, 488 (1983). This, however, does not end the inquiry. Instead, as the above-cited cases make clear, courts typically analyze the nature of unfair competition claim to determine which statutory period applies. This is a necessary step simply because of the nature of the unfair competition tort. As the Second Circuit explained,
New York courts have noted the incalculable variety of illegal practices falling within the unfair competition rubric, calling it a broad and flexible doctrine that depends more upon the facts set forth . . . than in most causes of action. It has been broadly described as encompassing any form of commercial immorality or simply as endeavoring to reap where (one) has not sown; it is taking the skill, expenditures and labors of a competitor and misappropriati(ng) for the commercial advantage of one person . . . a benefit or property right belonging to another. The tort is adaptable and capacious.
Roy Export Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir. 1982) (internal quotation marks and citations omitted) (alteration in original).
These observations are borne out by a sampling of unfair competition cases.
Thus, Sporn, a case in which the New York Court of Appeals based its analysis on factual allegations it found to constitute conversion, does not control. See 58 N.Y.2d at 489. There is no similar singular act of misappropriation in this case as was at issue in Sporn. Instead, Greenlight Capital's unfair competition claim is based on the same on-going activity that underlies its trademark infringement claims: that since 1998 GreenLight (Switzerland) has used an allegedly confusingly similar name in the same industry. Lanham Act claims, including those for trademark infringement and false designation or origin or "reverse palming off" such as those alleged in this action, are subject to N.Y.C.P.L.R. § 213(8)'s six-year statute of limitations. Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 191-192 (2d Cir. 1996). Given that "the standards for Section 43(a) claims of the Lanham Act and unfair competition claims under New York Law are almost indistinguishable," Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 363 (S.D.N.Y. 1998), it follows that Greenlight Capital's unfair competition claim is also subject to a six-year statute of limitations and is therefore timely. Mario Valente Collezioni, Ltd. v. AAK Ltd., 280 F. Supp. 2d 244, 258 (S.D.N.Y. 2003); Charles Atlas, Ltd., 112 F. Supp. 2d at 334.
I note parenthetically that, even if a different statute of limitations were to apply, under this same reasoning Greenlight Capital's unfair competition claim would be a "continuing trespass" pursuant to the Sporn trespass-conversion analysis and thus be timely. See 58 N.Y.2d at 487-89.
2. Laches
Whether I need to reach this defense at all is at best problematical. Nonetheless, suffice it to say that the doctrine of laches is an equitable defense used instead of a statutory time bar. Conopco, Inc., 95 F.3d at 191. Generally, it is inappropriate to raise this defense in a motion to dismiss, unless the plaintiff "can prove no set of facts to avoid the insuperable bar." Lennon v. Seaman, 63 F. Supp. 2d 428, 439 (S.D.N.Y. 1999). Where the suit is timely, the defendant has the burden to demonstrate that the application of laches is appropriate. Conopco, Inc., 95 F.3d at 191. To succeed in a laches defense, the defendant must show that it has been "prejudiced by the plaintiff's unreasonable delay in bringing the action," meaning that he "has changed his position in a way that would not have occurred if the plaintiff had not delayed." Id. at 192. Here, there is no such showing and the motion with respect to laches is denied.
E. Failure to State a Claim
Finally, GreenLight (Switzerland) argues that Greenlight Capital has failed to state a claim under the Lanham Act as "green light" is a patently generic term. "Whether a term is descriptive or generic is a question of fact." Textile Deliveries v. Stagno, No. 90 Civ. 2020, 1990 U.S. Dist. LEXIS 13309, at *14 (S.D.N.Y. Oct. 9, 1990), aff'd, 52 F.3d 46 (2d Cir. 1995). The burden is on Greenlight Capital to prove that their mark is not generic. Id. As Greenlight Capital has not had the opportunity to submit proof showing the mark is descriptive, the Court only needs to determine if they have alleged that "green light" is a descriptive term. Id. at *14-15. Greenlight Capital meets this criteria, as it has alleged that it holds a valid U.S. trademark for the name "green light."See EMI Catalogue P'ship v. Hill, Holiday, Connors, Cosmopulos Inc., 228 F.3d 56, 62 (2d Cir. 2000) ("A plaintiff claiming unfair competition under [Lanham Act] § 43(a) must show that it owns a valid trademark eligible for protection."). The Court declines to convert this motion to dismiss into a motion for summary judgment and thus will not consider the documents GreenLight (Switzerland) has appended to its motion papers purportedly to document the generic nature of the term "green light."
III. CONCLUSION
For the foregoing reasons, GreenLight (Switzerland)'s motion to dismiss is denied but for Count V of the Complaint in which Greenlight Capital alleges a deceptive acts and practices claim under N.Y. Gen. Bus. Law §§ 349,350. The Clerk of the Court is instructed to close this motion.
IT IS SO ORDERED.