Fujifilm North America Corporation v. PLR IP Holdings, LLC et al

MEMORANDUM OF LAW in Opposition re: 35 MOTION to Dismiss First Amended Counterclaim for Counterfeiting

S.D.N.Y.June 22, 2018

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK FUJIFILM NORTH AMERICA CORPORATION, Plaintiff, v. PLR IP HOLDINGS, LLC and PLR BRAND SERVICES, LLC, Defendants Case No.: 1:17-cv-08796 (NRB) PLR IP HOLDINGS, LLC, PLR BRAND SERVICES, LLC, IMPOSSIBLE B.V., and IMPOSSIBLE AMERICA CORP., d/b/a POLAROID ORIGINALS, Counterclaim Plaintiffs, v. FUJIFILM NORTH AMERICA CORPORATION and FUJIFILM CORPORATION, Counterclaim Defendants COUNTERCLAIM PLAINTIFFS’ MEMORANDUM OF LAW IN OPPOSITION TO COUNTERCLAIM DEFENDANTS’ MOTION TO DISMISS FIRST AMENDED COUNTERCLAIM FOR COUNTERFEITING Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 1 of 25 ii TABLE OF CONTENTS PRELIMINARY STATEMENT .....................................................................................................1 STATEMENT OF RELEVANT FACTS ........................................................................................4 ARGUMENT ...................................................................................................................................6 I. STANDARD OF REVIEW .....................................................................................6 II. POLAROID HAS ADEQUATELY ALLEGED ITS FIRST AMENDED COUNTERCLAIM FOR COUNTERFEITING UNDER SECTION 32 OF THE LANHAM ACT, 15 U.S.C. § 1114 ..........................................................8 A. POLAROID SUFFICIENTLY PLEADED OWNERSHIP OF REGISTRATIONS FOR THE CLASSIC BORDER LOGO MARK........................................................................................................10 B. POLAROID HAS SUFFICIENTLY PLED ALLEGATIONS OF FUJIFILM’S USE OF A COUNTERFEIT MARK...................................13 CONCLUSION ..............................................................................................................................19 Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 2 of 25 iii TABLE OF AUTHORITIES Cases Adams v. Grand Slam Club/Ovis, 2013 U.S. Dist. LEXIS 51052 (D. Col. Apr. 9, 2013) .............................................................. 17 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................................... passim Banff, Ltd. v. Federated Dep't Stores, Inc., 638 F. Supp. 652 (S.D.N.Y. 1986), aff’d in part, rev’d in part, 841 F.2d 486 (2d Cir. 1988) .......................................................... 16 Barnes Grp. Inc. v. Connell Ltd. P’ship, 793 F. Supp. 1277 (D. Del. 1992) ............................................................................................. 13 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ........................................................................................................... passim Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781(CM), 2009 WL 1675080 (S.D.N.Y. June 10, 2009) .................................... 10 Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474 (2d Cir. 1996) ....................................................................................................... 15 Cartier Int’l B.V. v. Ben-Menachem, No. 06 Civ. 3917, 2008 WL 64005 (S.D.N.Y. Jan. 3, 2008) ........................................ 10, 11, 19 Chloe SAS v. Sawabeh Info. Servs. Co., No. CV 11-04147 GAF (MANx), 2014 WL 4402218 (C.D. Cal. Sept. 5, 2014) ..................... 13 Coach, Inc. v. Chung Mei Wholesale, Inc., No. 15-22829-CIV- ALTONAGA/O’Sullivan, 2016 WL 7470001 (S.D. Fla. June 17, 2016) ................................................................................................................................... 18 Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp., Inc., 486 F. Supp. 2d 286 (S.D.N.Y. 2007) ...................................................................................... 16 Cullman Ventures Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96 (S.D.N.Y. 1989) ............................................................................................. 16 Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171 (S.D.N.Y. Jan. 8, 2016) ...................................... 11 Excelled Sheepskin & Leather Coat Corp. v. Or. Brewing Co., No. 12 Civ. 1416(GBD)(RLE), 2015 WL 4468083 (S.D.N.Y. July 8, 2015) .......................... 14 Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 3 of 25 iv Fendi Adele S.R.L. v. Burlington Coat Factory Warehouse Corp., 689 F. Supp. 2d 585 (S.D.N.Y. 2010) ...................................................................................... 11 Fischer v. Forrest, No. 14 Civ. 1304 (PAE) (AJP), 2017 WL 128705 (S.D.N.Y. Jan. 13, 2017) .......................... 13 GMA Accessories, Inc. v. BOP, LLC, 765 F. Supp. 2d 457 (S.D.N.Y. 2011) ...................................................................................... 16 Goldman v. Belden, 754 F.2d 1059 (2d Cir. 1985) ............................................................................................... 7, 18 Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207 (S.D.N.Y. 2012) ...................................................................................... 14 Guinness United Distillers & Vintners B.V. v. Anheuser-Bush, Inc., 2 CIV. 0861(LMM), 2002 WL 1543817 (S.D.N.Y. July 12, 2002) ..................................... 3, 17 Johnson & Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374 (E.D.N.Y. 2008) ...................................................................................... 11 Kelly-Brown v. Winfrey, No. 11 Civ. 7875(PAC), 2012 WL 701262 (S.D.N.Y. Mar. 6, 2012), aff’d in part and vacated in part, 717 F.3d 295 (2d Cir. 2013) ................................................ 17 LaBounty v. Adler, 933 F.2d 121 (2d Cir. 1991) ....................................................................................................... 7 Landesbank Baden-Württemberg v. RBS Holdings USA Inc., 14 F. Supp. 3d 488 (S.D.N.Y. 2014) .......................................................................................... 7 Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir. 1999) ..................................................................................................... 11 Louis Vuitton Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485 (S.D.N.Y. 2015) .................................................................................... 2, 14 Match.Com, LLC. v. Fiesta Catering Int'l, Inc., No. 1:12-cv-363 (AJT/IDD), 2013 WL 428056 (E.D. Va. Jan. 31, 2013) ............................... 18 Milo & Gabby, LLC v. Amazon.com, Inc., 12 F. Supp. 3d 1341 (W.D. Wash 2014) ................................................................................... 10 Montres Rolex, S.A. v. Snyder, 718 F.2d 524 (2d Cir. 1983) ............................................................................................... 12, 13 Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145 (4th Cir. 1987) ...................................................................................... 2, 3, 14, 16 Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 4 of 25 v River Light V, LP v. Lin & J Int’l, Inc., No. 13cv3669 (DLC), 2014 WL 6850966 (S.D.N.Y. Dec. 4, 2014) .................................... 2, 14 Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241 (S.D.N.Y. 2015) .......................................................................... 1, 3, 9, 15 United States v. Chong Lam, 677 F.3d 190 (4th Cir. 2012) .................................................................................................... 18 VMG Enters., Inc. v. F. Quesada & Franco, Inc., 788 F. Supp. 648 (D.P.R. 1992) ................................................................................................ 16 Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471 (S.D.N.Y. 2008) ................................................................................ 15, 18 Statutes 15 U.S.C. § 1057(b) ...................................................................................................................... 11 15 U.S.C. § 1114 ............................................................................................................................. 8 15 U.S.C. § 1114(1)(a) .................................................................................................................... 8 15 U.S.C. § 1116(d)(1)(B) .............................................................................................................. 6 15 U.S.C. § 1117 ........................................................................................................................... 10 15 U.S.C. § 1127 ....................................................................................................................... 8, 13 TMEP § 1202.02(c)(ii) .................................................................................................................. 12 TMEP § 807.14(e)(i) ..................................................................................................................... 12 Rules & Regulations Fed. R. Civ. P. 12(b)(6)................................................................................................................... 7 Fed. R. Civ. P. 15(a)(2) ................................................................................................................. 19 Fed. R. Civ. P. 8(a)(2) ..................................................................................................................... 6 Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 5 of 25 1 PRELIMINARY STATEMENT Polaroid’s Classic Border Logo is an iconic visual symbol and is recognizable in virtually every household across the country. First Amended Complaint (“FAC”) ¶ 3. In addition to common law trademark rights based on decades of extensive and continuous use of the Classic Border Logo (FAC ¶ 33), this famous mark, as depicted below, is also protected by numerous federal trademark registrations covering a wide variety of photography-related products, including “unexposed camera film.” FAC ¶¶ 3, 35-37, Exs. A-G. In the First Amended Complaint, Polaroid1 has incontrovertibly pleaded the two elements of a valid counterfeiting claim: (1) Polaroid’s ownership of this registered mark; and (2) specific and detailed facts concerning Fujifilm’s2 virtually identical and substantially indistinguishable depiction of that mark, in blatant disregard of Polaroid’s rights, as incorporated into Fujifilm’s Instax Square film and on product packaging. See, e.g., FAC ¶¶ 39-43, 49; see also Dkt. No. 37 at 5 (Fujifilm conceding these are the two elements of counterfeiting); Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241, 255-56 (S.D.N.Y. 2015) (finding counterfeiting despite use of defendant’s marks in close proximity to counterfeit mark). Because the FAC adequately 1 Counterclaim Plaintiffs PLR IP Holdings, LLC (“PLR IP”), PLR Brand Services, LLC, Impossible B.V., and Impossible America Corp. (d/b/a Polaroid Originals) are referred to collectively as “Polaroid.” 2 Fujifilm North America Corporation and Fujifilm Corporation are referred to collectively as “Fujifilm.” Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 6 of 25 2 pleads the necessary elements of a counterfeiting claim, Fujifilm’s motion to dismiss (“Motion”) must be denied. Fujifilm’s arguments challenging the validity or scope of Polaroid’s trademark registrations are legally and factually erroneous. (Indeed, Fujifilm cites absolutely no case law in support). These arguments are entirely improper at the motion-to-dismiss stage, where the question is not whether a party is ultimately likely to prevail after the factual record has been developed; rather, the question is merely whether the elements of the counterclaim have been adequately pleaded such that, if true, they “‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). As Fujifilm itself acknowledges, “the alleged counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Dkt. No. 37 at 11 (quotation omitted). This comparison is not limited to the point-of-purchase context, but is also properly applied in the post-sale context. See, e.g., Louis Vuitton Malletier S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485, 500 (S.D.N.Y. 2015); see also River Light V, LP v. Lin & J Int’l, Inc., No. 13cv3669 (DLC), 2014 WL 6850966, at *16 (S.D.N.Y. Dec. 4, 2014) (granting plaintiff’s motion for summary judgment as to counterfeiting claim upon finding that defendants’ design was substantially indistinguishable from plaintiff’s design, “[e]ven from the perspective of a potential purchaser.”). In the post-sale context, when the Instax Square film is outside of its box and other packaging as depicted below (and in the FAC), it is virtually identical and thus substantially indistinguishable from Polaroid’s registered Classic Border Logo. See FAC ¶¶ 7, 40, 51; see also Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 7 of 25 3 Polaroid Registration No. 5,284,186 Fujifilm’s “Instax Square” Film FAC ¶ 40. At the point-of-sale, the presence of the FUJIFILM or INSTAX marks somewhere on Fujifilm’s boxes does not preclude counterfeiting as a matter of law. See FAC ¶ 49; see also Tiffany & Co., 127 F. Supp. 3d at 255-56; Polo Fashions, Inc., 816 F.2d at 148. It is well understood that consumers focus principally on shapes, not words. Moreover, courts in this District have held that “[g]iven the current popularity of line extensions, the use of a house brand might suggest to consumers a collaboration between two prominent purveyors. . . .” Guinness United Distillers & Vintners B.V. v. Anheuser-Bush, Inc., 2 CIV. 0861(LMM), 2002 WL 1543817, at *3 (S.D.N.Y. July 12, 2002). In short, issues concerning validity or scope of Polaroid’s registrations or whether the use of the FUJIFILM mark avoids a likelihood of confusion simply cannot be resolved at the motion- to-dismiss stage. Because Polaroid’s factual allegations in support of its counterfeiting counterclaim clearly pass muster under the Federal Rule of Civil Procedure, Iqbal, and Twombly, Fujifilm’s Motion should be denied. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 8 of 25 4 STATEMENT OF RELEVANT FACTS Since 1972, Polaroid, together with its predecessors and licensees, has sold a wide variety of products bearing its distinctive and famous “Classic Border Logo,” which consists of a vertically-oriented rectangle surrounding a smaller inner square, with the square positioned in a way that creates the visual impression of thin, typically white, borders along the top and sides and a thicker, typically white, border along the bottom, as depicted below: FAC ¶ 2. For decades, Polaroid extensively and continuously has used the Classic Border Logo on and in connection with camera and film products. FAC ¶ 32. As a result of Polaroid’s advertising and promotion of the Classic Border Logo, the mark enjoys widespread public acceptance and association with Polaroid, and has come to be recognized widely and favorably by the public as an indicator of the origin of Polaroid’s camera and film products. The Classic Border Logo has achieved fame among the general consuming public of the United States. FAC ¶ 34. The U.S. Patent and Trademark Office (“USPTO”) has granted PLR IP numerous federal trademark registrations covering the Classic Border Logo for a wide variety of photography- related products, including “unexposed camera film.” FAC ¶¶ 3, 35-37, Exs. A-G. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 9 of 25 5 Fujifilm was intimately familiar with Polaroid’s famous Classic Border Logo when it began designing, manufacturing, sourcing, importing, distributing, marketing, promoting, offering for sale, or selling its Infringing Products. FAC ¶ 42. In fact, in 2011, Polaroid and Fujifilm entered into an agreement whereby Fujifilm agreed to manufacture and produce Polaroid instant cameras and instant film (the “Agreement”). In the Agreement, Fujifilm agreed, inter alia, “not to make use of Polaroid’s trademarks, brands, names, or trade dress except in connection with Product to be delivered to Polaroid pursuant to this Agreement or upon express written authorization of Polaroid.” The packaging that Fujifilm manufactured, printed, and distributed pursuant to the Agreement expressly acknowledged that the Classic Border Logo is a trademark and owned by PLR IP. FAC ¶ 38. In blatant disregard of Polaroid’s rights, Fujifilm recently began producing and selling instant film and camera products under the name “Instax Square” that bear a substantially indistinguishable imitation of Polaroid’s Classic Border Logo (the “Infringing Products”). Representative examples of the counterfeit uses of the Classic Border Logo in a post-sale and point-of-sale context are depicted below and in the FAC: Fujifilm’s “Instax Square” Film Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 10 of 25 6 FAC ¶¶ 7, 39-40. Fujifilm’s unauthorized use of spurious marks that are substantially indistinguishable and confusingly similar imitations of the Classic Border Logo in connection with its Instax Square products is deceptively suggesting an erroneous origin. FAC ¶¶ 42, 53. By selling products similar to, and directly competing with, products sold by Polaroid (FAC ¶ 45), and bearing spurious marks identical to or substantially indistinguishable from Polaroid’s Classic Border Logo, Fujifilm is using a counterfeit mark as defined in Section 34(d)(1)(B) of the Lanham Act, 15 U.S.C. § 1116(d)(1)(B). FAC ¶¶ 52-54. ARGUMENT I. STANDARD OF REVIEW Contrary to Fujifilm’s suggestions otherwise (Dkt. No. 37 at 5), a party is not obligated to “prove” its entire case in the pleadings. Federal Rule of Civil Procedure 8(a)(2) requires a pleading party to set forth “only ‘a short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.’” Twombly, 550 U.S. at 555. While Polaroid must allege more than “labels and conclusions” in its pleading, id., its claim to relief need only be supported by sufficient factual allegations to be “plausible.” Id. at 570. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 11 of 25 7 This “plausibility standard” does not require detailed and expansive pleadings, supported by admissible evidence; rather, the challenged pleading must allege “sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570). At the pleading stage, this Court is not required to assess the merits of a pleading party’s allegations, and it would be error to do so. Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir. 1985) (“The court’s function on a Rule 12(b)(6) motion is not to weigh the evidence that might be presented at a trial but merely to determine whether the complaint itself is legally sufficient.”). As Fujifilm acknowledges (Dkt. No. 37 at 1), when reviewing a motion to dismiss, a reviewing court is required to “draw all reasonable inferences in favor of the [pleading party],” see, e.g., Landesbank Baden-Württemberg v. RBS Holdings USA Inc., 14 F. Supp. 3d 488, 497 (S.D.N.Y. 2014) (citation omitted), and must accept the allegations of the pleading as true. See, e.g., LaBounty v. Adler, 933 F.2d 121, 123 (2d Cir. 1991). Despite this well-settled authority, Fujifilm’s Motion affords no favorable inferences to Polaroid’s allegations and instead impermissibly attempts to dispute the merits of Polaroid’s allegations or the validity and scope of Polaroid’s many trademark registrations. Fujifilm essentially asks of this Court to accept its version of the relevant facts, which is improper at the motion-to-dismiss stage. In short, Fujifilm’s Motion must be denied unless, despite making all reasonable inferences favorable to Polaroid, the allegations of the FAC are demonstrably inadequate and implausible. Here, however, the FAC sufficiently and fully pleads each of the elements of the counterfeiting claim asserted, by setting forth sufficient facts, “to raise a reasonable expectation that discovery will reveal evidence” to support its counterfeiting claim. Twombly, 550 U.S. at 556. As such, the Motion should be denied in its entirety. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 12 of 25 8 II. POLAROID HAS ADEQUATELY ALLEGED ITS FIRST AMENDED COUNTERCLAIM FOR COUNTERFEITING UNDER SECTION 32 OF THE LANHAM ACT, 15 U.S.C. § 1114 Polaroid has alleged a plausible cause of action for counterfeiting under Section 32 of the Lanham Act, 15 U.S.C. § 1114, which provides that a person shall be civilly liable if, without the registrant’s consent, such person: use[s] in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. § 1114(1)(a). Section 45 of the Lanham Act, 15 U.S.C. § 1127, defines a “counterfeit” mark as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” Polaroid’s counterfeiting claim is consistent with the pleading standards of Twombly and Iqbal. The FAC provides “‘a short and plain statement of [Polaroid’s counterfeiting] claim showing that [Polaroid] is entitled to relief,’” and “‘give[s] [Fujifilm] fair notice of what the . . . claim is and the grounds upon which it rests.’” Twombly, 550 U.S. at 555 (alteration in original) (citations omitted). Paragraphs 1 through 50 of the FAC provide specific factual allegations that are not “conclusory” but rather “contain sufficient factual matter, accepted as true, ‘to state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 570). These factual allegations are sufficient to “allow[] the court to draw the reasonable inference that [Fujifilm] is liable for the misconduct alleged,” id. at 678, and “raise a reasonable expectation that discovery will reveal evidence of illegal [conduct]” on which those legal conclusions are based. Twombly, 550 U.S. at 556. Specifically, in support of its counterfeiting claim, Polaroid provides the following cogent narrative premised on detailed factual allegations: Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 13 of 25 9 o Since 1972, Polaroid, together with its predecessors and licensees, has sold a wide variety of products bearing its distinctive and famous “Classic Border Logo,” which consists of a vertically-oriented rectangle surrounding a smaller inner square, with the square positioned in a way that creates the visual impression of thin, typically white, borders along the top and sides and a thicker, typically white, border along the bottom, as depicted on page 1, supra. FAC ¶ 2. o PLR IP is the owner of at least seven federal trademark registrations for its Classic Border Logo mark covering a wide variety of photography related products, including “photosensitive paper; photographic paper; unexposed camera film.” FAC ¶¶ 35-37, Exs. A-G. o Fujifilm is not associated or connected with Polaroid, or licensed, authorized, sponsored, endorsed, or approved by Polaroid in any way. FAC ¶ 43. o In blatant disregard of Polaroid’s rights - of which Fujifilm was well aware - Fujifilm recently began manufacturing, sourcing, importing, distributing, marketing, promoting, offering for sale, or selling instant film in interstate commerce that bears a substantially indistinguishable and confusingly similar imitation of Polaroid’s Classic Border Logo. FAC ¶ 39. o Fujifilm offers its infringing products under the name “Instax Square,” representative examples of which are depicted on pages 5-6 and 17, supra. FAC ¶ 39. o Fujifilm’s infringing products are substantially indistinguishable from the Classic Border Logo as depicted in Polaroid’s trademark registrations, examples of which are depicted on page 3, supra, and in FAC ¶¶ 39-40. o Fujifilm’s use of a substantially indistinguishable and confusingly similar imitation of Polaroid’s Classic Border Logo is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the goods sold by Fujifilm are manufactured by, authorized by, or in some manner associated with Polaroid, which they are not. FAC ¶ 49. These factual allegations - which the Court must assume to be true at this stage - plausibly establish that: (1) Polaroid owns a valid and protectable trademark - namely, the Classic Border Logo - which is registered on the principal register; and (2) Fujifilm has used and continues to use a substantially indistinguishable imitation of Polaroid’s mark in a manner likely to confuse the public. Such allegations are sufficient to plead a counterfeiting claim. See Tiffany & Co., 127 F. Supp. 3d at 255-56 (granting Tiffany’s motion for summary judgment as to its counterfeiting claim where “[t]he evidence proffered by Tiffany [] shows conclusively that Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 14 of 25 10 Costco used ‘in commerce [an identical] counterfeit of a registered mark in connection with the sale, offering for sale or advertising’ of its rings and that such use was ‘spurious’ and ‘likely to cause confusion, or to cause mistake, or to deceive.’”); see also Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781(CM), 2009 WL 1675080, at *5 (S.D.N.Y. June 10, 2009) (“Burberry will establish Defendants’ liability for trademark counterfeiting . . . under section 32(l)(a) if it successfully establishes that: (1) Burberry had a valid mark entitled to protection under the Lanham Act; and (2) Defendants used a similar mark in commerce in a way that would likely cause confusion among the relevant consuming public.”) (citing Cartier Int’l B.V. v. Ben- Menachem, No. 06 Civ. 3917, 2008 WL 64005, at *10 (S.D.N.Y. Jan. 3, 2008)).3 Polaroid has alleged numerous specific facts that not only “allows the court to draw the reasonable inference that [Fujifilm’ is liable for the misconduct alleged,” Iqbal, 556 U.S. at 678, but also gives Fujifilm fair notice of Polaroid’s counterfeiting claim and the grounds upon which it rests. See Twombly, 550 U.S. at 555. These allegations foreclose dismissal. A. POLAROID SUFFICIENTLY PLEADED OWNERSHIP OF REGISTRATIONS FOR THE CLASSIC BORDER LOGO MARK As described above, Polaroid has sufficiently alleged ownership and registration of the Classic Border Logo mark at issue. See, e.g., FAC ¶¶ 35-37, Exs. A-G. “[Polaroid’s] registrations are prima facie evidence of the validity of the [Classic Border Logo] trademark[] [Polaroid] seek[s] to protect, as well as the exclusive right[] of [Polaroid] to use the [Classic Border Logo] [m]ark[] in commerce and in connection with the goods or services specified in the 3 Fujifilm cites to Milo & Gabby, LLC v. Amazon.com, Inc., 12 F. Supp. 3d 1341, 1351-52 (W.D. Wash 2014) for the proposition that dismissal is appropriate where plaintiff “failed to present any plausible facts to support the claim ‘beyond bare recitation of the [claim] element[s].” Dkt. No. 37 at 16. Unlike the pleading in Milo & Gabby, however, the FAC pleads specific facts describing Fujifilm’s use of the counterfeit mark at issue (FAC ¶¶ 7, 39-40, 42, 49-54), and specific factual bases supporting the intent and knowledge element of counterfeiting remedies under 15 U.S.C. § 1117 (FAC ¶¶ 7-10, 38-39, 42, 48, 51-54). Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 15 of 25 11 registration certificates.” Cartier Int’l. B.V., 2008 WL 64005, at *11 (citing 15 U.S.C. § 1057(b)). See also Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171, at *3 (S.D.N.Y. Jan. 8, 2016) (“Registration is prima facie evidence of a trademark’s validity”); Johnson & Johnson Consumer Cos., Inc. v. Aini, 540 F. Supp. 2d 374, 388-89 (E.D.N.Y. 2008) (“once a mark is recorded with the USPTO, the registration requirements are assumed to be met, and the mark is entitled to protection”). Therefore, Polaroid has incontrovertibly pleaded its ownership of a protectable mark. In an action for trademark counterfeiting, once the plaintiff proffers the mark’s Certificate of Registration (see FAC Exs. A-G), “the defendant bears the burden to rebut the presumption of the mark’s protectibility by a preponderance of the evidence.” Fendi Adele S.R.L. v. Burlington Coat Factory Warehouse Corp., 689 F. Supp. 2d 585, 596 (S.D.N.Y. 2010) (finding the trademark registration valid and granting plaintiff’s motion for summary judgment as to its counterfeiting claim) (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999)). Notably, Fujifilm does not challenge that Polaroid has sufficiently pleaded ownership of valid trademark registrations for its Classic Border Logo mark.4 Rather, Fujifilm attempts to challenge the validity or scope of those registrations by suggesting that the allegedly two- dimensional depiction of the Classic Border Logo in the registrations means that Polaroid “owns 4 Fujifilm’s claim that Polaroid “affirmatively represented to the USPTO that it was not seeking registration for a product shape or configuration” is a red herring. Not only is it irrelevant at the motion-to-dismiss stage, but it is also inconsistent with the language upon which it is based. Fujifilm claims Polaroid made such a representation in its response to an Office Action issued against Application Serial No. 87/220,361 objecting to the specimen of use Polaroid filed. Dkt. No. 37 at 7; Dkt. No. 36, Ex. B at 17. Polaroid’s response to the objection, and the language from which Fujifilm’s claim derives, was as follows: “Submitted herewith are substitute specimens showing the [Polaroid Classic Border Logo] used on product materials for goods covered by the subject application. The [Polaroid Classic Border Logo] is clearly used on product packaging as a designation of source rather than to provide any information about the qualities or function of the products.” Id. This language was clearly in response to the USPTO’s objection to the specimen and thus has no bearing on whether the application covers a product configuration. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 16 of 25 12 no registrations for the square shape and white color of its unexposed film . . .” Dkt. No. 37 at 1.5 But, Fujifilm cites absolutely no case law adopting this argument, which, as discussed below, is entirely misplaced. First, all of Polaroid’s registrations for the Classic Border Logo include a description explicitly stating that “color is not claimed as a feature of the mark.” See FAC ¶¶ 35-37, Exs. A- G. When no claim of color is made and the trademark is presented in black and white, as here, then the registration “is presumed to contemplate the use of the mark in any color, without limitation.” See TMEP § 807.14(e)(i). Second, at least two of Polaroid’s registrations, including one covering, inter alia, “unexposed camera film,” also include a description explicitly stating that “[t]he mark consists of a square inside of a rectangle.” See FAC ¶¶ 35-36, Exs. A-B. As is clearly articulated in the FAC, Polaroid has alleged that Fujifilm’s Instax Square film products “bear[] a substantially indistinguishable and confusingly similar imitation of Polaroid’s Classic Border Logo.” FAC ¶ 39. Accordingly, regardless of whether Polaroid’s registrations for the Classic Border Logo mark cover a two or three-dimensional design, Polaroid has sufficiently alleged a plausible claim for counterfeiting based on Fujifilm’s substantially indistinguishable depiction of the mark, both as incorporated into its Instax Square film and on the packaging for such film. See Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 532 (2d Cir. 1983) (holding that a mark is a “counterfeit” if it mimics the registered mark as it appears on actual merchandise, rather than as “the two- dimensional facsimile of the mark [appears] recorded on the registration certificate,” noting that 5 While the Trademark Manuel of Examining Procedure (“TMEP”) does provide that “[i]n cases where the drawing depicts a two-dimensional mark that could be interpreted as three-dimensional in nature, an applicant may clarify that the mark is two-dimensional in the mark description,” TMEP § 1202.02(c)(ii) (emphasis added), this is not a requirement and the USPTO confirmed that by repeatedly granting registrations covering the Classic Border Logo, including for “camera film.” Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 17 of 25 13 “counterfeiters copy actual merchandise, not registration certificates.”);6 see also Chloe SAS v. Sawabeh Info. Servs. Co., No. CV 11-04147 GAF (MANx), 2014 WL 4402218, at *20 (C.D. Cal. Sept. 5, 2014) (finding defendants’ incorporation of plaintiff’s “supposedly two- dimensional” “bridge watch shape design” mark “more than sufficient to support a finding of counterfeiting.”); accord Barnes Grp. Inc. v. Connell Ltd. P’ship, 793 F. Supp. 1277, 1294 (D. Del. 1992) (holding that plaintiff’s marks were “not limited to two dimensional symbols and logos depicting a die spring” and that the “trademarks alleged to be infringed in this case extend to actual three-dimensional die springs.”). B. POLAROID HAS SUFFICIENTLY PLED ALLEGATIONS OF FUJIFILM’S USE OF A COUNTERFEIT MARK Polaroid also adequately pleaded sufficient facts to support its claim that Fujifilm is using a counterfeit mark both on its Instax Square film and on the product packaging. See, e.g., FAC ¶¶ 39-40, 49. The FAC contains more than enough factual content to “allow[] the court to draw the reasonable inference that [Fujifilm] is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556). A “counterfeit” mark is defined as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127.7 In the FAC, Polaroid alleges that Fujifilm’s Instax Square film and the product packaging “bear[] a 6 Fujifilm cites Montres for the distinction between marks that are “merely infringements” and marks that are “such close copies that they amount to counterfeits.” Dkt No. 37 at 11. However, a comparison of Polaroid’s Classic Border Logo with Fujifilm’s substantially similar imitation thereof is likely to result in a finding that the latter is the spitting image of the former, similar to the outcome in Montres. 7 Fujifilm relies on Fischer v. Forrest, No. 14 Civ. 1304 (PAE) (AJP), 2017 WL 128705 (S.D.N.Y. Jan. 13, 2017), report and recommendation adopted, 2017 WL 1063464 (S.D.N.Y. Mar. 21, 2017) for general Second Circuit precedent related to the “substantially indistinguishable” requirement for counterfeiting claims, but the facts of Fischer do little to bolster Fujifilm’s position and Fujifilm’s parenthetical does not reflect the actual facts. Dkt. No. 37 at 11. While Fujifilm states that the Fischer court “dismiss[ed] [the] counterfeiting claim . . . because different marks were displayed, making the overall appearance ‘distinguishable,’” (Dkt. No. 37 at 11), the claim was dismissed because the defendants used an image of plaintiff’s actual product rather than, as here, a counterfeit imitation thereof. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 18 of 25 14 substantially indistinguishable and confusingly similar imitation of Polaroid’s Classic Border Logo . . . as depicted in Polaroid’s trademark registrations.” FAC ¶¶ 39-40. These allegations are supported with images showing representative exemplars of Fujifilm’s Instax Square film and the product packaging, each bearing a substantially indistinguishable imitation of the Classic Border Logo mark. See id. As Fujifilm acknowledges, “the alleged counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Dkt. No. 37 at 11 (quoting Excelled Sheepskin & Leather Coat Corp. v. Or. Brewing Co., No. 12 Civ. 1416(GBD)(RLE), 2015 WL 4468083, at *3 (S.D.N.Y. July 8, 2015)). Significantly, this comparison is not limited to the point-of-sale context. Instead, courts in this District permit the comparison of the products to be considered in the post-sale context. See, e.g., Louis Vuitton Malletier S.A., 97 F. Supp. 3d at 500 (denying defendants’ motion for summary judgment on counterfeiting claims because genuine issue of material fact existed as to whether the competitor’s mark was substantially indistinguishable from trademark holder’s mark); see also River Light V, LP, 2014 WL 6850966, at *16 (“To determine whether the accused mark is ‘substantially indistinguishable from’ the registered mark, courts are to consider consumers’ experience with the marks.”) (granting plaintiff’s motion for summary judgment as to its counterfeiting claim).8 In the post-sale context, when the Instax Square film is outside of its box and other packaging, it is indistinguishable from Polaroid’s registered Classic Border Logo. See FAC ¶¶ 7, 40; see also Polo Fashions, Inc., 816 F.2d at 148 (“[I]n the after sale context, one 8 Fujifilm cites to Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012) for the general proposition that “counterfeiting . . . seeks to trick the consumer into believing he or she is getting the genuine article.” While the Gucci court denied Gucci’s counterfeiting claim, finding that it should be “addressed under traditional trademark infringement principles,” id. at 253, the facts here are distinct in that Fujifilm, unlike Guess?, has copied Polaroid’s Classic Border Logo mark “stitch-for-stitch.” Id. at 242. Indeed, the Gucci court confirmed that “courts have uniformly applied [the Lanham Act’s counterfeiting] provision to products that are stitch-for-stitch copies of those of another brand.” Id. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 19 of 25 15 seeing the shirt [bearing the counterfeit mark] being worn by its owner, would not see the label on the back of the neck [bearing defendant’s mark].”) (affirming entry of summary judgment in favor of trademark holder on counterfeiting claim). At the point-of-sale, the presence of the FUJIFILM or INSTAX marks on Fujifilm’s boxes does not preclude a finding of counterfeiting. See Tiffany & Co., 127 F. Supp. 3d at 255-56 (granting Tiffany’s motion for summary judgment as to its counterfeiting claim, concluding that “[t]he fact that the rings were stamped with generic marks is not dispositive of this issue,” which in fact have not “done anything to alleviate confusion.”).9 The presence of Fujifilm’s trademarks on or near its use of substantially indistinguishable imitations of the Classic Border Logo goes to whether those imitations are “spurious” and likely to cause confusion. That, however, is a question of fact. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. 1996) (“If a factual inference must be drawn to arrive at a particular finding on [the likelihood of confusion analysis], and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment.”); Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471, 500 (S.D.N.Y. 2008) (holding that where the court is unable to make a determination whether a mark is counterfeit as a matter of law, “plaintiffs must show that defendants’ designs cause a likelihood of confusion as to the source of the product in question” and “[s]uch an inquiry is heavily fact-based, and generally not amenable to disposition on summary judgment.”). And numerous courts have held (after a factual record has been developed) that the use of a house mark does not always alleviate 9 Fujifilm attempts to discredit Polaroid’s reliance on Tiffany & Co. by claiming that it is inapplicable because “FUJIFILM’s INSTAX Square products prominently bear the famous FUJIFILM and INSTAX marks displayed all over the entirety of the product packaging.” Dkt. No. 37 at 20. This, however, ignores the fact that the rings at issue in Tiffany & Co. were inscribed with non-Tiffany & Co trademarks, whereas nowhere on the Instax Square film is there any use of the FUJIFILM or INSTAX marks and the discrete use of the FUJIFILM and INSTAX marks on the packaging could actually exacerbate the potential for confusion by falsely suggesting a collaboration with Polaroid, which is discussed more fully herein. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 20 of 25 16 confusion. See, e.g., Cullman Ventures Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96, 133 (S.D.N.Y. 1989) (house mark did not eliminate infringement even where it appears as prominently as infringing mark); Banff, Ltd. v. Federated Dep't Stores, Inc., 638 F. Supp. 652, 656 (S.D.N.Y. 1986) (“[T]he use of a defendant’s own name in conjunction with an otherwise similar mark does not generally excuse the infringement since it may instead simply increase the misappropriation by linking the defendant’s own name to the plaintiff's good will established by its trademark.”), aff’d in part, rev’d in part, 841 F.2d 486 (2d Cir. 1988); Polo Fashions, Inc., 816 F.2d at 148 (“[E]ven the most sophisticated purchaser, seeing the [counterfeit mark] on the front of the shirt, might suppose the plaintiff had adopted another trademark.”); VMG Enters., Inc. v. F. Quesada & Franco, Inc., 788 F. Supp. 648, 660 (D.P.R. 1992) (“Even where defendant clearly marks its product with its company name, similarity and thus, likelihood of confusion, may be found.”). Fujifilm’s reliance on GMA Accessories, Inc. v. BOP, LLC, 765 F. Supp. 2d 457, 471-72 (S.D.N.Y. 2011), is misplaced. The GMA court granted defendant’s motion for summary judgment as to the counterfeiting claim because the accused mark CHARLOTTE SOLNICKI was “simply not identical with or substantially indistinguishable from” the plaintiff's trademark CHARLOTTE,10 not because of the presence of a prominent house mark. Notably, the GMA plaintiff failed to allege that the products upon which the allegedly counterfeit mark was used were similar in any way to products the plaintiff produced. Id. at 471. Here, unlike in GMA, not 10 In Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp., Inc., 486 F. Supp. 2d 286, 288 (S.D.N.Y. 2007), another case relied upon by Fujifilm, the court found, inter alia, that the word mark at issue-COLDDATE-was noticeably different from plaintiff’s registered mark-COLGATE. Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 21 of 25 17 only are the parties’ marks substantially indistinguishable but, as Polaroid pleaded in the FAC, they are also used in connection with identical goods.11 See, e.g., FAC ¶ 45. In fact, courts in this District have held that, “[g]iven the current popularity of line extensions, the use of a house brand might suggest to consumers a collaboration between two prominent purveyors. . . .” Guinness United Distillers & Vintners B.V., 2002 WL 1543817, at *3 (finding the marks confusingly similar and granting plaintiff’s motion for preliminary injunction). Similarly, when the house mark “appears in relatively small font . . . it [is] unlikely to alleviate consumer confusion.” Id. Here, where Fujifilm formerly manufactured and distributed Polaroid-branded instant film bearing the Classic Border Logo and where the FUJIFILM house mark appears in font that is small relative to the size of the counterfeit mark (as depicted below), consumers may well believe a collaboration exists between these two prominent purveyors of instant film. But, again, these are factual questions that cannot be resolved at the pleading stage. 11 Fujifilm’s reliance on Kelly-Brown v. Winfrey, No. 11 Civ. 7875(PAC), 2012 WL 701262, at *8 (S.D.N.Y. Mar. 6, 2012), aff’d in part and vacated in part, 717 F.3d 295 (2d Cir. 2013) is misplaced. Unlike the defendant in Kelly- Brown, Fujifilm is using the counterfeit mark in connection with the same products as Polaroid and for which Polaroid owns trademark registrations. Additionally, the cases to which Fujifilm cites from other Circuits are all distinguishable. For example, Fujifilm uses Adams v. Grand Slam Club/Ovis, 2013 U.S. Dist. LEXIS 51052, *15-16 (D. Col. Apr. 9, 2013), as support for the allegation that courts have dismissed counterfeiting claims at the pleadings stage where it was plain that consumers would discern the obvious visual differences between the registered mark and the alleged counterfeit. However, the dismissal in Adams was due to plaintiff’s failure to produce sufficient visual evidence rather than the obvious consumer reaction to that evidence. FUJIFILM House Mark Counterfeit Mark Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 22 of 25 18 At the pleading stage, the Court must not weigh the evidence, but instead must “determine whether the complaint itself is legally sufficient.” Goldman, 754 F.2d at 1067. The question of whether its genuine Classic Border Logo mark and Fujifilm’s counterfeit mark are substantially indistinguishable is a fact intensive analysis and thus is not properly decided through a motion to dismiss. See, e.g., Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471, 499 (S.D.N.Y. 2008) (conducting a factual inquiry when comparing plaintiff’s mark with defendant’s spurious mark to determine whether the marks are substantially indistinguishable); see also Match.Com, LLC. v. Fiesta Catering Int'l, Inc., No. 1:12-cv-363 (AJT/IDD), 2013 WL 428056, at *6 (E.D. Va. Jan. 31, 2013) (“For the Court to hold as a matter of law that the marks are not ‘identical’ or ‘substantially indistinguishable,’ ‘an allegedly counterfeit trademark must possess pronounced differences from [the] legitimate trademarked good’ such that no reasonable jury could find it to be counterfeit.”) (denying motion to dismiss counterfeiting claim) (quoting United States v. Chong Lam, 677 F.3d 190, 199 (4th Cir. 2012)); Coach, Inc. v. Chung Mei Wholesale, Inc., No. 15-22829-CIV- ALTONAGA/O’Sullivan, 2016 WL 7470001, at *4 (S.D. Fla. June 17, 2016) (denying plaintiff’s summary judgment motion where “there is a genuine issue of material fact whether [defendant’s products] can be considered ‘identical’ or ‘substantially indistinguishable’ for the [] products to qualify as counterfeits under the Lanham Act.”). Because the substantially indistinguishable test is a factual inquiry, this Court must accept as true Polaroid’s allegations that Fujifilm’s Instax Square film bears a counterfeit mark that is substantially indistinguishable from Polaroid’s Classic Border Logo. Finally, “dismissals prior to giving the plaintiff ample opportunity for discovery should be granted very sparingly.” Twombly, 550 U.S. at 586-87 (citation omitted). Indeed, by engaging in discovery, including probative expert surveys, the parties will be able to establish whether Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 23 of 25 19 consumers find Fujifilm’s conduct constitutes (1) counterfeiting (i.e., consumer who observe Fujifilm’s use of an identical or substantially similar mark on the Instax Square film itself), (2) trademark infringement (i.e., consumers who observe Fujifilm’s marks on the Instax Square packaging, but nevertheless believe the Infringing Products are sponsored by and/or affiliated with Polaroid), and/or (3) dilution (i.e., consumers who observe Fujifilm’s marks on the Instax Square packaging and do not believe the Infringing Products are sponsored by and/or affiliated with Polaroid, but nevertheless draw an association with Polaroid). Moreover, because the same acts by Fujifilm that give rise to Polaroid’s counterfeiting claim also give rise to Polaroid’s trademark infringement, unfair competition, and dilution claims, see, e.g., Cartier Int’l B.V., 2008 WL 64005, at *13, denial of the Motion would not change the scope of discovery and would, therefore, result in no prejudice to Fujifilm. In short, the FAC properly alleges facts demonstrating that the Instax Square film, both in the post-sale and point-of-sale contexts, “bears a substantially indistinguishable and confusingly similar imitation of Polaroid’s Classic Border Logo.” FAC ¶¶ 39-40. CONCLUSION Because Polaroid’s FAC sufficiently states a counterfeiting claim for which relief can be granted, Fujifilm’s Motion should be denied in its entirety.12 DATED: June 22, 2018 Respectfully submitted, /s/ R. Charles Henn Jr. William H. Brewster (WB 2245) R. Charles Henn Jr. (RH 1224) 1100 Peachtree Street, NE, Suite 2800 Atlanta, Georgia 30309 Telephone: (404) 815-6500 12 In the unlikely the event that the Court grants Fujifilm’s Motion, Polaroid respectfully requests leave to amend the complaint to remedy any purported pleading defects. See Fed. R. Civ. P. 15(a)(2). Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 24 of 25 20 Facsimile: (404) 815-6555 Email: bbrewster@kilpatricktownsend.com chenn@kilpatricktownsend.com Olivia A. Harris (OH 1983) 1114 Avenue of the Americas New York, New York 10036 Tel: 212-775-8700 Fax: 212-775-8800 Email: oharris@kilpatricktownsend.com Attorneys for Defendants & Counterclaimants Case 1:17-cv-08796-NRB Document 39 Filed 06/22/18 Page 25 of 25