Hamilton International Ltd. v. Vortic LLC

Background

Hamilton International Limited sued Vortic LLC and Vortic’s owner, Robert Custer, alleging trademark infringement, counterfeiting, dilution, and unfair competition. Vortic restores antique pocket watches and converts them into wristwatches. One watch, called “The Lancaster,” uses a restored railroad-era movement, face, and hands from pocket watches originally produced by the Hamilton Watch Company.

The court had previously denied Hamilton’s motion for summary judgment on its claims. Hamilton then moved for reconsideration of that decision.

Legal standard

The court explained that reconsideration is an extraordinary remedy. It is generally available only when the moving party identifies an intervening change in controlling law, newly available evidence, or a need to correct clear error or prevent manifest injustice. A reconsideration motion cannot be used to present new facts or arguments that were not previously submitted, or to relitigate issues the court already decided.

Hamilton’s arguments and the court’s analysis

Hamilton argued that the court’s reliance on the “full disclosure” analysis from Champion Spark Plug Co. v. Sanders conflicted with the traditional likelihood-of-confusion test. The court rejected that argument, explaining that it considered full disclosure only insofar as it affected whether ordinary prudent purchasers were likely to be misled about the product’s source.

Hamilton also argued that the court improperly focused on whether Vortic’s advertisements explained how Vortic obtained its parts, rather than whether the advertisements eliminated confusion about Hamilton’s sponsorship, affiliation, or connection to the watches. The court found no conflict between those inquiries. It reasoned that if the advertisements effectively explained that Vortic produced the watches and used old Hamilton watches as sources of parts, a reasonable factfinder could conclude that consumers were unlikely to believe Hamilton sponsored or stood behind the products.

The court also rejected Hamilton’s contention that whether the movements were restored was irrelevant. It stated that the Supreme Court’s Champion decision treated restoration and full disclosure as central to the likelihood-of-confusion analysis. The court further explained that consumer expectations about antique or restored watches could be relevant, because a reasonable factfinder could determine that consumers would expect the modifications made by Vortic in a historic, restored watch.

The court reaffirmed that a reasonable factfinder could conclude that the advertisements communicated that Vortic, rather than Hamilton, produced the watches and that Vortic used antique Hamilton movements as sources of parts. A reasonable factfinder could also conclude that the watches’ modifications were expected in antique or restored watches and that the advertisements and the watch itself were unlikely to cause consumer confusion.

Hamilton argued that the court should have applied all eight factors from the Second Circuit’s Polaroid test for trademark confusion. The court explained that a judge need not apply every factor in every case, but must deliberately review each factor and explain why any factor is inapplicable. The court stated that it had done so and found that applying five of the factors would conflict with the reasoning of Champion. The court also noted that Hamilton appeared to argue that consumer sophistication did not reduce the likelihood of confusion, effectively asking the court to disregard the last Polaroid factor.

Hamilton further argued that the court had failed to address possible confusion caused by viewing The Lancaster by itself. The court disagreed, stating that its earlier opinion had expressly considered that possibility and concluded that a reasonable factfinder could determine that the watch alone was unlikely to cause confusion under Champion.

Finally, Hamilton presented an earlier version of wording from Vortic’s website and cited part of Custer’s deposition. The court treated those matters as improper for reconsideration because Hamilton had not previously provided them to the court. The court also declined to revisit Hamilton’s earlier arguments about the Polaroid factors and the messages conveyed by Vortic’s advertisements and watch.

Disposition

Judge Alison J. Nathan denied Hamilton’s motion for reconsideration. The court also altered the schedule for pretrial filings because trial was scheduled to begin on February 19, 2020. Pretrial materials were due January 24, 2020; oppositions to motions in limine were due February 5, 2020; and replies were due February 11, 2020. The order resolved Docket Entry 117.