Easy Spirit, LLC v. Skechers U.S.A., Inc.
- Jed Rakoff
- 1:19-cv-03299
- U.S. District Court · Southern District of New York
- 1
In Easy Spirit v. Skechers, Judge Pauley ordered three-page letters on secondary meaning in New York trade-dress law.
The order affected Easy Spirit, LLC and the two Skechers defendants by requiring each party to submit a letter addressing the secondary-meaning question by the stated deadline.
What happened
Easy Spirit, LLC sued Skechers U.S.A., Inc. and Skechers U.S.A., Inc. I. The opinion is an order about a legal question in the trade-dress dispute.
The court required each side to submit a letter by December 23, 2020, at 5:00 p.m. The letters had to address whether a plaintiff must prove “secondary meaning”—that consumers associate a design with a particular source—to bring a New York common-law trade-dress infringement claim. Each letter was limited to three single-spaced pages.
Judge William H. Pauley III did not decide whether secondary meaning is required. He ordered the parties to brief the conflicting decisions cited in the order.
The detailed version
- Easy Spirit, LLC v. Skechers U.S.A., Inc. · No. 1:19-cv-03299
- Jed Rakoff
- Dec. 18, 2020
Background
Easy Spirit, LLC brought an action against Skechers U.S.A., Inc. and Skechers U.S.A., Inc. I. The order addresses a question concerning Easy Spirit’s New York common-law trade-dress infringement claim.
Issue for briefing
The court asked whether a plaintiff must demonstrate “secondary meaning” as part of a claim for New York common-law trade-dress infringement. Secondary meaning refers to a design’s association in consumers’ minds with a particular source. The order identified conflicting decisions: one stated that New York common law does not require secondary meaning for distinctive designs, while another stated that the trade-dress analysis is the same under the Lanham Act and New York common law, including the tests for inherent distinctiveness and secondary meaning.
Order and effect
The court ordered each party to submit a letter addressing that question no later than December 23, 2020, at 5:00 p.m. Each letter was limited to three single-spaced pages. The order did not resolve whether secondary meaning is required.
The opinion is signed by William H. Pauley III, Senior United States District Judge.
Read the full 1-page opinion on CourtListener, the free public archive maintained by the Free Law Project.