E. Remy Martin & Co. v. Sire Spirits LLC

Background

E. Rémy Martin & Co. sued Sire Spirits LLC, Vetroelite Inc. (VETRO), and Vetroelite S.P.A. (VSPA), alleging infringement of U.S. Design Patent No. 638,649 and several federal and New York trademark rights. The claims concerned similarities between Rémy’s Diamant and Rémy bottles and Sire’s Branson bottle. The complaint asserted direct and indirect design-patent infringement, federal trademark and dilution claims, a request concerning Sire’s trademark application, New York trademark and unfair-competition claims, and contributory trademark infringement claims against the Vetroelite defendants.

Sire moved to dismiss all claims for failure to state a claim. VETRO and VSPA moved to dismiss for failure to state a claim, and VSPA separately moved to dismiss for lack of personal jurisdiction.

Personal Jurisdiction over VSPA

The court rejected VSPA’s jurisdiction challenge. It found no general jurisdiction because VSPA was not at home in New York and declined to apply an alter-ego theory. But the court held that it could exercise specific jurisdiction under New York’s long-arm statute and the Constitution.

The court relied on evidence that VSPA had exported substantial quantities of glass products to New York and had caused a sample of the allegedly infringing bottle to be sent to New York for approval. The court also found that VSPA knew the ultimate client was connected to New York and deliberately participated in contacts directed there. VSPA’s motion to dismiss for lack of personal jurisdiction was therefore denied.

Design-Patent Claims

The court held that the complaint plausibly alleged direct and indirect infringement of the design patent. It identified the patent, alleged E. Rémy Martin’s ownership, described the accused bottle, and alleged that the designs were substantially similar in a way that could deceive an ordinary observer.

The court applied the ordinary-observer test, which asks whether an ordinary purchaser familiar with relevant prior designs would view the patented and accused designs as substantially the same and be led to purchase one believing it was the other. The court declined to resolve the parties’ detailed visual comparisons at the motion-to-dismiss stage, explaining that design-patent infringement ordinarily presents a factual question. It found that the designs were not so plainly dissimilar that dismissal was required as a matter of law.

The motions to dismiss Counts I, II, and III, concerning direct and indirect design-patent infringement, were denied in full.

Trademark and Related Claims

The court dismissed the trademark-related claims because the complaint did not specifically identify the elements that made up E. Rémy Martin’s claimed trade dress. Trade dress is the design or appearance of a product that may identify its source. The court held that a plaintiff cannot rely only on images, a general description of the overall appearance, or a reference to “the trade dress”; the complaint must clearly list and define the design elements being claimed.

Because the complaint did not provide that level of detail for the Rémy and Diamant bottles, the court dismissed Sire’s federal trademark-infringement and false-designation claims, the related New York common-law infringement and unfair-competition claims, and the federal and New York dilution claims. The court also dismissed the Vetro defendants’ contributory trademark-infringement claims because those claims depend on an underlying direct infringement claim. Each of these dismissals was granted with leave to amend.

Disposition

Judge Alvin K. Hellerstein ordered that Defendants’ motions were granted in part and denied in part. VSPA’s motion to dismiss for lack of personal jurisdiction was denied. The motions to dismiss Counts I–III were denied in full. The motions to dismiss Counts IV–XI were granted in full, with leave to amend. The court also canceled the scheduled February 7, 2022 argument and directed the Clerk to terminate the motion entries.