Caliko, SA v. Finn & Emma, LLC
- Valerie Caproni
- 1:21-cv-03849
- U.S. District Court · Southern District of New York
- 27
In Caliko v. Finn & Emma, Judge Caproni denied venue dismissal, allowed most trademark claims, but dismissed trade-dress and Section 349 claims.
Caliko, SA may continue litigating most of its trademark and unfair-competition claims against Finn & Emma, LLC. Its trade-dress and New York General Business Law Section 349 claims were subject to the granted portion of the motion, although it could seek permission to amend the trade-dress claims.
What happened
In Caliko, SA v. Finn & Emma, LLC, Caliko alleged that Finn & Emma copied its baby rocker, used its trademarks, and sold counterfeit products. Finn & Emma asked the court to dismiss the case because New York was an improper location and because the claims were legally insufficient.
The court ruled that New York was a proper location because Finn & Emma sold baby rockers to New York customers, including products Caliko alleged were infringing. The court allowed Caliko’s federal and common-law trademark claims, federal false-designation and false-advertising claims, and New York unfair-competition and Section 133 claims to continue. It rejected the trade-dress claims because Caliko did not precisely describe how the rocker’s design was distinctive, and rejected the Section 349 claim because Caliko did not allege harm to the public beyond ordinary trademark infringement.
Judge Valerie Caproni denied the request to dismiss for improper venue, denied the request to transfer the case to New Jersey, and granted in part and denied in part Finn & Emma’s motion to dismiss. Caliko could seek permission to amend its trade-dress claims by March 18, 2022.
The detailed version
- Caliko, SA v. Finn & Emma, LLC · No. 1:21-cv-03849
- Valerie Caproni
- Feb. 28, 2022
Background
Caliko, SA alleged that Finn & Emma, LLC infringed Caliko’s rights in its CHARLIE CRANE and LEVO trademarks and in the design of its LEVO Rocker. Caliko alleged claims for federal trademark infringement, common-law trademark infringement, federal and New York trade-dress infringement, federal false designation of origin and false advertising, federal and New York unfair competition, and deceptive practices under New York General Business Law Sections 133 and 349.
According to the allegations, Finn & Emma had been an authorized distributor of the LEVO Rocker from approximately March 2018 through 2020. After unsuccessful license negotiations, Caliko alleged that Finn & Emma had a rocker manufactured by an unauthorized source in China and used Caliko’s marks to advertise and sell counterfeit rockers. Finn & Emma moved to dismiss for improper venue under Federal Rule of Civil Procedure 12(b)(3), to transfer the case to the District of New Jersey, and to dismiss all claims for failure to state a claim under Rule 12(b)(6).
Venue and Transfer
The court denied the motion to dismiss for improper venue. It held that Finn & Emma was subject to personal jurisdiction in New York because it shipped the allegedly infringing goods into New York and acknowledged that 6.9 percent of its baby rocker sales in 2019 were to New York customers. The court concluded that these sales were sufficiently connected to Caliko’s claims and also satisfied constitutional requirements concerning the defendant’s minimum contacts with New York.
The court also denied Finn & Emma’s motion to transfer the case to the District of New Jersey. Although the case could have been brought there, Finn & Emma did not provide evidence or meaningful argument showing that transfer was warranted.
Claims Allowed to Continue
The court denied the motion to dismiss Caliko’s federal trademark-infringement claim. It held that Caliko adequately alleged that CHARLIE CRANE was protected and that Finn & Emma’s alleged use of the mark created a likelihood of consumer confusion. Because Caliko alleged counterfeiting, confusion would be presumed; the court also concluded that Caliko had adequately alleged confusion even without that presumption.
The court denied the motion as to Caliko’s common-law trademark-infringement claims involving CHARLIE CRANE and LEVO. The court treated LEVO as an invented, fanciful mark that was inherently distinctive and therefore protectable without allegations of acquired secondary meaning.
The court denied the motion as to Caliko’s federal false-designation, false-advertising, and unfair-competition claims because those claims relied on the same adequately alleged trademark-infringement elements. It also denied the motion as to New York unfair competition, concluding that Caliko adequately alleged bad faith based on Finn & Emma’s alleged knowledge of Caliko’s marks, the failed licensing discussions, and continued sales after notice of alleged infringement.
The court denied the motion as to the New York General Business Law Section 133 claim. Caliko adequately alleged that Finn & Emma used Caliko’s trademarks and trade dress with intent to deceive the public, including by continuing to use the marks while selling allegedly counterfeit rockers.
Claims Dismissed or Subject to Amendment
The court granted the motion as to Caliko’s federal and New York trade-dress-infringement claims. Caliko claimed protection for the overall appearance of its rocker, but the court held that the complaint did not give a sufficiently precise description of the claimed trade dress or explain how its listed design features were distinctive from other baby rockers. The court also stated that Caliko had not adequately alleged secondary meaning.
The trade-dress claims were dismissed, and Caliko was permitted to move for leave to file an amended complaint. Any such motion had to be filed by March 18, 2022, with a redlined version of the proposed amended complaint.
The court granted the motion as to Caliko’s New York General Business Law Section 349 claim. The court held that Caliko had not alleged facts showing harm to the public beyond the ordinary harm associated with trademark infringement. The court denied the motion as to the separate Section 133 claim.
Disposition
The court’s motion-to-dismiss ruling was granted in part and denied in part. The venue-dismissal and transfer requests were denied. The trademark, federal false-designation and false-advertising, federal and New York unfair-competition, and Section 133 claims remained allowed to proceed at this stage. The federal and New York trade-dress claims and the Section 349 claim were the claims as to which the motion was granted. Judge Valerie Caproni directed the Clerk of Court to close the motion at docket entry 19.
Read the full 27-page opinion on CourtListener, the free public archive maintained by the Free Law Project.