Moshik Nadav Typography LLC v. Banana Republic, LLC

Background

Moshik Nadav Typography LLC, a typography and graphic-design business, alleged that Banana Republic, LLC misappropriated a stylized ampersand that Nadav designed. Nadav created the Paris Pro Typeface, including the Paris Pro Ampersand, in 2012. Nadav alleged that Banana Republic used an ampersand closely resembling that design without a license or authorization.

Nadav sent Banana Republic a cease-and-desist letter on or about September 5, 2018. The letter alleged that Banana Republic had misappropriated the design near the end of 2017 and beginning of 2018 and sought compensation. The court had previously dismissed Nadav’s complaint in its entirety but allowed amendment. Nadav then filed a Third Amended Complaint containing an amended unfair-competition claim. The Third Amended Complaint did not include the previously pleaded claim under Section 349 of New York’s General Business Law.

Motion and Legal Standard

Banana Republic moved under Rule 12(b)(6) of the Federal Rules of Civil Procedure to dismiss the amended unfair-competition claim. Under that rule, the court generally accepts the complaint’s factual allegations as true, but the allegations must state a claim that is plausible—not merely possible—on its face.

Under the New York law theory at issue, Nadav needed to plausibly allege that Banana Republic acted in bad faith. The court considered whether the facts alleged supported a reasonable inference of bad faith.

Court’s Analysis

Nadav alleged that Banana Republic had actual or constructive knowledge of the Paris Pro Ampersand because Nadav had used it since at least 2012, because Nadav’s brand had achieved fame and public recognition, and because Nadav sent the 2018 cease-and-desist letter.

The court found that the first two allegations were not materially different from allegations it had already found insufficient. The cease-and-desist letter did not show that Banana Republic knew about Nadav’s design before the challenged use or that Banana Republic actually copied it. The complaint also did not allege that Banana Republic continued using the design after receiving the letter. The court further stated that failure to completely abandon use after receiving a cease-and-desist letter, standing alone, is insufficient to show bad faith.

The court rejected Nadav’s additional arguments. Visual similarity alone generally did not support an inference of bad faith. Banana Republic’s alleged history of being involved in unfair-competition lawsuits also did not support that inference because the complaint did not show that those lawsuits were comparable. Nadav’s allegation that Banana Republic wanted to capitalize on Nadav’s goodwill and reputation was conclusory. The court also found no basis in the cited authorities for applying a different bad-faith standard to Nadav’s misappropriation-based theory rather than an infringement theory.

Disposition

Judge Jesse M. Furman held that the Third Amended Complaint still failed to plausibly allege bad faith. The court therefore granted Banana Republic’s motion to dismiss in full. It declined to grant Nadav leave to amend again and directed the Clerk of Court to terminate the motion and enter judgment in favor of Banana Republic. The court did not reach Banana Republic’s alternative arguments for dismissal.