Tianhai Lace USA, Inc. v. Davids Bridal LLC
- Alvin Hellerstein
- 1:22-cv-04648
- U.S. District Court · Southern District of New York
- 6
In Tianhai Lace v. David’s Bridal, Judge Hellerstein denied dismissal of willful copyright claims but granted it for contributory infringement.
Tianhai Lace USA, Inc. may proceed at this stage on its willful-infringement claim concerning the five lace designs. The motion to dismiss was granted as to its contributory-infringement claim. David’s Bridal LLC was directed to answer by September 29, 2022.
What happened
Tianhai Lace USA, Inc. sued David’s Bridal LLC over five lace designs that Tianhai Lace says David’s Bridal used in garments sold under its brand. The complaint asserted willful and contributory copyright infringement and sought damages and an order stopping the alleged infringement.
David’s Bridal asked the court to dismiss the complaint for failing to state a claim. The court found that Tianhai Lace had provided enough information about its copyright registrations, ownership, the alleged copying, and the products involved to proceed with its willful-infringement claim. But Tianhai Lace did not identify an infringer whom David’s Bridal allegedly encouraged or materially helped, so the contributory-infringement claim was not adequately stated.
Judge Hellerstein denied the motion to dismiss as to willful infringement and granted the motion as to contributory infringement. He ordered David’s Bridal to answer by September 29, 2022, and set an initial conference for November 4, 2022.
The detailed version
- Tianhai Lace USA, Inc. v. Davids Bridal LLC · No. 1:22-cv-04648
- Alvin Hellerstein
- Sept. 8, 2022
Background
Tianhai Lace USA, Inc. sued David’s Bridal LLC for alleged willful and contributory copyright infringement involving five lace designs. Tianhai Lace alleged that it owned or was the assignee of registered copyrights for designs A0342, XJ077, XY381, XY528, and YD155, and that David’s Bridal incorporated those designs into garments marketed and sold under specified product or stock-keeping-unit numbers.
The complaint sought statutory damages and injunctive relief. David’s Bridal moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not adequately state a legal claim.
Court’s analysis
The court explained that a copyright-infringement complaint must identify the specific works, allege that the plaintiff owns the copyrights, allege that the copyrights were registered, and identify the defendant’s allegedly infringing acts and when they occurred. For contributory infringement, the plaintiff must allege that another person directly infringed and that the defendant knew or had reason to know about that infringement and materially contributed to it.
As to willful infringement, the court held that Tianhai Lace had alleged enough to proceed. Tianhai Lace identified the five designs, attached registrations identifying it as the owner or assignee, identified the products or stock-keeping-unit numbers containing the designs, and alleged that the conduct occurred within the past three years. The court also rejected David’s Bridal’s argument that the registrations’ references to “work for hire” defeated Tianhai Lace’s ownership allegations. The court said a copyright-registration certificate is initial evidence of ownership and that David’s Bridal had not plausibly overcome that presumption.
The court likewise found sufficient allegations of copying and substantial similarity at the motion-to-dismiss stage. Tianhai Lace alleged that its designs appeared in its New York showroom and sales organization and had been publicly displayed after publication. The court said the identified product or stock-keeping-unit numbers gave sufficient notice even though the complaint did not include images of the accused designs. It also stated that substantial similarity is generally a factual question and that David’s Bridal had not provided evidence or identified differences that would resolve the issue as a matter of law at this stage.
The court reached a different conclusion on contributory infringement. Tianhai Lace identified only “Doe” defendants rather than particular alleged direct infringers and did not allege facts showing that David’s Bridal induced, caused, or materially contributed to another person’s infringing activity. The court therefore held that this claim was not adequately stated.
Disposition
Judge Alvin K. Hellerstein denied David’s Bridal’s motion to dismiss as to the willful-infringement claim and granted the motion as to the contributory-infringement claim. The court directed David’s Bridal to answer by September 29, 2022, scheduled an initial conference for November 4, 2022, and terminated the motion from the docket.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.