Tianhai Lace Co., Ltd. v. ASOS, PLC.
- Ronnie Abrams
- 1:22-cv-09752
- U.S. District Court · Southern District of New York
- 9
In Tianhai Lace v. ASOS, Judge Abrams denied dismissal of copyright claims but granted dismissal of New York deceptive-practices claims.
The Tianhai plaintiffs’ copyright infringement claims were not dismissed. Their New York deceptive-practices claims were dismissed as preempted, subject to the stated opportunity to amend within 30 days. The ASOS defendants obtained dismissal of the state-law claims but not the copyright claims.
What happened
In Tianhai Lace Co., Ltd. v. ASOS, PLC., several Tianhai entities alleged that ASOS entities used five protected lace designs in clothing products without authorization. The defendants asked the court to dismiss the complaint.
The court held that the copyright allegations gave ASOS fair notice because the complaint identified the registered designs, alleged Tianhai owned them, and included detailed comparisons, product names, webpages, and receipts. The court also held that the New York deceptive-practices claim was preempted, meaning federal copyright law displaced that state-law claim, because it was based on the same alleged copying.
Judge Ronnie Abrams denied the motion to dismiss the copyright claims but granted it as to the New York deceptive-practices claims. The court stated that the deceptive-practices claims could be amended within 30 days if the plaintiffs had a good-faith basis to do so.
The detailed version
- Tianhai Lace Co., Ltd. v. ASOS, PLC. · No. 1:22-cv-09752
- Ronnie Abrams
- May 16, 2023
Background
The plaintiffs, several Tianhai Lace entities, alleged that several ASOS entities reproduced, displayed, distributed, and created derivative works from five protected lace designs by offering clothing products featuring those designs. The complaint identified five United States copyright registration numbers, alleged that the plaintiffs owned the designs, and included a detailed table comparing the lace designs with allegedly infringing products. It also attached photographs, product webpages, receipts, and email confirmations.
The plaintiffs also asserted claims under New York General Business Law § 349, referred to in the opinion as the Deceptive Trade Practices Act claim. The defendants moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim.
Copyright Claims
The court applied the pleading requirement that a copyright complaint provide fair notice of the alleged infringement. It identified four relevant points: the specific original works, the plaintiff’s ownership, registration of the copyrights, and the acts and time period of the alleged infringement.
The court stated that the parties did not dispute that the complaint adequately alleged the first three points. It rejected the defendants’ argument that the fourth point was insufficient. The complaint’s table, product images, product names, webpages, and purchase records provided enough detail to identify the allegedly infringing products and the alleged conduct. The court therefore denied the motion to dismiss the copyright infringement claims.
New York Deceptive-Practices Claim
The court held that the state-law claim was preempted by the federal Copyright Act. Preemption means that federal law displaces a state-law claim when the state claim seeks to protect rights equivalent to those protected by federal copyright law.
The court concluded that the claim was essentially a copyright infringement claim with conclusory allegations that the conduct was directed at consumers and injured the public interest. Because the alleged harm arose from the same copying underlying the copyright claims, the court held that the state-law claim was preempted. It granted the motion to dismiss that claim, without prejudice to amendment. The plaintiffs were permitted to amend within 30 days if they had a good-faith basis to do so.
Disposition
Judge Ronnie Abrams denied the motion to dismiss the copyright infringement claims and granted the motion to dismiss the New York Deceptive Trade Practices Act claims. The court directed the Clerk of Court to terminate the pending motion at Docket 25.
Read the full 9-page opinion on CourtListener, the free public archive maintained by the Free Law Project.