ABSTRACT

The Southern District of New York granted summary judgment in favor of luxury jeweler Cartier's trademark infringement claim, finding that a number of the defendant's products incorporated designs that were identical or substantially indistinguishable from Cartier's registered screw-head imprint design mark. However, the court found that there was a factual dispute as to whether a number of defendant's other products also infringed Cartier's design marks or Gucci's trademarked "G" design, and therefore denied summary judgment as to those products. The court also cast some doubt as to whether the defendant's use of the luxury jewelers' trademarks could constitute a nominative fair use, such as by advertising its products as "Cartier-esque" or "Bulgari-esque" and as being "inspired by" or "replicas of" the plaintiffs' brands. The court held that the defendant's use may exceed the third prong of the nominative fair use test set forth in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), because the use of the plaintiffs' marks combined with the similarities of the defendant's goods to those of the plaintiffs may suggest or imply sponsorship or endorsement of defendant's goods by the plaintiffs. This was a factual issue that could not be resolved on summary judgment.

CASE SUMMARY

FACTS

Plaintiffs design and manufacture high-end jewelry and other luxury goods. Elena Castaneda manufactures inexpensive reproductions and replicas of the plaintiffs' jewelry and sells them online for substantially less than the cost of the genuine luxury pieces. Plaintiffs sued Castaneda, alleging copyright infringement, trademark and trade dress infringement, and design patent infringement based on Castaneda's jewelry that allegedly copied the plaintiffs' protected designs and incorporated their registered trademarks. Plaintiffs also alleged trademark infringement based on Castaneda's use of their marks in connection with the promotion of Castaneda's jewelry using terms such as "Cartier-esque" and "Bulgari-esque." Several of the plaintiffs moved for summary judgment on their copyright, trademark, and design patent claims involving certain of Castaneda's jewelry designs, and on Castaneda's counterclaim to cancel Yurman Studio, Inc.'s ("Yurman") copyright registrations. Castaneda filed cross-motions for summary judgment.

ANALYSIS

Initially, the court rejected Castaneda's challenges to the validity of the copyright registrations and granted summary judgment in favor of the copyright holders on all but two copyright claims. In a subsequent order on Yurman's motion for reconsideration, 2008 WL 4298582, the court granted summary judgment on the remaining two copyright claims.

Turning to the trademark claims, the court found that ten of Castaneda's jewelry products incorporated designs that were either identical or substantially indistinguishable from Cartier's registered screw-head imprint design mark, such that no reasonable jury could find that the designs were not counterfeits. The court granted summary judgment to Cartier on those designs. However, the court found there was a factual dispute as to whether a number of Castaneda's other products also infringed Cartier's design marks in terms of their similarity to Cartier's marks. The court also could not hold as a matter of law that Castaneda's use of a pattern of highly stylized "G"s that were placed upside down and backwards on certain of her products were substantially indistinguishable from Gucci's "G" trademark such that they must be considered a counterfeit. The plaintiffs would have to show that the remainder of Castaneda's designs created a likelihood of confusion, and the court thus denied summary judgment as to those products.

The court then turned to Castaneda's nominative fair use defense and found that Castaneda's use of the plaintiffs' marks differed from the New Kids situation, because Castaneda used plaintiffs' marks to highlight the similarity of her own products to those of the plaintiffs. For example, Castaneda advertised her products as being "Cartier-esque" or "Bulgari-esque" and as being "inspired by" or "replicas of" plaintiffs' brands. The court held that "the use of plaintiffs' brand names to describe defendants' own products, combined with the similarity of the defendants' products to plaintiffs' designs, may suggest or imply plaintiffs' sponsorship, endorsement, or the affiliation of defendants' products with those of plaintiffs. Defendants' use is not nominative if it creates a likelihood of confusion about the mark-holder's affiliation or sponsorship." However, the court stopped short of deciding at the summary judgment stage whether Castaneda's use of the plaintiffs' marks violated the third prong of the New Kids test, such that it could not be considered a nominative fair use. CONCLUSION

The court's ruling suggests that the use of another's marks to describe one's own products as "BRAND-esque" may exceed the bounds of nominative fair use, particularly where the overall similarities between the products and any trade dress or designs incorporated therein may suggest or imply an affiliation with or sponsorship by the mark owner. Notably, the court did not discuss whether the use of the suffix "-esque" or the terms "inspired by" or "replicas of" might serve as a form of a disclaimer, reducing the likelihood that consumers would mistakenly assume that there was an affiliation or sponsorship.