Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`MARY BUCK THOMPSON,
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`Plaintiff,
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`V.E.W. LTD, COTY, INC. and LAIRD +
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`PARTNERS, LLC,
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`Defendants.
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`06 Civ. 15336 (PAC)
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`OPINION
`AND ORDER
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`HONORABLE PAUL A. CROTTY, United States District Judge:
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`Plaintiff Mary Buck Thompson (“Thompson”) brings this action against
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`Defendants V.E.W. LTD (“VEW”), Coty Inc. (“Coty”), and Laird + Partners (“Laird”)
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`for copyright infringement under the Copyright Act, 17 U.S.C. §§ 501 et seq., violations
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`of the Lanham Act, 15 U.S.C. § 1125(a), deceptive business practices under N.Y. Gen.
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`Bus. Law § 349, false advertising under N.Y. Gen. Bus. Law § 350 and common law
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`unfair competition and unjust enrichment. Thompson alleges that Defendants used the
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`crowns she created in photographs which are part of a national advertising campaign for
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`Vera Wang Princess perfume (the “Campaign”) without compensation or consent, and
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`misidentified her crowns as Vera Wang Fine Jewelry. Defendants move, pursuant to Fed.
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`R. Civ. P. 12(b)(6), to dismiss Thompson’s claims for statutory damages and attorney’s
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`fees under the Copyright Act, for trade dress infringement, and for unjust enrichment.
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`The Court now denies the motion as to statutory damages and attorney’s fees under the
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`Copyright Act, grants the motion to dismiss as to trade dress infringement and unjust
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`enrichment, and grants Thompson leave to replead the dismissed claims.
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`MARY BUCK THOMPSON,
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`Plaintiff,
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`- against -
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`V.E.W. LTD, COTY, INC. and LAIRD +
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`PARTNERS, LLC,
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`:
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`Defendants.
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`06 Civ. 15336 (PAC)
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`OPINION
`AND ORDER
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`HONORABLE PAUL A. CROTTY, United States District Judge:
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`Plaintiff Mary Buck Thompson (“Thompson”) brings this action against
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`Defendants V.E.W. LTD (“VEW”), Coty Inc. (“Coty”), and Laird + Partners (“Laird”)
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`for copyright infringement under the Copyright Act, 17 U.S.C. §§ 501 et seq., violations
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`of the Lanham Act, 15 U.S.C. § 1125(a), deceptive business practices under N.Y. Gen.
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`Bus. Law § 349, false advertising under N.Y. Gen. Bus. Law § 350 and common law
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`unfair competition and unjust enrichment. Thompson alleges that Defendants used the
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`crowns she created in photographs which are part of a national advertising campaign for
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`Vera Wang Princess perfume (the “Campaign”) without compensation or consent, and
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`misidentified her crowns as Vera Wang Fine Jewelry. Defendants move, pursuant to Fed.
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`R. Civ. P. 12(b)(6), to dismiss Thompson’s claims for statutory damages and attorney’s
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`fees under the Copyright Act, for trade dress infringement, and for unjust enrichment.
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`The Court now denies the motion as to statutory damages and attorney’s fees under the
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`Copyright Act, grants the motion to dismiss as to trade dress infringement and unjust
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`enrichment, and grants Thompson leave to replead the dismissed claims.
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 2 of 8
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`RELEVANT FACTS1
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`I. Thompson’s Crowns
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`Since 1998, Thompson has created crowns by “weaving and molding gold
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`and silver wire into forms that she adorns with jewels….” Complaint ¶ 16. Thompson
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`believes that no other designer creates crowns with a similar appearance, and she asserts
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`that the trade dress of her crowns has “become distinctive of [her] goods and works in
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`commerce.” Id. ¶ 18.
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`II. Defendants’ Acquisition of Thompson’s Crowns
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`VEW is a corporation authorized by fashion designer Vera Wang Becker
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`to license her name in connection with various products. Coty, a major producer of
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`perfumes, holds the license to produce Vera Wang Princess granted by VEW. Laird was
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`retained by Coty to manage the Campaign, and in turn retained Lori Goldstein Ltd.
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`(“LGL”) as fashion stylist for the photography session which produced the photographs
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`used in the Campaign (the “Photo Shoot”).
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`In January 2006, LGL contacted Thompson and asked to rent her crowns
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`“for a photography session in connection with a potential advertising campaign.” Id. ¶ 23.
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`Thompson informed LGL that she would provide the crowns on a “rental fee basis.” Id. ¶
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`24. Thompson subsequently shipped 32 crowns to LGL in February 2006, and, after the
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`Photo Shoot was rescheduled and the crowns returned to her, shipped 34 crowns to LGL
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`in late March 2006. Defendant VEW reimbursed Thompson for the cost of insuring the
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`1 These facts are drawn from the allegations in the Plaintiff’s Complaint and the attached exhibits. Sources
`will be cited only where quoted.
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`2
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 3 of 8
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`crowns during the second shipment, but Thompson received no other compensation from
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`LGL or the Defendants.
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`III. Defendants’ Use of Thompson’s Crowns
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`Thompson believes that the Princess ad campaign, using pictures
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`including her crowns, began on August 10, 2006. Thompson discovered a picture of
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`model Camilla Belle wearing one of her crowns in a fashion magazine in September
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`2006, and later found that the campaign’s website, www.verawangprincess.com,
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`contained pictures including three more crowns, and a video featuring “more of her
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`crown jewelry.” Id. ¶ 35. One or more of the campaign’s advertisements using
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`Thompson’s crowns bore a credit line that read “Featuring…Vera Wang Fine Jewelry.”
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`Id. ¶ 37.
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`On October 3, 2006, Thompson applied to register “all the jewelry used
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`in” the Princess ad campaign with the United States Copyright Office. Id. ¶ 41. Her
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`application covered five crowns as individual works, and 42 crowns as a collection of
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`works including the five also registered individually. On October 9, counsel for
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`Thompson wrote a letter to Defendants Coty and VEW, informing them that the crowns
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`were copyrighted and their use in the Princess ad campaign was unauthorized.
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`Notwithstanding this notification, Defendants “continued utilizing [Thompson’s]
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`works….” Id. ¶ 43.
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`I. Rule 12(b)(6) Standard
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`DISCUSSION
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`3
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 4 of 8
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`The district court may dismiss a claim under Federal Rule of Civil
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`Procedure 12(b)(6) only if the plaintiff’s factual allegations are not sufficient “to state a
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`claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 127 S.Ct.
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`1955, 1609 (2007). The court accepts as true all factual allegations in the complaint, and
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`views them in the light most favorable to the plaintiff. See De Jesus v. Sears, Roebuck &
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`Co., 87 F.3d 65, 70 (2d Cir. 1996). While detailed factual allegations are not required,
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`however, a plaintiff must provide the grounds of her entitlement to relief beyond mere
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`labels and conclusions; a formulaic recitation of the elements of a cause of action is
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`insufficient. See Bell Atlantic Corp., 127 S.Ct. at 1964-65. In ruling on a motion under
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`Rule 12(b)(6), the Court may consider only the allegations made in the complaint and any
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`facts of which judicial notice may be taken. See Brass v. Amer. Film Techn., Inc., 987
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`F.2d 142, 150 (2d Cir. 1993). The complaint “is deemed to include any written
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`instrument attached to it as an exhibit or any statements or documents incorporated in it
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`by reference.” Cortec Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 47 (2d Cir. 1991),
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`cert. denied, 503 U.S. 960 (1992).
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`II. STATUTORY Damages and Attorney’s Fees under the Copyright Act
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`The prevailing party in a copyright infringement action is generally
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`entitled to either her actual damages plus any additional profits of the infringer or
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`statutory damages. 17 U.S.C. § 504(a). In addition, the court has discretion to award the
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`prevailing party a reasonable attorney’s fee. 17 U.S.C. § 505. The prevailing party is
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`ineligible to receive either statutory damages or attorney’s fees, however, if the
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`infringement commences before the effective date of copyright registration, and the work
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`4
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 5 of 8
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`is either (1) unpublished at the time of infringement; or (2) published more than three
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`months before the effective registration date. See 17 U.S.C. § 412. This rule applies
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`even if the infringement commenced before the effective registration date continues after
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`that date. See Innovative Networks, Inc. v. Young, 978 F.Supp. 167, 175 (S.D.N.Y.
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`1997); Singh v. Famous Overseas, Inc., 680 F.Supp. 533, 535-36 (E.D.N.Y. 1988).
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`Defendants’ contend that Thompson’s claim for statutory damages and attorney’s fees is
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`necessarily barred by Section 412. The Court disagrees.
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`The Complaint alleges that Thompson provided Defendants with more
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`than 30 crowns for use in the Photo Shoot. It further alleges that, prior to October 3,
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`2006, the effective copyright registration date,2 Defendants used four of Thompson’s
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`crowns in print advertisements and photographs on the Princess website, and used an
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`unspecified number of additional crowns in the video on the Princess website. The
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`Complaint does not make any allegation, direct or implied, that Defendants made
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`infringing use, prior to October 3, 2006, of all the crowns provided for the Photo Shoot.
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`The Complaint also indicates that Defendants “continued utilizing [Thompson’s] works”
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`after October 3, 2006, but it does not specify or limit the number of crowns that
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`Defendants used in the Campaign after that date.
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`The facts alleged in the Complaint are, in short, entirely consistent with
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`Defendants using some of Thompson’s crowns only after October 3, 2006. Such use
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`adequately supports Thompson’s claims for statutory damages and attorney’s fees under
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`the Copyright Act, and therefore dismissal of those claims is inappropriate even if
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`2 The effective registration date is the date on which a successful application was received in the Copyright
`Office. 17 U.S.C. § 410(d).
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`5
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 6 of 8
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`Defendants’ legal analysis is correct in all other respects. Accordingly, Defendants
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`motion is denied as to statutory damages and attorney’s fees under the Copyright Act.
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`III. Trade Dress
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`To state a claim for trade dress infringement, a plaintiff must articulate
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`“the specific elements which comprise its distinct dress,” and “a precise expression of the
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`character and scope of the claimed trade dress.” Landscape Forms, Inc. v. Columbia
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`Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997). The Complaint states only that the
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`crowns are made of gold and silver wire woven and molded into “forms” that are
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`“adorn[ed] with jewels.” Complaint ¶ 16. That statement is not an adequate articulation
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`of a distinctive trade dress, as even Thompson implicitly recognizes by providing a more
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`expansive definition of her trade dress in her opposition to this motion. Even assuming
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`Thompson’s new definition is adequate, which the Court does not decide at this time, a
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`statement in Thompson’s brief cannot remedy defects in her pleadings. Thompson’s
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`claim for trade dress infringement must be dismissed.
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`IV. Unjust Enrichment
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`Thompson’s claim for unjust enrichment alleges that she was “denied any
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`financial compensation or credit in connection with her loan” of her crowns, that
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`Defendants were enriched by their use of the crowns “in connection with the Vera Wang
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`Princess Campaign,” and that equity requires restitution. Complaint ¶ 84-85. Defendants
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`do not dispute that the allegations are sufficient to state a claim for unjust enrichment, but
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`argue that the claim is preempted by Section 301 of the Copyright Act. Defendants’
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`argument is persuasive.
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`6
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 7 of 8
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`There are two requirements for preemption of a state claim under Section
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`301. The first, that the work on which the state law claim is based be within the “subject
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`matter of copyright,” 17 U.S.C. 301(a), is obviously met in this case. The second
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`requirement is that the state law create “legal or equitable rights that are equivalent to any
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`of the exclusive rights” conveyed by federal copyright law. Id. Due to the equivalency
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`requirement, Section 301 “preempts only those state law rights that ‘may be abridged by
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`an act which, in and of itself, would infringe one of the exclusive rights’ provided by
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`federal copyright law.” Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d
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`Cir. 1992) (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200
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`(2d Cir. 1983), rev'd on other grounds, 471 U.S. 539 (1985)). “Courts have frequently
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`preempted…unjust enrichment claims that derive from the reproduction, use, or
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`misappropriation of material covered by copyright protection.” American Movie Classics
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`Co. v. Turner Entertainment Co., 922 F.Supp. 926, 934 (S.D.N.Y. 1996) (collecting
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`cases).
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`Thompson’s unjust enrichment claim is based on the unauthorized use of
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`images of her crowns in the Campaign. Such use clearly infringes, in and of itself,
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`exclusive rights provided by federal copyright law, and a claim based on it is therefore
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`preempted. To avoid this conclusion, Thompson argues that both Defendants’ alleged
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`misrepresentations that the crowns were a product of Vera Wang Fine Jewelry and LGL’s
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`acceptance of Thompson’s crowns for the Photo Shoot without producing her anticipated
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`compensation are sufficient to support an unjust enrichment claim without infringing
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`rights conveyed by the copyright law. There is no allegation, however, that Defendants
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`were enriched by either the alleged misrepresentations or the mere fact of Thompson’s
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`7
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`Case 1:06-cv-15336-PAC Document 39 Filed 06/15/07 Page 8 of 8
`Case 1:O6—cv—15336—PAC Document 39 Filed 06/15/07 Page 8 of 8
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`loan of the crowns, as opposed to their use of images of her crowns in their advertising
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`campaign. Without an allegation that Defendants were enriched by the conduct at issue,
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`the Complaint does not state a claim for unjust enrichment. E Golden Pacific Bancom
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`v. F.D.I.C., 273 F.3d 509, 519 (2d Cir. 2001). Thornpson’s claim for unjust enrichment
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`must therefore be dismissed.
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`CONCLUSION
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`Defendants’ motion to dismiss is GRANTED in part and DENIED in part.
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`Plaintiffs trade dress infringement and unjust enrichment claims are dismissed without
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`prejudice, and with leave to replead. The Clerk of the Court is directed to close out this
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`motion.
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`Dated: New York, New York
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`June 15, 2007
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`PAUL A. CROTTY
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`United States District Judge
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