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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-------------------------------------------------------)(
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`HEPTAGON CREATIONS, LTD.,
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`Plaintiff,
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`-v-
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`CORE GROUP MARKETING LLC,
`PLESKOW & RAEL CORPORATION,
`and THOMAS RAEL,
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`Defendants.
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`-------------------------------------------------------x
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`No. 11 Civ. 01794 (LTS)(AJP)
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`MEMORAKDUM OPINION AND ORDER
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`Plaintiff Heptagon Creations ("Plaintiff' or "Heptagon") asserts claims against
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`defendants Core Group Marketing LLC ("Core Group" or "Core"), Pleskow & Rael Corporation
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`("Pleskow & Rael"), and Thomas Rael (collectively, "Defendants") for copyright infringement
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`under 17 U.S.c. § 501, unfair competition and trade dress infringement under 15 V.S.c.
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`§ 1 125(a) (Section 43(a) of the Lanham Act), and common law unfair competition. The Court
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`has jurisdiction of this action pursuant to 15 U.S.c. § 1121,28 U.S.C. § 1331, and 28 U.S.c.
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`§§ I 338(a) and (b). Before the Court are Defendants' motions to dismiss the Complaint
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`pursuant to Fed. R. Civ. P. 12(b)(6) for failure to state a claim. The Court has considered
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`thoroughly the parties' submissions and, for the following reasons, Defendants' motions are
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`granted.
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`L
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`BACKGROUND
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`The following facts are alleged in the First Amended Complaint ("Complaint")
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`and taken as true for purposes of this motion practice. Heptagon is a corporation that designs
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`and markets high-end furniture and also provides interior design services to clients. (Comp1.
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`~ 5.) Defendant Core Group is a New York real-estate broker. (Compl. ~ 6.) Defendant
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`Pleskow & Rael is an architecture firm that also provides interior design services. (Compl. ~ 7.)
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`Defendant Thomas Rael is the managing partner and principal of Pleskow & Rael. (Compl. ~ 8.)
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`Heptagon has designed and marketed the ANDRE JOY AU line of furniture since
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`the year 2000. (Compl. ~ 9.) The furniture line has been purchased and endorsed by several
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`well-known individuals, including fashion designer Donna Karan, film director Sydney Pollack,
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`and sculptor Joel Perlman. (Compl. ~ 10.) Heptagon has used the ANDRE JOYAU furniture
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`line to decorate the offices of corporate clients such as Playboy Magazine and ABCKO Music &
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`Records, and various other public spaces, including the First Class Lounge for Korean Air at the
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`Los Angeles International Airport (LAX), and the Columbia Hicks Condominium development.
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`(Compl. ~~ 10, 12.) The ANDRE JOY AU furniture line has also been featured in several
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`magazines, including the Hamptons Magazine Art Section, Elle Decor, Interior Design, and
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`House & Garden. (Compl. ~ 11.)
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`Core hired Pleskow & Rael to provide interior design solutions that would
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`increase the appeal of Core's real estate listings. (Compl. ~ 14.) In August 2010, Thomas Rael,
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`in his capacity as an agent for Core, approached Heptagon and requested that Heptagon lend
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`Core a collection of ANDRE JOY AU furniture "in exchange for the publicity and exposure it
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`would give the brand and the work." (Compl. ~ 13.) Core hoped to use the furniture to decorate
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`condominiums which would then be featured on the Home and Garden Television ("HGTV")
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`show "Selling New York," which follows Core and other real estate brokers as they attempt to
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`sell high-end properties in the New York City area. (Compl. ~ 13.)
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`Heptagon initially agreed to Core's request and provided Rael with photographs
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`of the ANDRE JOYAU furniture so that Core could select the furniture pieces it wanted to
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`feature on the show. (CompI. '115.) Ultimately, however, the furniture was not provided, as
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`Core refused to purchase an insurance policy for Heptagon's pieces of furniture. (CompI. ~ 16.)
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`On January 13,2011, HGTV aired an episode of "Selling New York" titled "The
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`Big Buy In."1 (Compi. ~ 18.) In that episode, Core sought to sell a condominium at 240 Park
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`Avenue South (the "Park Avenue Property" or the "Property") with a list price of five million
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`nine hundred and fifty thousand dollars ($5,950,000.00). Core's potential sales commission on
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`the property was three hundred and fifty seven thousand dollars ($357,000.00). (CompI. ~ 18.)
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`In the episode, Core's real estate agent and CEO discuss the fact that the Park Avenue Property
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`is less appealing to buyers because it is unfurnished. (CompI. ~ 20.) Core's agents decide to
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`solve this problem by creating virtual, fully furnished images of the Property's rooms and by
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`screening images of ANDRE JOYAU furniture onto the walls of the Property. (Compi. ~ 20;
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`see also Compi. Exhs. 3 - 6.) Core then presented the virtually furnished Property to a group of
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`potential buyers. (Compi. '120.) The end of the HGTV episode depicts Core selling the Park
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`Avenue Property for five million eight hundred and ninety thousand dollars ($5,890,000.00), and
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`earning a commission of three hundred fifty thousand four hundred dollars ($353,400.00).
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`(CompI. ~ 22.)
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`Heptagon alleges that Defendants' use of "virtual" ANDRE JOYAU furniture in
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`their sales presentation constituted copyright infringement, trade dress infringement, and unfair
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`competition. Specifically, Heptagon alleges that Defendants infringed its rights in nine distinct
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`The complete episode may be accessed through HGTV's website, under the title "The
`Big Buy In," at http://www.hgtv.comlhgtv-selling-new-york/videoslindex.html (last
`visited Dec. 20, 2011).
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`pieces of ANDRE JOYAU furniture: the Cocoon Chair, the Cross Table, the Form Table, the
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`Meshu Floor Lamp, the Shimne Vase, the Sylvan Floor Lamp, the Yasu Floor Lamp, the Z
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`Stool, and the Tate Chaise. (CompI. ~~ 24-34, 49.) Heptagon asserts that, as a consequence of
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`Defendants' infringement, Defendants have been and will continue to be unjustly enriched, both
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`from the sale of the Park Avenue Property and from the diversion of customers to themselves for
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`sales and decorating services. Heptagon further asserts that it has suffered damages and losses to
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`its profits, sales, and business. (CompI. ~~ 37 - 39; 56 - 57.)
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`A.
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`Standard of Review
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`II.
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`DISCUSSION
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`When deciding a motion to dismiss a complaint for failure to state a claim under
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`Rule 12(b)( 6), the Court "accept[ s] as true all factual statements alleged in the complaint and
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`draw[s] reasonable inferences in favor of the non-moving party." McCarthy v. Dun & Bradstreet
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`~, 482 F .3d 184, 191 (2d Cir. 2007). While detailed factual allegations are not required, "a
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`complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that
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`is plausible on its face.'" Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atlantic
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`Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Pleadings consisting only of "'labels and
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`conclusions' or 'a formulaic recitation of the elements ofa cause of action will not do.''' Id.
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`(quoting Twombly, 550 U.S. at 555). "Where a complaint pleads facts that are merely consistent
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`with a defendant's liability, it stops short of the line between possibility and plausibility of
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`entitlement to relief." Id. (internal quotations and citations omitted).
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`B.
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`Copyright Infringement Under 17 U.S.c. § 501
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`To state a claim for copyright infringement, a plaintiff must allege facts sufficient
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`to demonstrate that 1) it owns a valid copyright; and 2) defendant has, without authorization,
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`copied the copyrighted work. Kregos v. Associated Press, 3 F.3d 656,661 (2d Cir. 1993); Aqua
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`Creations v. Hilton Hotels, No. 10 Civ. 246, 2011 U.S. Dist. LEXIS 31982, at *8 (S.D.N.Y. Mar.
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`28, 2011). The Court finds that Heptagon has not adequately alleged that it owns a valid
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`copyright.
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`Heptagon lacks a Certification of Registration of Copyright, as the Copyright
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`Office rejected its registration application for the ANDRE JOY AU furniture collection "on the
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`basis of functionality" because "the objects are utilitarian and contain no separable authorship."
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`(CompI. ~~ 46 - 48.) This rejection, however, does not end the Court's inquiry. "Where the
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`Copyright Office denies registration, and the unsuccessful applicant subsequently brings an
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`infringement action, courts nonetheless make an independent determination as to
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`copyrightability." Aqua Creations, 2011 U.S. Dist. LEXIS 31982, at *9 (S.D.N.Y. Mar. 28,
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`2011); see also Ward v. National Geographic, 208 F. Supp. 2d 429,445 (S.D.N.Y. 2002).
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`Therefore, this Court will examine the Complaint and determine whether Plaintiff s factual
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`allegations, taken as true, are sufficient to support a finding of copyrightability for each of the
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`nine pieces of ANDRE JOY AU furniture as to which Plaintiff asserts infringement claims.
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`The Copyright Act of 1976 protects "pictorial, graphic, and sculptural works," but
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`explicitly limits the protection of utilitarian, or "useful," articles. The Act provides that:
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`the design of a useful article, as defined in this section, shall be considered a
`pictorial, graphic, and sculptural work only if, and only to the extent that, such
`design incorporates pictorial, graphic, or sculptural features that can be identified
`separately from, and are capable of existing independently of, the utilitarian
`aspects of the article.
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`17 V.S.c.A. § 101 (West Supp. 20 II ).2 To adequately plead copyrightability in the absence of a
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`certificate of registration, Plaintiff must allege facts sufficient to demonstrate that the design
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`elements of its furniture are physically or conceptually separable from the furniture's utilitarian
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`elements, and so entitled to copyright protection. Heptagon's Complaint alleges that the design
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`elements of its furniture are "separable," but does not distinguish clearly between physical and
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`conceptual separability. In its opposition papers, Heptagon indicates that its argument for
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`copyright infringement is based on conceptual separability, but once again, the distinction
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`between physical and conceptual separability is not clearly delineated. Given the imprecision of
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`the Complaint and Plaintiffs arguments in this regard, the Court considers both physical and
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`conceptual separability. As explained below, the Court finds that Heptagon has failed to
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`adequately plead either.
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`1.
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`Physical separability
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`"[W]hen a component of a useful article can actually be removed from the
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`original item and separately sold, without adversely impacting the article's functionality, that
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`physically separable design element may be copyrighted." Chosun Int'l, Inc. v. Chrisha
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`Creations, Ltd., 413 F.3d 324, 327 (2d Cif. 2005). For example, if a chair's back was adorned
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`with a non-structural decorative design, that design would be a physically separable element that
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`could be copyrighted, because the chair's functionality would be unaffected by the removal of
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`the design. In contrast, if the entire chair was carved from a piece of wood, the pattern of the
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`wood's grain would not be copyrightable, as it would be impossible to separate the design
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`2
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`A "useful article" is defined as an article "having an intrinsic utilitarian function that
`is not merely to portray the appearance of the article or to convey information." 17
`V.S.c.A. § 101 (West Supp. 2011).
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`element of the grain from the chair without affecting the chair's functionality.
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`In Aqua Creations v. Hilton Hotels, plaintiff, a manufacturer of "sculptural
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`lighting designs" sued defendant for copyright infringement, arguing that the creative elements
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`of its light fixtures were both physically and conceptually separable from the fixtures' utilitarian
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`features. 2011 U.S. Dist. LEXIS 31982, at *13. Plaintiff claimed that the artistically shaped
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`shades of its light fixtures could be physically removed from the hardware (bulbs, wiring, etc.)
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`of the fixtures, and were therefore copyrightable. Id. at *15-16. The court disagreed and granted
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`defendant's motion to dismiss, finding that "although Aqua's light fixture may still 'illuminate a
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`room' once its decorative shades are removed, a shade is an important functional element of a
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`light fixture" and its removal would adversely affect a light fixture's functionality. Id. at *16.
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`In the Complaint, Heptagon discusses the nine works it contends are entitled to
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`copyright protection, describing the alleged separability of the design elements from the
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`utilitarian or functional aspects of each in turn:
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`The Cocoon Chair. (See Compl. ~ 49a; Exh. 7.) Heptagon argues that the "arcuate
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`sculptural form" that supports the armrests of the chair could be separated from the chair
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`without affecting the chair's function of supporting a seated person. (Compl. ~ 49a.)
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`The illustration of the chair that is appended to the Complaint clearly shows, however,
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`that the sculptural form actually comprises and supports the Cocoon Chair's arm rests
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`and actually supports the seating area of the chair as well. The sculptural form could not
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`be separated from the chair without adversely affecting its functionality as a chair with
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`arm rests.
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`The Cross Table. (See Compl. ~ 49b; Exh. 8.) Heptagon argues that the "depiction of a
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`cross and four circles" on the top of this table is separable from the table, as "these
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`designs are capable of being drawn and existing independently of the table," and do not
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`affect the functionality of the table. (Compl. ~ 49b.) But, as Defendants note and the
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`illustration appended to the Complaint confirms, the design on the top of the Cross Table
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`is formed by pieces of wood that constitute structural elements of the Cross Table and
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`thus cannot be deemed physically separable from the table simply because the design
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`could be drawn on paper. Rather, because the design is a structural element of the wood
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`from which the table is constructed, it could not be removed without robbing the table of
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`its functionality.
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`The Form Table. (See Compl. ~ 49c; Exh. 9.) Heptagon argues that the "crescent and
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`circle" design on the top of the Form Table is separable from the table itself. As with the
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`Cross Table, it is apparent from the exhibit appended to the Complaint that this "crescent
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`and circle" design is part of the wood making up the table and so cannot be physically
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`separated from the table without adversely affecting the table's functionality.
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`The Shimne Vase. (See CompI. ,-r 49d; Exh. 11.) Heptagon argues that the "angular
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`orientation and color of the sides" of this vase are physically separable from the
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`functional aspects of the vase. The appended exhibit shows, however, that the irregular
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`sides of the vase actually comprise the vase, and could not be separated from the vase
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`without adversely affecting its function as a container.
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`The Sylvan Floor Lamp. (See CompI. ~ 4ge; Exh. 12.) Heptagon argues that the
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`"rectangle or silvery bar" that is part of this lamp is physically separable from the lamp's
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`functional aspects, as it does not affect the lamp's ability to produce light. The appended
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`exhibit shows, however, that the silvery bar supports the standing lights, and could not be
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`separated from the lamp without adversely affecting its function as a free standing
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`upright lamp.
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`The Tate Chaise. (See Compl.,-r 49f; Exh. 15.) Heptagon argues that the hollow supports
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`and wood grain stripes on those supports are physically separable from the Chaise's
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`function as a sofa. The appended exhibit shows, however, that the hollow supports hold
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`up the Chaise and that the wood grain stripes are part of the material from which those
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`supports are fabricated. The supports could not be separated from the Chaise without
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`adversely affecting its function of providing a raised seating area.
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`The Yasu Floor Lamp. (See Compl. ,-r 49g; Exh. 13.) Heptagon argues that the Yasu
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`Lamp's "function of providing illumination" is separate from its "wrinkled shade
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`material." (Compl.,-r 49g.) A shade is, however, "an important functional element of a
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`light fixture," see Aqua, 2011 U.S. Dist. LEXIS 31982, at *16. Thus, even if the Yasu
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`Lamp provided illumination without its shade, removal of the shade would adversely
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`affect the lamp's functionality. See id.
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`The Z Stools. (See Compl. ,-r 49h; Exh. 14.) Heptagon argues that the board supports of
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`the Z Stools are physically separable, as they are "a strictly decorative feature of the chair
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`design." (Compl.,-r 49h.) The appended exhibit shows, however, that the board supports
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`actually hold up the Z Stools and could not be separated from the stools without
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`adversely affecting the stools' seating function.
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`Nowhere in the Complaint does Heptagon allege that design elements of the
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`Meshu Floor Lamp (see Compl. Exh. 10) are physically or conceptually separable from the
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`lamp's utilitarian elements.
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`The Complaint is thus insufficient to state the protectability element of Plaintiff's
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`copyright claim on the basis of physical separability.
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`2.
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`Conceptual separabilitv
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`Conceptual separability is distinct from physical separability, and does not require
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`that the artistic features of a product be capable of existing in physical separation from the
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`utilitarian aspects.
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`Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1144
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`(2d Cir. 1987). Rather, conceptual separability exists "where design elements can be identified
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`as reflecting the designer's artistic judgment exercised independently of functional influences."
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`Brandir, 834 F.2d at 1145 . Conversely, "if design elements reflect a merger of aesthetic and
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`functional considerations, the artistic aspects of a work cannot be said to be conceptually
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`separable from the utilitarian elements."
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`Courts have "decline[ d] to find conceptual
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`separability in articles whose shape - although designed to be aesthetically pleasing is dictated to
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`a large extent by practical considerations." Aqua Creations, 2011 U.S. Dist. LEXIS 31982, at
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`*17.
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`In Brandir, the Second Circuit applied the conceptual separability test in
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`determining whether a bicycle rack whose shape was inspired by a sculpture could be
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`copyrighted. The court held that the rack was not copyrightable because, although it "may have
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`been derived in part from ... [a] work[] of art," the final product inextricably intertwined form
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`and function, with "its ultimate design being as much the result of utilitarian pressures as
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`aesthetic choices." Brandir, 834 F.2d at 1147. Similarly, in Aqua Creations, the court held that
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`plaintiff failed to plead conceptual separability because it alleged no facts "permitting the Court
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`to find that the design [of its lighting fixtures] represent[ ed] purely aesthetic choices, as opposed
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`to 'a merger of aesthetic and functional considerations. '" 2011 U.S. Dist. LEXIS 31982, at *20
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`(quoting Brandir, 834 F.2d at 1145)). The Aqua Creations Court found that "it strains belief that
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`the creator of the [lighting] designs would have selected a shape for the lamp shades without
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`giving any consideration to the need for illumination. The shape of lighting fixture shades is
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`clearly informed by utilitarian concerns, and the associated creative elements are not
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`conceptually separable." 2011 U.S. Dist. LEXIS 31982, at *20 - 21; see also Eliya, Inc. v.
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`Kohl's Dept. Stores, No. 06 Civ 195 (GEL), 2006 U.S. Dist. LEXIS 66637, at *35-36 (S.D.N.Y.
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`Sept. 13, 2006) ("for a design element to be conceptually separable, it must be the result of
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`aesthetic decisionmaking that is independent of functional considerations ... functional
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`components of useful articles, no matter how artistically designed, have generally been denied
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`copyright protection unless they are physically separable from the useful article").
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`Like the plaintiff in Aqua Creations, Heptagon has failed to allege sufficient facts
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`to support a determination that the designs of the nine ANDRE JOY AU furniture pieces
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`represent purely aesthetic choices. Just as the light fixture shades in Aqua were designed with an
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`eye to utilitarian concerns, the ANDRE JOY AU furniture line was obviously designed with an
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`eye to its practical use. "It strains belief' that the designer of a chair, stool, table or lamp would
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`have selected the shape and materials for those pieces without considering their purposes of
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`providing seating, support and illumination. The detailed descriptions of each piece of furniture
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`set forth in the Complaint do not alter the fact that the aesthetic and functional aspects of the
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`nine pieces of furniture are inextricably linked. Heptagon's assertions that the design features of
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`its furniture "can be visualized separately, and are thus clearly separable," and that they can be
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`"conceptualized as existing independently of their utilitarian function" (CompI. -,r 50), are merely
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`conclusory statements that do not satisfy the Iqbal/Twombly standard.
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`C.
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`Lanham Act Trade Dress Infringement
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`Section 43(a) of the Lanham Act authorizes a producer of a good to bring an
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`action against any person who uses "any word, tenn, name, symbol, or device, or any
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`combination thereof ... which ... is likely to cause confusion, or to cause mistake, or to deceive
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`as to the affiliation, connection, or association of [a good], or as to the origin, sponsorship, or
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`approval of[that] good." 15 U.S.C.A § 1125(a) (West 2009); see also Wal-Mart Stores, Inc. v.
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`Samara Bros., Inc., 529 U.S. 205,209 (2000). Section 43(a) is construed to protect not just word
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`marks or symbol marks, but also trade dress. Yunnan Design, Inc. v. PAJ, Inc., 262 F.3d ]01,
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`114 (2d Cif. 2001). "A product's trade dress encompasses the overall design and appearance
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`that make the product identifiable to consumers." Nora Beverages, Inc. v. Perrier Group of
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`America, Inc., 269 F.3d 114, 119 (2d Cif. 2001). It is "essentially a product's total image and
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`overall appearance ... as defined by its overall composition and design, including size, shape,
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`color, texture, and graphics." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27,31
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`(2d Cif. 1995) (internal quotations and citations omitted). Trade dress infringement claims
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`generally involve either product packaging or product design. Courts are particularly cautious
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`about trade dress claims in product design cases because "almost invariably, even the most
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`unusual of product designs - such as a cocktail shaker shaped like a penguin - is intended not to
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`identify the source of the product, but to render the product itself more useful or more
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`appealing." Yunnan Design, 262 F.3d at 114-15 (internal quotations omitted). Heptagon is not
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`asserting a single trade dress claim for common elements of the overall ANDRE JOY AU line of
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`furniture but, rather, claims that each of the nine pieces of furniture bears its own distinctive
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`trade dress.
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`A party asserting a claim of trade dress infringement in a product design case
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`must meet four pleading requirements: (1) plaintiff must allege that there is a likelihood of
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`confusion between the plaintiffs good and the defendant's; (2) plaintiff must allege that the
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`claimed trade dress is non-functional; (3) plaintiff must allege that the claimed trade dress has
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`secondary meaning; and (4) plaintiff must offer a precise expression of the character and scope
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`of the claimed trade dress. National Lighting Co. v. Bridge Metal Industries, 601 F. Supp. 2d
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`556,560 (S.D.N.Y. 2009); see also Sherwood48 Assoc. v. Sony Corp. of Am., 76 Fed. Appx.
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`389,391 (2d Cir. 2003). As explained below, Heptagon fails to allege sufficient facts to meet
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`this standard.
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`1.
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`Heptagon has failed to allege that the claimed trade dresses are non-functional
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`"A product feature is functional, and cannot serve as a trademark, if it is essential
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`to the use or purpose of the article or ifit affects the cost or quality of the article." Yurman
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`Design, 262 F.3d at 116 (internal quotations omitted). Heptagon has failed to allege any facts
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`demonstrating that its claimed trade dresses in the nine pieces of ANDRE JOYAU furniture are
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`non-functional. Heptagon has alleged no facts demonstrating that any aspect of the nine
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`individual pieces of furniture exists for the sole purpose of identifying ANDRE JOY AU and/or
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`Heptagon as the source of the furniture. Rather, Heptagon's allegations in the Complaint make
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`clear that the distinctive features of the nine furniture pieces serve aesthetic or functional
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`purposes. For example, Heptagon alleges that the Cocoon Chair's "textured seating material and
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`tree trunk cocoon siding represent non-functional artistic elements." (See Compi. ~ 26; Exh. 9).
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`The appended exhibit shows, however, that the seating material and tree trunk cocoon siding
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`actually comprise the chair's seat and arm rests and so are features that are "essential to the use
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`or purpose of the [furniture piece]" or "affect[] the cost or quality of the [furniture piece]." See
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`Yurman Design, 262 F.3d at 116 (internal quotations omitted). The same holds true for the
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`salient features of the other eight pieces of furniture.
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`2.
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`Heptagon has failed to allege that the claimed trade dresses have secondary
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`A trade dress has secondary meaning "when a consumer immediately associates
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`the dress of the product with its source." Sports Traveler. Inc. v. Advance Magazine Publishers,
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`Inc., 25 F. Supp. 2d 154, 164 (S.D.N.V. 1998). When determining whether a trade dress has
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`secondary meaning, courts consider several factors, including: (1) plaintiff's advertising
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`expenditures; (2) consumer surveys linking the trade dress to a particular source; (3) sales
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`success; (4) unsolicited media coverage; (5) attempts to plagiarize the trade dress; and (6) the
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`length and exclusivity of the use. Id. The Complaint contains allegations that the ANDRE
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`JOY AU furniture line has been purchased by celebrities, featured in various magazines, and
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`commissioned for use in the decoration of public and private spaces. (Compl. 'l~ 9-12.) The
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`Complaint does not, however, contain any allegations as to Heptagon's advertising expenditures,
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`or consumer surveys linking the ANDRE JOY AU furniture line to a particular source.
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`Additionally, all of Heptagon's allegations as to secondary meaning refer to the ANDRE
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`JOY AU line as a whole; nowhere in the Complaint does Heptagon allege facts sufficient to
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`establish that any of the nine individual pieces whose trade dresses are at issue have acquired
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`secondary meaning in the mind of the public. In fact, Heptagon's exhibits in support of its
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`allegations of secondary meaning include only one reference to any of the nine furniture pieces
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`for which Heptagon seeks to establish secondary meaning. (See Compl. Exh. 2, p. 11 (featuring
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`a picture of and reference to the Cocoon Chair).)
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`3.
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`Heptagon has failed to plead a likelihood of confusion between its goods
`and those of the Defendants
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`Heptagon fails to plead any relevant likelihood of confusion between its goods or
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`Case 1:11-cv-01794-LTS Document 45 Filed 12/22/11 Page 15 of 16
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`services and those of the Defendants. See Landscape Forms, Inc. v. Columbia Cascade Co., 113
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`F.3d 373,382-83 (2d Cir. 1997). Heptagon alleges that Defendants' use of Heptagon's furniture
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`in presenting the Park Avenue Property was "intended to divert business from Heptagon as
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`[Defendants' actions] are likely to cause confusion" between Core, Pleskow & Rael, and
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`Heptagon. (Compi. ~~[ 35-36.) However, Heptagon fails entirely to allege that Defendants
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`compete in furniture design or marketing or that any member of the public would plausibly think
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`that the allegedly infringed ANDRE JOY AU furniture pieces were designed or offered by
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`Defendants.
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`The Complaint states that Heptagon is in the business of "designing and
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`marketing high-end custom home furnishings and providing ... interior design services, which
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`are typically provided to clients in the course of providing furniture to them" (Compi. ~ 5); that
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`Core "is engaged in the business of rendering high-end real-estate brokerage, marketing and a
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`variety of marketing related services" in New York. (Compi. ~ 6); and that Pleskow & Rael is a
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`corporation "engaged in the business of architectural and interior design services." (Compl. ~f~ 7
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`- 8.) The closest the Complaint comes to alleging that Heptagon and Defendants are competitors
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`are the statements that both Heptagon and Pleskow & Rael provide "interior design services."
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`The Complaint contains no more specific allegations as to the competition between Heptagon
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`and Pleskow & Rael and contains no allegations whatsoever as to competition between
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`Heptagon and Core. It is thus devoid of any factual basis for an inference of a likelihood of
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`confusion of Plaintiffs furniture (the products whose trade dresses were allegedly infringed)
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`with any goods or services offered by Defendants, or vice versa. As Heptagon asserts no claim
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`of a trade dress in interior design services, any risk of confusion between Heptagon and Pleskow
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`& Rael in that field is beside the point.
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`D.
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`Common Law Unfair Competition
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`In New York, a common law unfair competition claim is identical to a Lanham
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`Act claim, save for the additional requirement that plaintiff show defendant's bad faith. See,
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`~,Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037, 1044 (2d Cif. 1980); Girl
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`Scouts of U.S. A. v. Bantam Doubleday Dell Pub. Group, 808 F. Supp. 1112, 1131 (S.D.N.Y.
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`1990). Since Heptagon has not adequately alleged a Lanham Act claim, its claim for common
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`law unfair competition necessarily fails.
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`CONCLUSiON
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`For the foregoing reasons, Defendants' motions are granted and Plaintiffs
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`complaint is dismissed, pursuant to Fed. R. Civ. P. 12(b)(6). This resolves docket entry nos. 21
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`and 24. The Clerk of Court is requested to enter judgment dismissing the First Amended
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`Complaint and close this case.
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`Dated: New York, New York
`December 22,2011
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`~SWA[N
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`United States District Judge
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