Case 1:21-cv-04523-PGG Document 18 Filed 08/19/21 Page 1 of 3
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`Attorneys admitted in
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`Sender’s contact:
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`DELIVERED VIA ECF
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`The Honorable Paul G. Gardephe
`United States District Court
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007-1312
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`Case Title:
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`Re:
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`Doniger / Burroughs Building
`Doniger / Burroughs Building
`603 Rose Avenue
`603 Rose Avenue
`Venice, California 90291
`Venice, California 90291
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`New York Office
`Doniger / Burroughs NY
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`Brooklyn, New York 11222
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`Sender’s contact:
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`(310) 590-1820
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`August 19, 2021
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`Klauber Brothers, Inc. v. Badgley Mischka, LLC, et al.
`1:21-cv-04523-PGG
`Plaintiff’s Response to Defendants’ Request for
`Conference Concerning Defendants’ Anticipated
`Motion to Dismiss
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`Your Honor:
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`This office represents Plaintiff Klauber Brothers, Inc. (“Klauber”) in the above-referenced case. We
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`write in compliance with Rules I(A) and IV(A) of Your Honor’s Individual Rules in response to Defendant
`Badgley Mischka, LLC and Saks Incorporated’s (collectively, “Defendants”) August 16, 2021 letter requesting
`a pre-motion conference. See Dkt. No. 17. The contemplated motion is without merit, as follows:
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`A.
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`Klauber’s direct copyright infringement claims are sufficiently plead
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`Klauber is a lace company that was founded in 1859 in Munich, Germany. The company operated there
`until it was seized by the Nazis during World War II. After the war ended, the company moved its headquarters
`to New York, New York, where it does business to this day. Klauber employs a design team to create unique
`and attractive lace designs and sells lace bearing those designs to its various customers in the fashion industry.
`Klauber’s copyrights were infringed when Defendantsa sold clothing featuring unauthorized knock-offs of
`Klauber’s original lace design 39092 X (the “Subject Design”) to the public.
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`The Copyright Act protects copyright owners like Klauber by granting them exclusive right to
`“reproduce, distribute, and publicly display copies of the work.” 17 U.S.C. §106.b To adequately allege
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`a Klauber has since learned that M.J.C.L.K., LLC, doing business as “Badgley Mischka”, may be the proper
`defendant instead of Badgley Mischka, LLC and will seek leave to amend its complaint to substitute this party,
`as reflected in the attached Exhibit 1.
`b These exclusive rights also include, inter alia, the right to prepare derivative works from the copyrighted
`material (17 U.S.C. §106(2)) and the right to distribute and sell product bearing the copyrighted work (17 U.S.C.
`§106(3)). To establish infringement, a claimant need only demonstrate the alleged infringers violated at least one
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`Case 1:21-cv-04523-PGG Document 18 Filed 08/19/21 Page 2 of 3
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`copyright infringement, a plaintiff need only claim “(1) ownership of a valid copyright and (2) infringement of
`the copyright by the defendant.” Hamil Am. Inc. v. GFI, 193 F.3d 92, 98 (2d Cir. 1999) (citations omitted).
`Infringement means that “(1) the defendant[s] ha[ve] actually copied the plaintiff’s work; and (2) the copying is
`illegal because a substantial similarity exists between the defendant’s work and the protectible elements of
`plaintiff’s.” Id. at 99 (quotations and citations omitted). Actual copying may be proved directly or indirectly.
`“[I]ndirect evidence of copying includes proof that the defendants had access to the copyrighted work and
`similarities that are probative of copying between the works.” Id. (emphasis added).
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`Here, Klauber has alleged that it owns a copyright registration covering the design at issue. (Complaint,
`¶ 11.) Klauber has also alleged that Defendants “without Plaintiff’s authorization […] created, sold,
`manufactured, caused to be manufactured, imported and/or distributed fabric and/or products incorporating
`fabric that bears artwork identical to or substantially similar to the Subject Design” (Complaint, ¶14.)
`Klauber’s allegations, taken together, satisfy the Hamil Am. Inc. requirements and are thus sufficient.
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`Defendants blatantly ignore the “striking similarity” between the designs at issue. Defendants argue that
`there are “dissimilar total concepts and overall expression and feel between the respective designs, including
`different positioning, different directions, different designs, different patterns for the repeating of motifs,
`different colors, different scalloping, and more.” But this self-serving description fails. Defendants fail to
`illustrate where the alleged different positioning, directions, designs, and scalloping are located on the designs
`or explain how the designs differ in any way. Conversely, Klauber provided a comparison of its design and the
`design exploited on the products at issue and alleged that the “comparisons make apparent that the elements,
`composition, arrangement, layout, and appearance of the design on the items is substantially similar to the
`design at issue.” (Complaint ¶¶15-16, Dkt. No. 1.) Thus, Defendants’ claim that “Klauber has failed to allege
`any specific facts that would support a finding that the allegedly infringing design is substantially similar to
`Klauber’s design” is without merit. Considering the virtual identicality between the designs at issue, which is
`striking enough to preclude the possibility of independent creation, and construing all evidence in favor of
`Klauber, as we must do at this stage, Klauber has sufficiently alleged striking similarity between the designs.
`Nevertheless, Klauber will seek leave to amend its complaint to include additional access allegations and a
`more detailed comparison between the two designs, as reflected in Paragraph 17 of its proposed First Amended
`Complaint (“FAC”), which is attached hereto as Exhibit 1.
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`B
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`Klauber’s claims of vicarious and contributory liability are sufficiently pled
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`As noted above, Klauber has adequately pled an underlying copyright violation. Its vicarious and
`contributory infringement claims are also sufficiently plead. Defendants groundlessly claim that “Klauber fails
`to properly plead any factual allegations showing that Defendants knew or could have known of the alleged
`direct infringement in real time, substantially participated in the alleged direct infringement, or exercised
`control over an unidentified party or parties several steps earlier in the chain of manufacture.” This is plainly
`false.
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`To allege vicarious copyright infringement, a plaintiff must allege that the defendant[s] “[1] had the
`right and ability to supervise the infringing activity and ... [2] ha[ve] a direct financial interest in such
`activities.” Arista Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d 398, 434–35 (S.D.N.Y. 2011) (quoting
`Gershwin Pub. Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). Here, Klauber has
`alleged that Defendants “knowingly induced, participated in, aided and abetted in and profited from the illegal
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`exclusive right granted to copyright holders under 17 U.S.C. § 106. See 17 U.S.C. § 501(a) (infringement occurs
`when alleged infringer engages in activity listed in § 106).
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`Case 1:21-cv-04523-PGG Document 18 Filed 08/19/21 Page 3 of 3
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`reproduction and/or subsequent sales of garments featuring the Subject Design by, inter alia, directing the
`manufacture of or selection and sourcing of materials and designs for the Infringing Products or had agreements
`requiring the manufacture or sourcing of certain materials or designs, with the ability and right to supervise,
`direct, cancel, or otherwise modify its orders for the manufacture or purchase of the Infringing Products...
`Defendants had direct oversight or involvement in the sourcing of materials for and manufacture of the
`Infringing Products and thus knew, induced, caused, or materially contributed to the infringement of Plaintiff’s
`rights as alleged herein” (Complaint, ¶ 26.) Klauber also alleged that Defendants are “vicariously liable for the
`infringement [alleged in the Complaint] because they had the right and ability to supervise the infringing
`conduct and because they had a direct financial interest in the infringing conduct.” (Complaint, ¶ 28.) The exact
`relationship between the Defendants is presently unknown, but as Klauber has alleged, the Defendant retailers
`of the Infringing Products surely had the right to oversee their orders for the manufacture or purchase of the
`Infringing Products. (Complaint, ¶ 27.) This is sufficient to assert vicarious infringement.
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`Additionally, “one who, with knowledge of the infringing activity, induces, causes or materially
`contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.” Gershwin
`Pub. Corp., 443 F.2d at 1162. As noted previously, Klauber specifically alleged that it sampled and sold lace
`bearing the Subject Designs “to numerous parties in the fashion and apparel industries.” (Complaint, ¶ 13.) And
`as noted above, Klauber has alleged access. (Complaint, ¶ 20.) At least some Defendants had knowledge of
`Klauber’s ownership, particularly given the parties’ litigation history. Thus, Klauber’s claims of secondary
`vicarious and/or contributory liability are sufficiently pled.
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`Finally, any further details regarding the foregoing claims are solely within the possession of Defendants
`and as a result Klauber is not required to plead same. See Friedman v. Live Nation Merch., Inc., 833 F.3d 1180,
`1189 (9th Cir. 2016)(even at the summary judgment stage, a party need not submit facts solely within their
`adversary’s possession, a rule that “accords with ... our general precedent that fairness dictates that a litigant
`ought not have the burden of proof with respect to facts particularly within the knowledge of the opposing
`party.”)(citation omitted). The secondary liability claims are adequately pled.
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`Defendants’ proposed motion does not appear to have merit. As such, it is respectfully requested that
`Defendants’ request to file said motion be declined, or, in the alternative, that Klauber be allowed to amend its
`complaint to cure the perceived deficiencies and obviate the need for, or streamline, Defendants’ motion
`practice.
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`Thank you for your attention to this matter.
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`Respectfully submitted,
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` By: /s/ Scott Alan Burroughs
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`Scott Alan Burroughs
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`Laura M. Zaharia
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`DONIGER / BURROUGHS
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`For the Plaintiff
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