Hubbell Inc. v. Pass & Seymour, Inc.

• Decision Date: 18 May 1995
• Docket Number: No. 94 Civ. 7631 (RWS).,94 Civ. 7631 (RWS).
• Citation: 883 F. Supp. 955
• Parties: HUBBELL INCORPORATED, Plaintiff, v. PASS & SEYMOUR, INC. and Legrand, S.A., Defendants.
• Court: U.S. District Court — Southern District of New York

883 F. Supp. 955

HUBBELL INCORPORATED, Plaintiff, v. PASS & SEYMOUR, INC. and Legrand, S.A., Defendants.

No. 94 Civ. 7631 (RWS).

United States District Court, S.D. New York.

May 18, 1995.

COPYRIGHT MATERIAL OMITTED

Darby & Darby, New York City (Martin E. Goldstein, Ira Jay Levy, of counsel), for plaintiff.

Zuckerman, Spaeder, Goldstein, Taylor & Kolker, New York City (Lisa A. Cahill, of counsel), for defendants.

Gadsby & Hannah by Paul F. Kilmer, Thomas W. Brooke, Robert F. Garcia, Jr., Washington, DC, of counsel, for defendants.

OPINION

SWEET, District Judge.

Defendants Pass & Seymour ("Pass") and Legrand S.A. ("Legrand") have moved to dismiss the federal and common law trade dress claims of Plaintiff Hubbell Incorporated ("Hubbell") pursuant to Fed.R.Civ.Pro. 12(b)(6). In addition, Legrand has moved to dismiss the action against it for lack of subject matter jurisdiction, lack of personal jurisdiction and lack of venue. In the alternative, Legrand moves for a change of venue to the Northern District of New York. Pass moves to dismiss the action for lack of venue pursuant to 12(b)(3) or, in the alternative, to transfer the claims to the Northern District of New York. Hubbell has moved to dismiss Count II of Pass' counterclaim (Intentional Interference with Business Relationships) pursuant to Rule 12(b)(6). For the reasons set forth below, all motions are denied.

The Parties

Plaintiff Hubbell is a Connecticut corporation that manufactures electrical products. Its principal place of business is at 584 Derby Milford Road, Orange, Connecticut.

Defendant Pass is a New York Corporation doing business in the State of New York and within this judicial district, having its principal place of business at P.O. Box 4822, Syracuse New York.

Defendant Legrand is a corporation organized and existing under the laws of the country of France.

Prior Proceedings

A complaint was filed in this action on October 20, 1994 (the "original complaint") and was later amended on December 14, 1994. The original complaint included two defendants, New York City Distributors of Pass and Legrand as defendants. According to the Plaintiff, after the suit was filed, and before Hubbell either served or notified the Distributors of the existence of the lawsuit, Hubbell learned that the Distributors, while sellers of Pass' and Legrand's product line, did not yet have available the products at issue. Hubbell filed an amended complaint (the "complaint") which does not name the Distributors.

The complaint alleged three claims: 1) violation of § 32 of the Trademark Act of 1946, 15 U.S.C. § 1114; 2) violation of § 43(a) of the Trademark Act of 1946 and 3) violation of unfair competition under the common law of the State of New York.

Pass filed an answer on December 23, 1994 which included affirmative defenses and three counter claims. The counterclaims sought: 1) declaratory relief as to the sales of connectors and plugs "out of the box"; 2) damages for intentional interference with business relationships; 3) cancellation of the Federal Trademark Registration for the designation "5965VY."

The Defendants' motions were filed in December 1994. Hubbell's motion was filed on January 13, 1995. All motions were argued on February 8, 1995. Defendants submitted a Supplemental Memorandum on May 15, 1995 and the motions were considered fully submitted at that time.

The Facts

For the last seventeen years Hubbell has sold various connectors and plugs in, what it terms, its "famous and highly distinctive `Valise' Trade Dress." Hubbell claims that since the introduction of the Valise Trade Dress, sales of these connectors and plugs have exceeded 33 million units and $50 million. The subject of this litigation is a particular connector and plug, which has been assigned the number 5965VY. This number appears on the connector. Hubbell claims that this number is a federally registered trademark of Hubbell.

The plug and connector had a design patent that has expired. There are no allegations that Defendants began to market their similar product prior to the expiration of the patent.

According to the complaint, the Defendants recently changed their line of plugs and connectors such that they are "virtually indistinguishable" from the "famous" Hubbell Valise Trade dress. According to Hubbell, the Defendants further aggravated the situation by misappropriating Hubbell's federally registered trademark 5965VY, and applying it directly to the virtually indistinguishable product.

Discussion

Motions to Dismiss the Trade Dress Claims Are Denied

On a Rule 12(b)(6) motion to dismiss, the factual allegations of the complaint are presumed to be true and all factual inferences must be drawn in the plaintiffs' favor and against the defendants. See Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S.Ct. 1683, 1686, 40 L.Ed.2d 90 (1974); Cosmas v. Hassett, 886 F.2d 8, 11 (2d Cir.1989); Dwyer v. Regan, 777 F.2d 825, 828-29 (2d Cir.1985). Accordingly, the factual allegations set forth and considered herein are taken from the Plaintiff's Complaint and do not constitute findings of fact by the Court. They are presumed to be true only for the purpose of deciding the present motion to dismiss.

Rule 12(b)(6) imposes a substantial burden of proof upon the moving party. A court may not dismiss a complaint unless the movant demonstrates "beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." H.J., Inc. v. Northwestern Bell Tel. Co., 492 U.S. 229, 249-50, 109 S.Ct. 2893, 2905-06, 106 L.Ed.2d 195 (1989); Hishon v. King & Spalding, 467 U.S. 69, 73, 104 S.Ct. 2229, 2232-33, 81 L.Ed.2d 59 (1984); Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 101-02, 2 L.Ed.2d 80 (1957).

Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1) protects trade dress from infringement when:

any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person....

15 U.S.C. § 1125(a).

The "trade dress" of a product consists of "its total image", composed of "features such as size, shape, color or color combinations, texture, or graphics." Paddington Corp. v. Attiki Importers & Distribs., 996 F.2d 577, 582 (2d Cir.1993), as quoted in Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 70 (2d Cir.1994). Such trade dress protection has been extended to product design and may include product configurations. Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir.1985).

As the Second Circuit has explained:

To prevail on a trade dress claim, the plaintiff must demonstrate that the product's appearance has acquired "secondary meaning" — the consuming public immediately identifies the product with its maker — and that purchasers are likely to confuse the imitating goods with the originals. Even if the plaintiff establishes these elements, the defendant may still avoid liability by demonstrating that the imitated features are "functional" — essential to the basic purposes the article is meant to serve. Two Pesos, Inc. v. Taco Cabana, Inc., ___ U.S. ___, 112 S.Ct. 2753, 2760, 120 L.Ed.2d 615 (1992); Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 168 (2d Cir.1991) (citations omitted).

Hubbell has alleged sufficient facts to make out the elements of a trade dress infringement claim. In Count II of the Complaint Hubbell states:

By its acts alleged herein, defendant has falsely designated the origin or sponsorship of its electrical connectors and plugs and has caused and will cause them to be advertised and sold in commerce, in violation of § 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a)

Complaint at ¶ 23.

This Count is supported by the allegations of paragraphs 6-11 and 15-19 of the Amended Complaint (which must be taken as true for the purposes of this motion), which support (1) the inherently distinctive nature of the Valise Trade Dress; (2) sales, advertising, extent of use, and exclusivity sufficient to establish, as an alternative, the existence of secondary meaning in the Valise Trade Dress; and (3) intentional actions by Pass and Legrand in violation of these protectable rights likely to cause confusion among consumers. Pass has not challenged any of the specific allegations of the Complaint.

The core issue raised by Defendants in seeking a motion to dismiss this complaint is that Hubbell is unlawfully seeking to extend expired patent monopolies for its plugs and connectors through the device of the Lanham Act.

The different purposes of the two sets of laws supports the position that trade dress protection is not as a matter of law unavailable to products for which design patents have expired.

The purpose of the federal design patent law is "to encourage the invention of ornamental designs." In re Honeywell Inc., 497 F.2d 1344, 1348 (C.C.P.A.), cert. denied, 419 U.S. 1080, 95 S.Ct. 669, 42 L.Ed.2d 674 (1974); see Lon Tai Shing Co. v. Koch & Lowy, 19 USPQ.2d 1081, 1991 WL 170734 (S.D.N.Y.1990).

More specifically, the Court in Lon Tai Shing explained that:

More broadly viewed, the patent laws have three related purposes: "First, patent law seeks to foster and reward invention; second, it promotes disclosure of inventions, to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to assure that ideas in the public domain remain there for the free use of the public." Aronson v. Quick Point Pencil

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