Lopez v. Gap, Inc.

• Decision Date: 02 August 2012
• Docket Number: No. 11 Civ. 3185(PAE).,11 Civ. 3185(PAE).
• Citation: 883 F.Supp.2d 400
• Parties: Robert G. LOPEZ, Plaintiff, v. The GAP, INC. et al., Defendants.
• Court: U.S. District Court — Southern District of New York

883 F.Supp.2d 400

Robert G. LOPEZ, Plaintiff,

v.The GAP, INC. et al., Defendants.

No. 11 Civ. 3185(PAE).

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

Aug. 2, 2012.

Nivritha Casi Ketty, Robert W. Lehrburger, Solmaz Fatemeh Firoz, Patterson, Belknap, Webb & Tyler LLP, New York, NY, for Plaintiff.

James David Weinberger, Anna Patricia Leipsic, Fross Zelnick Lehrman & Zissu, P.C., New York, NY, for Defendants.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge.

Plaintiff Robert G. Lopez brings this claim against The Gap, Inc., Gap International Sourcing, Inc., Old Navy, LLC, and Old Navy Apparel, LLC (collectively, “Defendants”). Lopez alleges that Defendants infringed his ownership and use rights in the marks “Lower East Side,” “LES NYC,” and “LES,” resulting in unfair competition and false designation of origin in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and common law trademark infringement and unfair competition in violation of New York State law. Lopez seeks to enjoin Defendants from using the allegedly infringing marks, to destroy any remaining materials bearing the marks, and to notify past and present customers that Defendants have been improperly using the marks. Lopez also seeks to disgorge Defendants of the profits arising from their use of the allegedly infringing marks. Finally, he seeks treble damages, punitive damages, and attorney's fees.

Defendants move for summary judgment as to all claims. For the reasons set forth below, Defendants' motion is granted.

I. Background¹A. L.E.S. Clothing Co.

This case involves one neighborhood, two t-shirts, and three marks. Lopez, a resident of the Lower East Side neighborhood of Manhattan, started doing business as L.E.S. Clothing Co. in 1999.² Defs. 56.1 ¶ 2; Pl. 56.1 ¶ 1. In an effort to create designs that customers perceive as representing the Lower East Side, Lopez began selling t-shirts bearing the marks “Lower East Side” (the “Lower East Side Mark”) and “LES NYC” (the “LES NYC Mark”). Defs. 56.1 ¶ 12; Pl. 56.1 ¶¶ 2, 12. The Lower East Side Mark is a mark consisting of the words “Lower East Side,” with “Lower” on line one, “East” on line two, and “Side” on line three. See infra p. 409. There is a solid line above “Lower,” and a solid line below “Side.” The LES NYC Mark consists of the phrase “LES NYC” inside a circle of stars. See infra p. 409.

In 2006 or 2007, Lopez expanded his product line to include various other products, including sweatshirts, vests, and caps. Defs. 56.1 ¶ 6; Pl. 56.1 ¶ 6. In December 2010, he also began using a third mark, the “LES Mark.” Lopez Decl. ¶ 11. The LES Mark consists of the three capital letters: “L,” “E,” and “S.” See id. Ex. 5. The letters appear in a design in which the lower portion of the “L” serves as the middle portion of the “E” and the lower portion of the “E” serves as the bottom portion of the “S.” See infra p. 409. The LES Mark appears with a star in the upper right corner, near the top of the “S.” These three marks—the Lower East Side Mark, the LES NYC Mark, and the LES Mark—form the basis of this action.

Lopez's Three Marks

IMAGE

Before selling his products in a retail store in 2012, Lopez sold his merchandise on the street, in barbershops, and in locally owned clothing stores. See Defs. 56.1 ¶ 25; Pl. 56.1 ¶ 25.³ He also made occasional sales through a PayPal account beginning in 2006, Lopez Decl. ¶ 19, and using a toll-free number that he purchased in 2009, id. ¶ 20. L.E.S. Clothing Co. has never had any employees. Defs. 56.1 ¶ 7; Pl. 56.1 ¶ 7. Instead, Lopez has occasionally solicited help from and compensated various individuals, some of whom are his friends and acquaintances, to design, create, print, and market his apparel. Pl. 56.1 ¶¶ 7–8. In 2010, Lopez also purchased the domain name www. lesclothing. com, a website that allows potential consumers to view and purchase his products. Lopez Decl. ¶ 21.

Since the inception of L.E.S. Clothing Co., the majority of Lopez's business transactions have been in cash. Defs. 56.1 ¶ 25; Pl. 56.1 ¶ 25. In fact, before February 2012, Lopez did not create business records of his sales. Pl. 56.1 ¶ 27. As partial documentation of his sales during this time period, he has produced sales receipts totaling $1,129.08 from Paypal orders: $40.00 from 2007; $54.80 from 2008; and the remainder from 2011. Id.; Weinberger Decl. Ex. E. Although he does not know the precise number of clothing units sold for any particular year, Lopez estimates that his annual sales ranged from $6,000 to $10,000 between 2007 and 2011, never exceeding $10,000 for any given year. Defs. 56.1 ¶¶ 35, 40; Pl. 56.1 ¶¶ 35, 40. Finally, the 2010 Schedule C filed with the IRS for L.E.S. Clothing Co. shows sales totaling $2,000 for 2010. Defs. 56.1 ¶ 36; Pl. 56.1 ¶ 36.

Before commencing this action, Lopez took steps to protect his Lower East Side Mark and his LES NYC Mark. In 2007, he obtained a New York State trademark registration for the Lower East Side Mark; in 2008, he received a New York State trademark registration for the LES NYC Mark. Lopez Decl. Exs. 2, 4. After the commencement of this action, on August 31, 2011, Lopez also obtained a New York State trademark registration for the LES Mark. Id. Ex. 5. The United States Patent and Trademark Office (“USPTO”), however, refused Lopez's federal trademark application for the LES NYC Mark on September 19, 2011, noting that the “proposed mark is primarily geographically descriptive of the origin of the applicant's goods.” Weinberger Deck Ex. I. As of the date of this Order, Lopez's USPTO application is suspended. Id. Ex. J; see USPTO website, http:// tarr. uspto. gov, serial no: 85335314 (last visited July 26, 2012).

On a number of occasions, Lopez has sent cease-and-desist letters to website owners selling non-Lopez produced “Lower East Side” and “LES” apparel. Defs. 56.1 ¶ 48; Pl. 56.1 ¶ 48. Lopez is also no stranger to the judicial system. In addition to this lawsuit, he has brought five pro se lawsuits, against: Payless Shoesource Worldwide, Inc.; Aeropostale, Inc. and Aeropostale Procurement Company, Inc.; J. Crew International, Inc., J. Crew Group, Inc., and J. Crew Inc.; Urban Outfitters, Inc. and Fifth Sun, LLC; and Coat of Arms, LLC, Hanesbrands, Inc., and Mitchell & Ness Nostaligia, Co. Defs. 56.1 ¶ 50; Pl. 56.1 ¶ 50.⁴ All lawsuits were based on Lopez's claimed rights in the Lower East Side Mark and the LES NYC Mark. In none of these prior lawsuits did a court reach the merits of any claim by Lopez to a right in the marks. Defs. 56.1 ¶ 53; Pl. 56.1 ¶ 53.

With respect to advertising, since 1999, Lopez has promoted his products in a variety of ways, including: distributing flyers and stickers of his marks, Lopez Decl. Exs. 15–18; wearing his products to events “virtually every day since late 2006,” Pl. 56.1 ¶ 22; and advertising in at least two magazines, id.⁵ Aspiring musicians have worn Lopez's clothing during performances, Lopez Decl. Ex. 25, in self-made videos, id. Ex. 27, and in the online publication, “Hip Hop Game,” id. Ex. 28. Lopez, however, has not maintained records of advertising expenditures, nor conducted market research to determine the number of consumers who are aware of his brand. Defs. 56.1 ¶¶ 22–23; Pl. 56.1 ¶¶ 22–23. Additionally, under a January 2011 settlement agreement with another retailer, Lopez is restricted from conducting advertising, marketing, promotion, or sales activity outside New York State as to items bearing the Lower East Side Mark, or confusingly similar variations thereof. Weinberger Decl. Ex. K. The settlement also prohibits Lopez from ever filing a federal trademark application for the term “Lower East Side.” Id.

Lopez's lawsuits have been covered by several news sources. Taken together, this coverage has provided “the largest amount of press his business has received for any one event or related group of events.” Defs. 56.1 ¶ 64; Pl. 56.1 ¶ 64.B. Old Navy

Old Navy Apparel, LLC and Old Navy, LLC (together, “Old Navy”)—subsidiaries of The Gap, Inc.—have sold casual apparel under the Old Navy brand since 1994. Defs. 56.1 ¶ 65; Pl. 56.1 ¶ 65. Old Navy products are sold nationwide both in Old Navy's full-priced retail store and through Old Navy's website. Defs. 56.1 ¶ 66; Pl. 56.1 ¶ 66. Each Old Navy product displays the “Old Navy” mark on a hangtag and also on the interior label. Defs. 56.1 ¶ 67; Pl. 56.1 ¶ 67.

This case involves the designs used by Old Navy on two of its casual t-shirts. On December 28, 2009, Old Navy began offering a women's t-shirt displaying the words “Lower East Side NYC” (the “Women's T–Shirt”). Defs. 56.1 ¶ 70; Pl. 56.1 ¶ 70. The letters appeared in cursive script, adjacent to a multi-colored, pastel flower. DeMartini Decl. Ex. B; see infra p. 411. In January 2011, Old Navy also began carrying a men's t-shirt (the “Men's T–Shirt”). Defs. 56.1 ¶ 70; Pl. 56.1 ¶ 70. The Men's T–Shirt is a sporty shirt, bearing the logo of a (fictitious) “Lower East Side Sports Club.” DeMartini Decl. Ex. A. At the center of the Men's T-shirt there are three overlapping letters—“L,” “E,” and “S.” The lower portion of the “L” runs through the middle portion of the “E,” and the “S” overlaps portions of both the “L” and the “E.” Id.⁶ Unlike Lopez's LES Mark, the letters do not interlock. See infra p. 411. The overlapping letters appear in the center of a circle; the circle is comprised of the phrases “Lower East Side,” “Sport Club,” and “New York.” DeMartini Decl. Ex. A. Although Old Navy no longer carries either t-shirt, Old Navy sold a combined total of 71,522 units of the t-shirts while they were in stock. Defs. 56.1 ¶ 71; Pl. 56.1 ¶ 71.

Old Navy's T–Shirts

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C. Procedural History

In April 2011, Lopez learned that Old Navy was selling the Men's T–Shirt. ⁷ On May 5, 2011, Lopez, proceeding pro se, filed this action (Dkt. 1). The Complaint stated four causes of action: (1) federal trademark infringement under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (2) federal...