Opinion
98 Civ. 2489 (HB).
May 16 2000.
OPINION AND ORDER
Plaintiff Henry Adams brought this action against Westminster International Company, Inc. and Harriet Carter Gifts, Inc. (collectively, the "defendants"), alleging patent infringement and violations of the Lanham Act, 15 U.S.C. § 1125 (a), as well as claims under the New York General Business Law § 349 and § 350. The patent infringement claims were previously dismissed, and defendants now move for summary judgment on plaintiff's remaining claims. For the reasons set forth below, the defendants' motion is GRANTED, but defendants' requests for fees and costs is denied.
This action was filed on April 7, 1998, by Adams and a co-plaintiff, Edward Holman (the original inventor of the product at issue.) After litigation commenced, defendants purchased the patent in suit from Holman, who then settled his claims against defendants. The Court thereafter dismissed plaintiff's patent infringement claims, but allowed plaintiff Adams to proceed on his Lanham Act claims. Adams v. Westminster, et al., No. 98 Civ. 2489, 1999 WL 596 (S.D.N.Y. August 5, 1999).
DISCUSSION
Summary judgment will be granted only when there are no genuine issues of fact such that the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c). The Court will construe the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). While the burden to demonstrate that no genuine issue of material fact rests solely with the moving party, FDIC v. Giammetti, 34 F.3d 51, 54 (2d Cir. 1994), once the moving party has provided sufficient evidence to support a motion for summary judgment, the opposing party must "set forth specific facts showing that there is a genuine issue for trial" and cannot rest on "mere allegations or denials." Rule 56(e); see Rexnord Holdings, Inc. v. Biderman, 21 F.3d 522, 525-26 (2d Cir. 1994). A party's "bald assertion," completely unsupported by evidence, is not sufficient to overcome a motion for summary judgment. Carey v. Crescenzi, 923 F.2d 18, 21 (2d Cir. 1991).
Plaintiff presses two claims in his response papers: (1) a claim under the Lanham Act, 15 U.S.C. § 1125 (a); and (2) a claim under the New York Deceptive Practices Act, Section 349 of New York General Business Law.
Plaintiff's complaint alleged a cause of action for false advertising under § 350 of the New York General Business Law, and defendants addressed this claim in the motion for summary judgment. Section 350 of the New York General Business Law provides that "[f]alse advertising in the conduct of any business, trade or commerce or in the furnishing of any service in this state is hereby declared unlawful." While it appears that there is a private right of action under Sections 349 and 350, see Small v. Lorillard Tobacco Co., Inc., 252 A.D.2d 1, 16, 679 N.Y.S.2d 593, 604 (1st Dep't 1998), plaintiff fails to address or even mention his claim under Section 350 in his response papers and, consequently, it must be considered withdrawn. Even if plaintiff intended to keep this claim, it is clear that he has failed to produce any evidence in support of this claim and there are no genuine issues of fact for trial. Further, had the claim survived, I would decline supplemental jurisdiction since this is the sole remaining claim.
A. Claim for Lanham Act Violations
Plaintiff claims that defendants infringed his trade dress rights in the "puzzle toy" product at issue. To state a claim for trade dress infringement of a product design under § 43(a) of the Lanham Act, as amended, 15 U.S.C. § 1125 (a), a plaintiff must prove: (I) that its trade dress has acquired secondary meaning; and (2) that there is a likelihood of confusion with defendant's trade dress. See 15 U.S.C. § 5 1125(a); Wal-Mart Stores, Inc. v. Samara Bros. Inc., 120 S.Ct. 1339, 1346 (2000) (a "product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning"). Defendants claim that plaintiff has failed to produce any evidence in support of his claim and has otherwise failed to establish any basis for his claim. Indeed, defendants note that plaintiff's responses to its discovery requests establish that no Lanham Act violation exists. In response, rather than specific facts, plaintiff asserts in a conclusory manner that the "sale of pirated goods" is a "per se violation" of the Lanham Act.
As an initial matter, plaintiff's response begs the question as to whether these goods are "pirated" and is unsupported by any evidence. More importantly, plaintiff fails to point to any evidence to support the essential elements of a claim under § 43(a) of the Lanham Act — that is, did his product acquire a secondary meaning and is there is a likelihood of confusion? Because plaintiff has failed to produce any specific facts in support of this claim, I find that there are no genuine issues of material fact for trial.
B. Claim under Section 349 of the New York General Business Law
Similarly, plaintiff fails to provide any factual support for his claim that defendants violated Section 349 of the New York General Business Law. Rather, plaintiff merely states in conclusory fashion that defendants' "sale of pirated goods is a deceptive business practice," without providing any evidence to support this assertion. Accordingly, there are no genuine issues of material fact for trial on this claim.
C. Request for Fees and Costs Under 28 U.S.C. § 1927
Defendants request that this Court order plaintiff to pay their fees and costs under 28 U.S.C. § 1927. Section 1927 provides that an attorney who "so multiplies the proceeding in any case unreasonably and vexatiously may be required by the court to satisfy personally the excess costs, expenses, and attorneys' fees reasonably incurred because of such conduct." This provision is intended to deter unnecessary delays in litigation by imposing upon attorneys an obligation to avoid dilatory tactics. Vacco v. Operation Rescue Nat'l, 80 F.3d 64, 72 (2d Cir.), cert. denied, 519 U.S. 825 (1996). The imposition of costs and fees under this section requires a finding of bad faith. Id. While this Court finds that plaintiff has failed to produce sufficient evidence in support of his claims, I cannot find at this time that he was acting in bad faith by pursuing those claims. Accordingly, defendants' request for fees and costs is denied.
CONCLUSION
Defendants' motion for summary judgment is hereby GRANTED in its entirety, but defendants' request for fees and costs under 28 U.S.C. § 1927 is denied. The Clerk of the Court is instructed to close this case.
SO ORDERED.