ID Tech LLC v. Bayam Grp.

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ID TECH LLC, d/b/a FROST NYC, and NISON KAYKOV, Plaintiffs, v. BAYAM GROUP, INC. d/b/a BAYAM JEWELRY and TALHA BAYAM, Defendants.

No. 19-cv-08439 (VF)

United States District Court, S.D. New York

March 29, 2023

OPINION & ORDER

VALERIE FIGUEREDO, UNITED STATES MAGISTRATE JUDGE.

ID Tech LLC, d/b/a Frost NYC, and Nison Kaykov (collectively, the “Plaintiffs”) commenced this action against Bayam Group, Inc., d/b/a Bayam Jewelry, and Talha Bayam (collectively, the “Defendants”) for (1) false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a); (2) trade dress infringement under the Lanham Act id.; (3) injury to business reputation under New York law^[1]; (4) trade dress infringement and unfair competition under New York common law; (5) piercing of the corporate veil; and (6) copyright infringement under the Copyright Act, 17 U.S.C. §§ 106, et seq. Defendants have moved for summary judgment on all of Plaintiffs' remaining claims pursuant to Federal Rule of Civil Procedure 56. For the reasons that follow, Defendants' motion is GRANTED.

BACKGROUND

A. Factual Background^[2]

Plaintiff Nison Kaykov is cofounder of Plaintiff ID Tech LLC, d/b/a Frost NYC, (“Frost”), and Defendant Talha Bayam is the sole owner and chief executive officer of Defendant Bayam Group, Inc., d/b/a Bayam Jewelry, (“Bayam”). See R. 56.1 Statement ¶¶ 1,9. Frost and Bayam are online retailers that sell jewelry, including chains, pendants, and bracelets, supplied by jewelry wholesalers. Id. ¶¶ 3, 11-12, 45. Frost sells jewelry through an online store with a URL address of “www.frostnyc.com” (the “Frost Website”); Bayam sells jewelry through an online store with a URL address of “www.bayamjewelry.com” (the “Bayam Website”). Id. ¶¶ 2, 10. Plaintiffs launched the Frost Website at the beginning of 2016 and became aware of the Bayam Website approximately three and a half years later. Id. ¶¶ 46, 47.

Both the Frost Website and Bayam Website were created, at least in part, using templates provided by Shopify, an e-commerce company. Id. ¶¶ 4, 13-14. The photographs of the jewelry on the Frost Website, which were taken by independent contractors, were not created by Plaintiffs. Id. ¶ 35. The Frost Website has a white background and displays the Frost logo prominently. Id. ¶ 8. The Bayam Website prominently displays the Bayam logo. Id. ¶ 16. Both the Frost and Bayam Websites house various sub-pages, where jewelry products are displayed and offered for sale (the “Product Pages”). Id. ¶¶ 12, 33. Each site's Product Pages contain features that allow customers to select and view different jewelry weights and dimensions, and ultimately purchase a product. Id. ¶¶ 5, 6, 17, 27.

B. Procedural History

Plaintiffs initiated this action in New York Supreme Court, which Defendants removed = to this Court on September 11, 2019. See ECF No. 1. On September 3, 2020, Plaintiffs filed an amended complaint, asserting claims against Defendants for (1) false designation of origin in violation of the Lanham Act; (2) trade dress infringement in violation of the Lanham Act; (3) injury to business reputation; (4) common law trade dress infringement and unfair competition; (5) piercing of the corporate veil; and (6) copyright infringement under the Copyright Act. See Plaintiff's Amended Complaint (“Am. Compl.”), ECF No. 36. On December 17, 2020, Magistrate Judge Debra Freeman entered an order setting April 1, 2022, as the deadline for the completion of all discovery. See ECF No. 66. In that order, the Court also set the deadline for summary judgment motions as May 6, 2022. See id. Discovery closed on April 1, 2022. See id.

On May 3, 2022, the parties stipulated to a dismissal with prejudice of all claims against Defendant Talha Bayam, as well as dismissal of the fifth cause of action in the Amended Complaint against Defendant Bayam Group, characterized as an action “to pierce the corporate veil.” See Stipulation, ECF No. 73. The stipulation did not include dismissal of Plaintiffs' Lanham Act claims for false designation of origin and trade dress infringement, or common law claim for trade-dress infringement and unfair competition. Defendants subsequently moved for summary judgment on Plaintiffs' (1) claim for false designation of origin under the Lanham Act; (2) trade-dress infringement claim under the Lanham Act; (3) claim for injury to business reputation; (4) common law, trade-dress infringement and unfair-competition claims; and (5) copyright-infringement claim under the Copyright Act. See Defendants' Mem. of Law in Support of Mot. for Summary Judgment, ECF No. 75 (“Defs.' Mem.”).

On March 2, 2023, the Court held a conference in a related case involving the same parties and same attorneys, Bayam Group, Inc. v. ID Tech LLC, No. 22-CV-08910-VF. At the conference, the parties confirmed that Plaintiffs had asked Defendants, on March 30, 2022, to stipulate to a dismissal of the Lanham Act claims and common law trade-dress infringement claims, and that Defendants had not agreed to stipulate to dismissal of these claims. See Letters from Steven M. Lester and Mark Makhail, ECF Nos. 90, 91. After Defendants refused to stipulate to a dismissal of those claims, Plaintiffs did not move under Federal Rule of Civil Procedure 41(a)(2) for dismissal by court order. Defendants explained at the conference that they refused to stipulate to dismissal of the Lanham Act claims because they intended to move for summary judgment and, if they prevailed, to file a request for attorneys' fees. Plaintiffs' opposition to Defendants' motion for summary judgment addresses the merits of only the copyright claim and unfair-competition claim based on copyrighted material. See Plaintiffs' Mem. of Law in Opposition to Mot. for Summary Judgment (“Pls.' Mem.”), ECF No. 83.

LEGAL STANDARD

Summary judgment is warranted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Gallo v. Prudential Residential Servs., L.P., 22 F.3d 1219, 1223 (2d Cir. 1994). “[T]he trial court's task at the summary judgment motion . . . is carefully limited to discerning whether there are any genuine issues of material fact to be tried, not to deciding them.” Gallo, 22 F.3d at 1224. The moving party bears the initial burden of demonstrating an entitlement to judgment as a matter of law and identifying the matter or matters that “it believes demonstrate the absence of a genuine issue of material fact.” Celotex, 477 U.S. at 323; Jaramillo v. Weyerhaeuser Co., 536 F.3d 140, 145 (2d Cir. 2008).

A fact is material when it “might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute of fact is genuine “if the evidence is such that a jury could return a verdict for the nonmoving party.” Gayle v. Gonyea, 313 F.3d 677, 682 (2d Cir. 2002) (quoting Anderson, 477 U.S. at 248.). In determining whether there are genuine issues of material fact, the Court is “required to resolve all ambiguities and draw all permissible factual inferences in favor of the party against whom summary judgment is sought.” Johnson v. Killian, 680 F.3d 234, 236 (2d Cir. 2012) (quoting Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)) (internal quotation marks omitted); Holcomb v. Iona Coll., 521 F.3d 130, 132 (2d Cir. 2008) (noting that the Court must view all facts “in the light most favorable” to the non-moving party). However, a court is not required to draw any inference that is “blatantly contradicted by the record, so that no reasonable jury could believe it.” Scott v. Harris, 550 U.S. 372, 380 (2007).

If the movant meets its burden, “the nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment.” Jaramillo v. Weyerhaeuser Co., 536 F.3d 140, 145 (2d Cir. 2008). “[A] party may not rely on mere speculation or conjecture as to the true nature of the facts to overcome a motion for summary judgment.” Hicks v. Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal quotation marks and citation omitted). Rather, to survive a summary judgment motion, the opposing party must establish a genuine issue of fact by “citing to particular parts of materials in the record.” Fed.R.Civ.P. 56(c)(1)(A); Wright v. Goord, 554 F.3d 255, 266 (2d Cir. 2009). For a genuine dispute regarding a material fact to warrant a jury trial, there must be sufficient evidence supporting the claimed factual dispute “to require a jury or judge to resolve the parties' differing versions of the truth at trial.” Anderson, 477 U.S. at 249. “When no rational jury could find in favor of the nonmoving party because the evidence to support its case is so slight, there is no genuine issue of material fact and a grant of summary judgment is proper.” Gallo, 22 F.3d at 1224.

DISCUSSION

A. Plaintiffs' Claim for Copyright Infringement

Plaintiffs' sixth cause of action asserts that Defendants infringed on Plaintiffs' “copyrighted material” relating to elements of the Frost Website, including images, site layout, graphics, photographs, and textual content. See Am. Compl. ¶¶ 17, 21-22, 92, 94-95. To prevail on their claim for copyright infringement, Plaintiffs must establish two elements: “(i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work.” Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (citing Feist Publ'ns Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) and Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir.1998)). To demonstrate unauthorized copying, a plaintiff must show that the defendant infringed on the...