IP Law Daily, COPYRIGHT—S.D.N.Y.: Lace designer’s complaint put defending manufacturer on notice of infringement claims, (May 17, 2023)

By Kevin M. Finson, J.D.

The pleading standard for identifying infringing products was clearly met because the designer included with the complaint photographs of the allegedly infringing manufacture’s own website listings for the accused products.

A designer of lace adequately stated a claim for copyright infringement against a clothing manufacturer, the federal district court in New York City has decided. The manufacturer’s contention that it was not put on fair notice of which products infringed—despite the complaint including both photographs and website sales listings for each product—was “bizarre,” in the court’s view, and the manufacturer did not show that the lace designer failed to meet the requisite pleading standard (Tianhai Lace Co., Ltd. v. ASOS, PLC, May 16, 2023, Abrams, R.).

Tianhai Lace Co., Ltd. and several related entities (collectively, Tianhai) were designers and sellers of decorative lace with a large portfolio of original lace designs. The portfolio included five specific designs which were registered with the Copyright Office. Tianhai brought suit against ASOS, PLC and several related entities (collectively, ASOS), alleging copying of the registered designs on ASOS’s clothing products in violation of the Copyright Act and the New York Deceptive Trade Practices Act. ASOS moved to dismiss.

Copyright infringement—specificity of pleadings. ASOS argued that the copyright infringement claims failed to give fair notice of which specific products allegedly infringed. The court noted that the complaint contained a detailed table with close-up photographs of nine ASOS products containing the claimed lace designs, as well copies of ASOS’s own web pages listing the specific product names at issue. The court described ASOS’s insistence that its own product names and photographs were too general for their counsel to be able to identify the accused products as “bizarre” and did not amount to a failing on the part of Tianhai. The motion to dismiss the copyright claim was denied.

State law deceptive trade practices—preemption. ASOS argued that the claims under New York’s Deceptive Trade Practices Act were preempted by the Copyright Act. Reviewing the complaint, the court held that the allegations made under the New York statute were nothing more than allegations of copyright infringement with the addition of a conclusory allegation that the infringement was directed at consumers. Because the allegations were directed to copyright claims, the court granted the motion to dismiss the state law claim.

The case is No. 1:22-cv-09752-RA.

Attorneys: B. Brett Heavner (Finnegan, Henderson, Farabow, Garrett & Dunner LLP) for Tianhai Lace Co., Ltd. Joseph V. Norvell (Norvell IP LLC) for ASOS, PLC.

Companies: Tianhai Lace Co., Ltd.; ASOS, PLC

Cases: Copyright NewYorkNews