Cartier, Inc. v. Four Star Jewelry Creations, Inc.

Rule of Law:

A product's design constitutes protected trade dress under the Lanham Act if it is non-functional and has acquired secondary meaning, meaning the public primarily associates the design with the source of the product. Intentional copying of such a design to capitalize on the senior user's goodwill, creating a likelihood of consumer confusion, constitutes trade dress infringement.

Facts:

• Plaintiff Cartier designs, markets, and sells several families of luxury watches, including the Panthere, Pasha, Tank Americaine, and Tank Francaise, each with a unique combination of ornamental design features.
• Cartier invested millions of dollars in advertising and promotion for these watch families, resulting in hundreds of millions of dollars in sales and significant recognition in media and among consumers.
• The specific combination of design elements for each watch family is aesthetic and does not affect the watch's ability to tell time, its cost, or its quality, making the designs non-functional.
• Defendants Four Star Jewelry, Crown Jewelry, and Globe Jewelry, operated by Abraham Malek and Mike Genuth, began manufacturing and selling watches that were strikingly similar, and in some cases virtually identical, to Cartier's four watch families.
• Defendants purchased some of their watches from an Italian manufacturer, Miotti, on an invoice that included the notation 'TK FR' for certain models, which a defendant later understood to mean 'Tank Francaise.'
• During a visit from an undercover investigator posing as a customer, defendants' Vice President, Mike Genuth, used Cartier advertisements posted on the office wall to demonstrate that his company's watches were the same as Cartier's.
• Third-party retailers, particularly on the internet and in Manhattan's jewelry district, were found to use terms like 'Cartier style,' 'Tank style,' or 'Panthere style' to market and sell their own watches.

Procedural Posture:

• Cartier initiated litigation against Four Star Jewelry Creations, Inc., Crown Jewelry Creations, Inc., and Globe Jewelry, Inc. in the U.S. District Court for the Southern District of New York.
• Defendants filed an answer and counterclaims seeking a declaratory judgment that Cartier's alleged trade dress and patents are invalid.
• Plaintiffs moved to amend their complaint to include claims related to the Pasha de Cartier watch and sought a preliminary injunction.
• The court granted the preliminary injunction regarding the Pasha watches, which the defendants did not oppose.
• After extensive discovery, the case proceeded to a bench trial before the District Judge.