Pearson Education v. Allen Air Conditioning Co

7/27/2019 Pearson Education v. Allen Air Conditioning Co.

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USDC SONYDOCUMENTELECTRONICALLY FILEDDOC#:DATE FILED: OCT 2 22013

UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK--------------------------------------------------------------J{ PEARSON EDUCATION, INC. & JOHN WILEY & SONS, INC.,

Plaintiffs, 08 Civ. 6152 (KBF)-v- MEMORANDUM

DECISION & ORDERALLEN AIR CONDITIONING CO., et al.,

Defendants.------------------------------------------------------------- J{KATHERINE B. FORREST, District Judge:

On July 3,2008, Plaintiffs Pearson Education ("Pearson") and John \Viley &Sons ("Wiley") (together, "Plaintiffs") filed this action against Allen Air ConditioningCo., Ganghua Liu /dfb/a JMBooks dfb/a Linda Liu, Jian Liu dfb/a JMBooks dfb/aLinda Liu, and John Doe Nos. 1-5, alleging copyright infringement under 17 U.S.C. 501, trademark infringement under 15 U.S.C. 1114(a), and unfair competitionunder state common law. (See CompI. I, 4-9, 21-38.) On April 9, 2013,Plaintiffs' copyright claims were dismissed, and on July 16, 2013, DefendantGanghua Liu (hereafter, "Defendant") filed a Motion to Dismiss Plaintiffs' tworemaining claims (for trademark and unfair competition).

For the reasons discussed below, the Court hereby GRANTS Defendant'smotion and dismisses Plaintiffs' remaining claims.

1. Plaintiffs' Trademark ClaimIn order to sufficiently allege trademark infringement under 15 U.S.C.

1114(a)(1), "a plaintiff must show, first, that it s mark merits protection, and second,

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that the defendant's use of a similar mark is likely to cause consumer confusion."Brennan's Inc. v. Brennan's Rest.! LLC, 360 F.3d 125, 12930 (2d Cir. 2004)(citations omitted); see also EI Greco Leather Prods. Co. v. Shoe World, Inc., 806F.2d 392, 395 (2d Cir. 1986) (explaining that "[i]n order to make out a claim fortrademark infringement, a holder must show, inter alia, that the allegedinfringement is 'likely to cause confusion, or to cause mistake, or to deceive'" (citing15 U.S.C. 1114(1)(a). "One of the most valuable and important protectionsafforded by the Lanham Act is the right to control the quality of the goodsmanufactured and sold under the holder's trademark." El Greco Leather Prods. Co.,806 F.2d at 395 (citations omitted).

In this case, the allegations are that Defendant distributes Plaintiffs'products (books) outside th e geographic territory Plaintiffs would prefer. (SeeCompI. 20.) In short, Defendant buys and sells actual Pearson goods. Plaintiffs'main claim is that this now rather languishing action was a copyright infringementclaim - based on the same facts and the precise assertion with which the SupremeCourt has now disagreed: that the "first sale" doctrine is inapplicable to salesoutside the United States. See Kirtsaeng v. John \Viley & S o n ~ , U.S. ,133 S.Ct.1351 (2013). This copyright claim failed. Plaintiffs may not now repackage it as atrademarkbased claim and prevail.] See Dastar Corp. v. Twentieth Century Fox

I The Court notes that while there is case law in this Circuit that runs contrary tothis decision, see, e.g., Pearson Educ.. Inc. v. Kumar, 721 F. Supp. 2d 166 (2011),Dastar and Kirtsaeng together support the Court's finding here.

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Film Corp., 539 US 23,35 (2003) (explaining that a provision of trademark law maynot be construed so as to render a provision of copyright law superfluous).

Put another way, the intention of trademark law is to "preventD competitorsfrom copying a source-ident ifying mark, reduceD the customer's costs of shoppingand making purchasing decisions, and helpD assure a producer that it (and not animitating competitor) will reap the financial, reputation-related rewards associatedwith a desirable product." Dastar Corp., 539 U.S. at 34 (quotation marks andcitation omitted). Trademark law is not intended to allow an owner of a work toprevent the work's distribution when such distribution would otherwise be allowedunder copyright law.

Moreover, Defendant's conduct, as alleged, does not constitute trademarkinfringement because the Complaint fails to plausibly allege that consumers arelikely to be confused by Defendant's conduct. Not only are Plaintiffs' foreigntextbooks clearly marked as such (see id. 15 (explaining that the foreign editionsindicate "that the title is a 'Low Price Edition' and/or authorized for sale only in aparticular country or geographic region"', but any confusion consumers were toexperience is separate and apart from Defendant's conduct Plaintiffs maintain fullcontrol over the quality of their trademarked goods; it is Plaintiffs' choice to usetheir trademarks on goods, of variable quality, that they launch into the stream ofcommerce.

Accordingly, the Court finds in favor of Defendant and hereby dismissesPlaintiffs' trademark infringement claim.

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II. Unfair Competition Claim"A claim of unfair competition under New YOl'k Law is analyzed in the same

manner as a trademark infringement claim under the Lanham Act." Arnold v.ABC, Inc., No. 06 Civ. 1747,2007 WL 210330, at *3 (S.D.N.Y. Jan. 29, 2007) (citingLouis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108,119 (2d Cir. 2006.Since Plaintiffs have failed to sufficiently allege a trademark infringement claim,they also have not sufficiently alleged an unfair competition claim under state law.

CONCLUSIONFor the reasons aforementioned, the Court hereby GRANTS Defendant's

Motion to Dismiss Plaintiffs remaining claims.The Clerk of Court is directed to close the pending motion at Docket No. 65.

SO ORDERED.Dated: New York, New YorkOctober z...1..;--2013

tL 7 ) ~KATHERINE B. FORRESTUnited States Distl'ict Judge

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Pearson Education v. Allen Air Conditioning Co