Page 1

Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 1 of 29 PageID #: 71

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ----------------------------------------------------------x : THE SWATCH GROUP (U.S.) INC., : : Plaintiff, : : v. : No. 2012 CIV. 2927 DLI / RLM-MJ : STÜHRLING ORIGINAL LLC and : VALUEVISION MEDIA, INC., : : Defendants. : ----------------------------------------------------------x ANSWER AND COUNTERCLAIM OF DEFENDANTS STÜHRLING ORIGINAL LLC AND VALUEVISION MEDIA, INC. TO PLAINTIFF'S COMPLAINT

GIBSON, DUNN & CRUTCHER LLP Howard S. Hogan (HH 7995) 1050 Connecticut Ave NW Washington DC 20036-5306 Telephone: 202.887.3640 Facsimile: 202.530.9550 Akiva Shapiro (AS 7570) 200 Park Avenue, 47th Floor New York, NY 10166-0193 Telephone: 212.351.3830 Facsimile: 212.351.6340 Attorneys for Defendants STÜHRLING ORIGINAL LLC and VALUEVISION MEDIA, INC.


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 2 of 29 PageID #: 72

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ----------------------------------------------------------X : THE SWATCH GROUP (U.S.) INC., : : Plaintiff, : : v. : No. 2012 CIV. 2927 DLI / RLM-MJ : STÜHRLING ORIGINAL LLC and : VALUEVISION MEDIA, INC., : : Defendants. : ----------------------------------------------------------x ANSWER AND COUNTERCLAIM OF DEFENDANTS STÜHRLING ORIGINAL LLC AND VALUEVISION MEDIA, INC. TO PLAINTIFF'S COMPLAINT I.

ANSWER

For their answer to the Complaint of Plaintiff The Swatch Group (U.S) Inc. (“Swatch”), Defendants Stührling Original LLC (“Stührling”) and ValueVision Media, Inc. (“ValueVision”) (collectively, “Defendants”), by and through counsel, state as follows: THE PARTIES 1.

Defendants lack knowledge or information sufficient to admit or deny the

allegations set forth in paragraph 1 of the Complaint. 2.

Defendants admit the allegations set forth in paragraph 2 of the Complaint.

3.

Defendants admit the allegations set forth in paragraph 3 of the Complaint. JURISDICTION AND VENUE

4.

Paragraph 4 of the Complaint states a legal conclusion to which no response is

required. To the extent that a response is required, Defendants deny each and every allegation set forth in paragraph 4 of the Complaint.


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 3 of 29 PageID #: 73

5.

Paragraph 5 of the Complaint states a legal conclusion to which no response is

required. To the extent that a response is required, Defendants deny that they are liable to Swatch under any theory, including Trademark Infringement, Unfair Competition, and/or False Advertising arising under the Lanham Act ยง 43(a), 15 U.S.C. ยง 1125, and/or Trademark Infringement, unfair competition and false designation of origin and false advertising arising under the common law and the laws of the State of New York, except to state that Swatch purports to assert such claims. 6.

Paragraph 6 of the Complaint states a legal conclusion to which no response is

required. To the extent that a response is required, Defendants deny each and every allegation set forth in paragraph 6 of the Complaint. 7.

Paragraph 7 of the Complaint states a legal conclusion to which no response is

required. To the extent that a response is required, Defendants deny each and every allegation set forth in paragraph 7 of the Complaint. FACTS 8.

Paragraph 8 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 8 of the Complaint. 9.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 9 of the Complaint, and on that basis deny them. 10.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 10 of the Complaint, and on that basis deny them. 11.

Defendants deny each and every allegation set forth in paragraph 11 of the

Complaint.

2


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 4 of 29 PageID #: 74

12.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 12 of the Complaint, and on that basis deny them. 13.

Defendants deny each and every allegation set forth in paragraph 13 of the

Complaint. 14.

Defendants deny the allegations set forth in paragraph 14 of the Complaint,

except to admit that the Hamilton Ventura watch incorporates a triangular-shaped case and bezel, with points at 1 o’clock, 5 o’clock and 9 o’clock, and to aver that many watches by various manufacturers have these same characteristics and that triangular watches are common in the marketplace. Defendants deny that the appearance of the Hamilton Ventura is unique, inherently distinctive, and/or nonfunctional. Defendants lack knowledge or information sufficient to form a belief as to the truth of the allegation that Richard Arbib designed the Hamilton Ventura watch, and on that basis deny it. 15.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 15 of the Complaint, and on that basis deny them. 16.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 16 of the Complaint, and on that basis deny them. 17.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 17 of the Complaint, and on that basis deny them. 18.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 18 of the Complaint, and on that basis deny them. 19.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 19 of the Complaint, and on that basis deny them.

3


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 5 of 29 PageID #: 75

20.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 20 of the Complaint, and on that basis deny them. 21.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 21 of the Complaint, and on that basis deny them. 22.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 22 of the Complaint, and on that basis deny them. 23.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 23 of the Complaint, and on that basis deny them. 24.

Defendants deny each and every allegation set forth in paragraph 24 of the

Complaint. 25.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 25 of the Complaint, and on that basis deny them. 26.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 26 of the Complaint, and on that basis deny them. 27.

Defendants deny each and every allegation set forth in paragraph 27 of the

Complaint. 28.

Paragraph 28 of the Complaint states a legal conclusion to which no response is

required. To the extent that a response is required, Defendants deny each and every allegation set forth in paragraph 28 of the Complaint. 29.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 29 of the Complaint, and on that basis deny them. 30.

Defendants lack knowledge or information sufficient to form a belief as to the

truth of the allegations set forth in paragraph 30 of the Complaint, and on that basis deny them.

4


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 6 of 29 PageID #: 76

31.

Defendants deny each and every allegation set forth in paragraph 31 of the

Complaint. 32.

Defendants deny the allegations set forth in paragraph 32 of the Complaint except

to admit that the Stührling Ricochet watch incorporates a triangular case, with points at 1 o’clock, 5 o’clock and 9 o’clock, and to aver that triangular watches with these characteristics are common in the industry. 33.

Defendants deny each and every allegation set forth in paragraph 33 of the

Complaint. 34.

Defendants deny the allegations set forth in paragraph 34 of the complaint except

to admit that fewer than 500 Stührling Ricochet watches were marketed, promoted, advertised, or sold through channels such as Amazon.com, ShopNBC.com, and on the ShopNBC television network prior to July 2012. 35.

Defendants deny the allegations set forth in paragraph 35 of the Complaint,

except to admit that ValueVision operates the ShopNBC television network and its website ShopNBC.com. 36.

Defendants deny the allegations set forth in paragraph 36 of the complaint except

to admit that fewer than 400 Stührling Ricochet watches were marketed, promoted, advertised, or sold through ShopNBC.com and the ShopNBC television network prior to July 2012. 37.

Defendants admit that fewer than 400 Stührling Ricochet watches were marketed,

promoted, advertised, or sold through ShopNBC.com and the ShopNBC television network prior to July 2012, but otherwise deny each and every allegation set forth in paragraph 37 of the Complaint.

5


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 7 of 29 PageID #: 77

38.

Defendants deny each and every allegation set forth in paragraph 38 of the

Complaint. 39.

Defendants deny each and every allegation set forth in paragraph 39 of the

Complaint. 40.

Defendants deny each and every allegation set forth in paragraph 40 of the

Complaint. 41.

Defendants deny each and every allegation set forth in paragraph 41 of the

Complaint. 42.

Defendants deny the allegations set forth in paragraph 42 of the Complaint,

except to admit that on or about May 28, 2012, Lawrence Magen, President of North American Operations for Stßhrling, appeared on the ShopNBC television network, and that during the show, the host stated, You guys could not have picked a better time to build this, because this whole triangular thing has been championed by at least two of the major power brands coming out at the Hall of Dreams, and, of course, obviously commanding much higher price points than this. If memory serves, I think there’s another motion picture release now where this is once again being touted. 43.

Defendants deny each and every allegation set forth in paragraph 43 of the

Complaint. 44.

Defendants deny each and every allegation set forth in paragraph 44 of the

Complaint. 45.

Defendants deny each and every allegation set forth in paragraph 45 of the

Complaint. 46.

Defendants deny each and every allegation set forth in paragraph 46 of the

Complaint.

6


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 8 of 29 PageID #: 78

COUNT I 47.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 48.

Paragraph 48 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 48 of the Complaint. 49.

Defendants deny each and every allegation set forth in paragraph 49 of the

Complaint. 50.

Paragraph 50 contains legal conclusions to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 50 of the Complaint, and aver that no consent or authorization is required to sell triangular watches such as the Ricochet watch. 51.

Defendants deny each and every allegation set forth in paragraph 51 of the

Complaint. 52.

Defendants deny each and every allegation set forth in paragraph 52 of the

Complaint. 53.

Defendants deny each and every allegation set forth in paragraph 53 of the

Complaint. 54.

Defendants deny each and every allegation set forth in paragraph 54 of the

Complaint. 55.

Defendants deny each and every allegation set forth in paragraph 55 of the

Complaint.

7


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 9 of 29 PageID #: 79

56.

Defendants deny each and every allegation set forth in paragraph 56 of the

Complaint. 57.

Defendants deny each and every allegation set forth in paragraph 57 of the

Complaint. 58.

Defendants deny each and every allegation set forth in paragraph 58 of the

Complaint. 59.

Defendants deny each and every allegation set forth in paragraph 59 of the

Complaint. 60.

Defendants deny each and every allegation set forth in paragraph 60 of the

Complaint. 61.

Paragraph 61 contains legal conclusions to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 61 of the Complaint. COUNT II 62.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 63.

Defendants deny each and every allegation set forth in paragraph 63 of the

Complaint. 64.

Defendants deny each and every allegation set forth in paragraph 64 of the

Complaint. 65.

Defendants deny each and every allegation set forth in paragraph 65 of the

Complaint.

8


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 10 of 29 PageID #: 80

66.

Defendants deny each and every allegation set forth in paragraph 66 of the

Complaint. 67.

Defendants deny each and every allegation set forth in paragraph 67 of the

Complaint. 68.

Defendants deny each and every allegation set forth in paragraph 68 of the

Complaint. 69.

Defendants deny each and every allegation set forth in paragraph 69 of the

Complaint. 70.

Paragraph 70 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 70 of the Complaint. COUNT III 71.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 72.

Defendants deny each and every allegation set forth in paragraph 72 of the

Complaint. 73.

Paragraph 73 contains legal conclusions to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 73 of the Complaint, and aver that no consent or authorization is required to sell triangular watches such as the Ricochet watch. 74.

Defendants deny each and every allegation set forth in paragraph 74 of the

Complaint.

9


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 11 of 29 PageID #: 81

75.

Defendants deny each and every allegation set forth in paragraph 75 of the

Complaint. 76.

Defendants deny each and every allegation set forth in paragraph 76 of the

Complaint. 77.

Defendants deny each and every allegation set forth in paragraph 77 of the

Complaint. 78.

Paragraph 78 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 78 of the Complaint. COUNT IV 79.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 80.

Defendants deny each and every allegation set forth in paragraph 80 of the

Complaint. 81.

Defendants deny each and every allegation set forth in paragraph 81 of the

Complaint. 82.

Defendants deny each and every allegation set forth in paragraph 82 of the

Complaint. 83.

Defendants deny each and every allegation set forth in paragraph 83 of the

Complaint. 84.

Defendants deny each and every allegation set forth in paragraph 84 of the

Complaint.

10


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 12 of 29 PageID #: 82

85.

Defendants deny each and every allegation set forth in paragraph 85 of the

Complaint. 86.

Paragraph 86 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 86 of the Complaint. COUNT V 87.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 88.

Defendants deny each and every allegation set forth in paragraph 88 of the

Complaint. 89.

Defendants deny each and every allegation set forth in paragraph 89 of the

Complaint. 90.

Paragraph 90 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 90 of the Complaint. 91.

Defendants deny each and every allegation set forth in paragraph 91 of the

Complaint. 92.

Paragraph 92 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 92 of the Complaint. COUNT VI 93.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint.

11


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 13 of 29 PageID #: 83

94.

Defendants deny each and every allegation set forth in paragraph 94 of the

Complaint. 95.

Paragraph 95 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 95 of the Complaint. 96.

Defendants deny each and every allegation set forth in paragraph 96 of the

Complaint. 97.

Paragraph 97 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 97 of the Complaint. COUNT VII 98.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 99.

Paragraph 99 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 99 of the Complaint. COUNT VIII 100.

Defendants repeat and reallege their responses to the foregoing paragraphs of the

Complaint. 101.

Defendants deny each and every allegation set forth in paragraph 101 of the

Complaint. 102.

Defendants deny each and every allegation set forth in paragraph 102 of the

Complaint.

12


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 14 of 29 PageID #: 84

103.

Paragraph 103 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 103 of the Complaint. 104.

Paragraph 104 states a legal conclusion to which no response is required. To the

extent that a response is required, Defendants deny each and every allegation set forth in paragraph 104 of the Complaint. FIRST AFFIRMATIVE DEFENSE 1.

The Complaint fails to state any claim upon which relief can be granted. SECOND AFFIRMATIVE DEFENSE

2.

Swatch does not possess any trademark rights in Swatch’s asserted trade dress. THIRD AFFIRMATIVE DEFENSE

3.

Defendants’ activities relating to the Ricochet watch do not infringe or otherwise

violate any valid rights for which Swatch is entitled to relief. FOURTH AFFIRMATIVE DEFENSE 4.

Swatch’s asserted trade dress referenced in the Complaint is neither inherently

distinctive nor has it acquired secondary meaning, and is therefore not subject to protection. FIFTH AFFIRMATIVE DEFENSE 5.

Swatch’s claims are barred by the doctrine of trademark misuse. SIXTH AFFIRMATIVE DEFENSE

6.

Swatch cannot recover against Defendants on any of its claims alleged in the

Complaint because Defendants have not engaged in any business practice that is forbidden by any federal or state statute, regulation, rule, policy, and/or common law.

13


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 15 of 29 PageID #: 85

SEVENTH AFFIRMATIVE DEFENSE 7.

Swatch cannot recover against Defendants on any of its claims alleged in the

Complaint because Defendants have not engaged in any conduct that is likely to deceive or confuse the public. EIGHTH AFFIRMATIVE DEFENSE 8.

Swatch cannot recover against Defendants on its claims alleging injury to

business reputation because its asserted trade dress is not a distinctive mark and there is no likelihood of dilution. NINTH AFFIRMATIVE DEFENSE 9.

Defendants’ advertisements and/or marketing statements were either accurate or,

at most, puffery, and not likely to mislead or deceive any consumers, and on that basis, Swatch’s claims regarding the contents of Defendants’ advertisements and/or marketing statements are barred. TENTH AFFIRMATIVE DEFENSE 10.

Swatch is barred from recovery because it has not suffered any injury or damage

as a result of any act or conduct of Defendants. ELEVENTH AFFIRMATIVE DEFENSE 11.

Swatch’s claims are barred in whole or in part by the applicable statute of

limitations, waiver, and/or laches. TWELFTH AFFIRMATIVE DEFENSE 12.

Swatch is not entitled to injunctive relief because any alleged injury to Swatch is

not immediate or irreparable, and Swatch has an adequate remedy at law.

14


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 16 of 29 PageID #: 86

OTHER DEFENSES RESERVED 13.

Defendants expressly reserve the right to assert any other legal or equitable

defenses that may be available based on legal theories, which may or will be divulged through clarification of the Complaint, through discovery, or through further legal analysis of Swatch’s claims and positions in this litigation. ANSWER TO PRAYER FOR RELIEF Swatch’s wherefore clause states a request for relief to which no response is required. To the extent that any response is required, Defendants deny that Swatch is entitled to the relief requested, and the Defendants request the entry of judgment dismissing Swatch’s Complaint.

WHEREFORE, having fully answered, Defendants pray that the Court: (a)

Dismiss the Complaint with prejudice;

(b)

Award Defendants their costs and expenses incurred herein; and

(c)

Grant Defendants such other and further relief as it may deem just and proper. II.

COUNTERCLAIM

Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Defendants Stührling Original LLC (“Stührling”) and ValueVision Media, Inc. (“ValueVision”) (collectively, “Defendants”), by and through counsel, bring these counterclaims against Plaintiff and Counterclaim-Defendant The Swatch Group (U.S.) Inc. (“Swatch”), and allege as follows: THE PARTIES 1.

Stührling is a limited liability company with its principal place of business at 449

20th Street, Brooklyn, New York.

15


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 17 of 29 PageID #: 87

2.

ValueVision is a Minnesota corporation with its principal place of business at

6740 Shady Oak Road, Eden Prairie, Minnesota and operates the ShopNBC television network and website, available at www.ShopNBC.com. 3.

In its Complaint, Swatch alleges that it is a Delaware corporation with its

principal place of business at 1200 Harbor Boulevard, 7th Floor, Weehawken, New Jersey. JURISDICTION AND VENUE 4.

This Court has subject matter jurisdiction over these counterclaims pursuant to 28

U.S.C. §§ 1331, 1338(a), 1367(a), and 2202. 5.

This Court has personal jurisdiction over Swatch because Swatch has submitted

itself to the personal jurisdiction of this Court by commencing this action. 6.

Venue is proper in this District under 28 U.S.C. § 1391 because Swatch filed its

Complaint in this District and thus has consented to venue in this Court, and because a substantial part of the events giving rise to the Counterclaim occurred in this District. FACTUAL BACKGROUND 7.

Stührling is a manufacturer of premium watches which sells over 600 different

types of watches and has designed and developed thousands of watch models. 8.

ValueVision operates ShopNBC and ShopNBC.com to afford consumers an

opportunity to purchase premium products. 9.

Neither Stührling nor ValueVision has an interest in or incentive to cause

consumer confusion. 10.

This Counterclaim is brought to protect Defendants against Swatch’s assertion

that the common triangular shape and arrangement exhibited in its Hamilton Ventura watch constitutes a protectable trade dress. Swatch claims that Defendants’ advertisement and sale of

16


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 18 of 29 PageID #: 88

the Stührling Ricochet, a triangular-shaped watch, constitutes trademark infringement, unfair competition, and false advertising, despite the fact that triangular-shaped watches are common in the industry. Swatch’s attempt to monopolize the use of the triangular watch case is unsupported by law, defies common sense, and would unduly restrict the design options available to competitors in this market. 11.

On information and belief, Swatch has no registrations with the U.S. Patent and

Trademark Office that encompass the trade dress that it has asserted in this action. 12.

Triangular watches that bear the same design elements that Swatch claims as its

trade dress are used by multiple watch merchants. At least a dozen manufacturers currently sell watches making use of the same design elements that Swatch asserts to be protected. 13.

As can be seen in below, a number of watches by various manufacturers bear the

overall look and feel of the Hamilton Ventura watch, including protruding angles at the same hours on the watch and the location of the crown. 14.

Below is a true and correct image of a watch marketed by Seiko Watch

Corporation. The watch below has a triangular case, with points at 1 o’clock, 5 o’clock and 9 o’clock, and a crown at the 3 o’clock position.

17


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 19 of 29 PageID #: 89

15.

Below is a true and correct image of a watch marketed by TechnoMarine S.A.

The watch below has a triangular case, with points at 1 o’clock, 5 o’clock and 9 o’clock, and a crown at the 3 o’clock position.

16.

Below is a true and correct image of a watch that is, on information and belief,

licensed by the popular science fiction television program Doctor Who and marketed to consumers. The watch below has a triangular case, with with points at 1 o’clock, 5 o’clock and 9 o’clock, and a crown at the 3 o’clock position.

18


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 20 of 29 PageID #: 90

17.

Below is a true and correct image of a watch marketed by Timex Group USA,

Inc. The watch below has a triangular case .

18.

Below is a true and correct image of a watch marketed by Sheffield Watch

Company. The watch below has a triangular case, with scalloping along two of the edges of the case.

19


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 21 of 29 PageID #: 91

19.

Below is a true and correct image of a watch marketed by Charles-Hubert, Paris.

The watch below has a triangular case, with points at 1 o’clock, 5 o’clock and 9 o’clock, and a crown at the 3 o’clock position.

20.

On information and belief, there are and have been other watches marketed by

companies other than Swatch and available to consumers in the United States that similarly make use of watch design that Swatch claims to be its exclusive trade dress. 21.

It was in the context of a market that includes all of the watches shown above that

Stührling introduced the Ricochet watch in 2012. 22.

The differences between the Stührling Ricochet and the Hamilton Ventura are

obvious and include the highlight colors, the design of the hands, the design of the dial, the tick marks that denote the hours and minutes, and the overall shape and angles of the triangle. 23.

To avoid any possibility of confusion with any other manufacturer’s watch, the

Stührling Ricochet clearly states “Stührling”: •

across the face of the watch;

on the back of the watch;

20


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 22 of 29 PageID #: 92

24.

on the inside of the watch band;

all over the packaging in which the watch is sold; and

all over the advertising that accompanies any sale of the watch.

Below is a true and correct image of the packaging in which the Stührling

Ricochet is offered to the public. “Stührling” is written all over the packaging, including across the top cover of the packaging, on the inside of the watch box, and on the cleaning cloth included with the packaging.

21


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 23 of 29 PageID #: 93

25.

Below is a true and correct image of the Stührling Ricochet as offered to the

public through Amazon.com. “Stührling” is stated all over the advertising that accompanies the watch, as well as across the face of the watch itself as displayed for sale.

22


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 24 of 29 PageID #: 94

26.

Below is a true and correct image of the Stührling Ricochet as offered to the

public on ShopNBC. “Stührling” is stated prominently on screen as well as across the face of the watch itself as displayed for sale.

27.

As a result, no consumer was able to view the Stührling Ricochet watch without

also seeing the prominently displayed and stylized “Stührling” mark and logo, not only on the watch itself, but also in marketing materials and at points of sale, including on ShopNBC. 28.

Stührling ceased all sales of the Stührling Ricochet in July 2012.

29.

The Hamilton Ventura and the Stührling Ricochet watches were not sold in close

proximity. The Stührling Ricochet was sold primarily on ShopNBC, during segments where only Stührling watches were sold and the watches and program were clearly branded as

23


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 25 of 29 PageID #: 95

Stührling, and through Stührling’s own website and distribution channels (where the watches were similarly branded as Stührling). 30.

On information and belief, the Hamilton Ventura is and at all times relevant has

been sold primarily by authorized Swatch distributors who do not carry Stührling watches. 31.

On information and belief, during the time that the Stührling Ricochet was

available on the market, there was no actual confusion of the two watches, nor has there been any instance of actual confusion since. 32.

Defendants had no intent to cause any confusion with the Hamilton Ventura

watch, and on the contrary have ensured that consumers see the Stührling name whenever they see the Ricochet watch. 33.

Although the Complaint selectively—and misleadingly—quotes from a May 2012

ShopNBC broadcast that featured the Stührling Ricochet, in full context, it is clear that the host was not trying to suggest that the Ricochet was featured in the film Men in Black III, as Swatch alleges was inferred, or that it was a Hamilton Ventura watch. The host’s full statement makes clear that he was commenting on the popular triangular case design, and that he specifically distinguished the Stührling Ricochet from the more expensive brands using that design: You guys could not have picked a better time to build this, because this whole triangular thing has been championed by at least two of the major power brands coming out at the Hall Of Dreams, and, of course, obviously commanding much higher price points than this. If memory serves, I think there’s another motion picture release now where this is once again being touted. 34.

This statement makes clear that the “triangular thing” is a common design

element that is a feature of multiple watch brands. The Hamilton Ventura is not even identified (and, in light of the many brands selling triangular watches, may not even have been implicitly referenced), nor is the motion picture release identified.

24


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 26 of 29 PageID #: 96

35.

Purchasers of luxury watches are extremely sophisticated buyers who will not be

confused by two watches that share only the same basic shape and are in other material respects different. FIRST COUNTERCLAIM: DECLARATORY JUDGMENT 36.

Defendants repeat and reallege each of the foregoing paragraphs as though fully

set forth herein. 37.

An actual controversy exists between Swatch and Defendants. Swatch’s

allegations that the shape of its Hamilton Ventura watch constitutes trade dress, and that the Stührling Ricochet watch infringes that alleged trade dress, have created a definite and concrete dispute between the parties, who have adverse legal interests. The parties’ dispute is real and substantial, and calls for a decree of conclusive character. 38.

The substantial controversy between Swatch and Defendants is of sufficient

immediacy and reality to warrant the issuance of a declaratory judgment. A judicial declaration is necessary to settle this dispute and to clarify the parties’ respective rights. 39.

Swatch’s alleged trade dress is invalid and unprotectable in that it is not

distinctive, has not acquired secondary meaning, and is aesthetically functional. 40.

Defendants’ sale of Stührling Ricochet watches is not likely to cause confusion,

deception, or mistake among consumers as to the source, sponsorship, affiliation, or authorization of the watches, and specifically is not likely to cause confusion among consumers vis-à-vis Swatch or any of Swatch’s products. 41.

Defendants are entitled to a declaratory judgment of their rights, specifically that

the manufacture, promotion, advertisement, and sale of Stührling Ricochet watches do not

25


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 27 of 29 PageID #: 97

violate any trade dress rights of Swatch under 15 U.S.C. § 1125 or as a matter of New York state law. 42.

Swatch’s assertion of protected trade dress and its claims against Defendants are

utterly without merit and appear to be in bad faith. These facts make this case “exceptional” pursuant to the Lanham Act, § 35(a), 15 U.S.C. § 1117(a), entitling Defendants to recover reasonable attorneys’ fees.

WHEREFORE, Defendants pray that the Court: (a)

Dismiss the Complaint with prejudice;

(b)

Deny any and all relief requested by Swatch;

(c)

Declare that Swatch’s asserted Hamilton Ventura trade dress is unenforceable as a

matter of law; (d)

Declare Defendants’ manufacture, advertisement, and sale of Stührling Ricochet

watches do not infringe any trade dress of Swatch’s in that Swatch’s alleged trade dress is not protectable and there is no likelihood of any actionable confusion under the Trademark Act; (e)

Award Defendants their costs and expenses incurred herein;

(f)

Award Defendants their reasonable attorneys’ fees pursuant to 15 U.S.C.

§ 1117(a); and (g)

Grant Defendants such other and further relief as it may deem just and proper.

26


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 28 of 29 PageID #: 98

Dated: January 17, 2013

Respectfully submitted,

/s Howard S. Hogan Howard S. Hogan (HH 7995) GIBSON, DUNN & CRUTCHER LLC 1050 Connecticut Avenue, N.W. Washington, DC 20036-5306 Telephone: 202.955.8500 Facsimile: 202.467.0539 Akiva Shapiro (AS 7570) GIBSON, DUNN & CRUTCHER LLC 200 Park Avenue, 47th Floor New York, NY 10166-0193 Telephone: 212.351.3830 Facsimile: 212.351.6340 Attorneys for Defendants STĂœHRLING ORIGINAL LLC and VALUEVISION MEDIA, INC.

27


Case 1:12-cv-02927-DLI-RLM Document 15 Filed 01/17/13 Page 29 of 29 PageID #: 99

CERTIFICATE OF SERVICE I hereby certify that on January 17, 2013, the foregoing Answer and Counterclaim was filed with the Clerk of the Court and served on the following parties using the CM/ECF system: Jess M. Collen Joshua Paul

jcollen@collenlaw.com jpaul@collenip.com

Thomas Phillip Gulick

tgulick@collenip.com

Attorneys for Plaintiff THE SWATCH GROUP (U.S.) INC. /s Akiva Shapiro Akiva Shapiro

28

swatch v sturhling response  
Read more
Read more
Similar to
Popular now
Just for you