NEW YORK — After a three-year battle, a Manhattan federal court judge ruled in favor of Cartier’s claims against a New York manufacturer selling watches that infringed upon four of Cartier’s most popular designs.
On Dec. 10, U.S. District Court judge Constance Baker Motley, of the Southern District of New York, granted a permanent injunction barring Manhattan-based Four Star Jewelry Creations Inc., Crown Jewelry Creations and Globe Jewelry Inc. from manufacturing or selling watches deemed to copy the designs of Cartier’s Panthere, Pasha, Tank Americaine and Tank Francaise watches.
The judge also awarded Cartier $32,500, which represents the profits the defendants garnered from the sale of 22 watches between February 1999 and February 2001.
Four Star and its attorneys did not return calls seeking comment on the matter.
“The relevant question therefore is whether the copying was done deliberately, so as to benefit from Cartier’s name and goodwill,” wrote judge Motley in a court document outlining the facts and conclusions of the case. “The court answers this in the affirmative.”
Motley cited hidden videotape evidence from a Cartier private investigator that showed a Four Star executive making comparisons between his watches and those in a Cartier advertisement attached to a wall.
The judge noted that purchase invoices indicated Four Star had acquired some of its infringing watches from an Italian manufacturer called Miotti. One of the invoices included the notation “TK FR” next to watches Four Star had ordered. According to the court document, Abraham Malek, one of the Four Star owners, testified that “Although Malek did not understand the notation to mean ‘Tank Francaise’ or ‘Tank French’ at the time of purchase, he admitted that he subsequently understood the notation to so indicate.”
Cartier’s past efforts to defend its trade dress rights also played a prominent role in the judge’s decision, pointing out that Cartier has four staff members “exclusively dedicated to protecting Cartier’s intellectual property and its related ‘zero tolerance’ policy towards infringers.” The judge acknowledged that in the past Tourneau, Concord and Movado had all ceased selling watches Cartier believed to infringe upon their designs after receiving cease and desist letters from the company.
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In the original lawsuit, filed Dec. 10, 2001, Cartier accused the companies, all of which are run out of a location on 47th Street in Manhattan, of selling watches through its store and via a catalogue that infringed upon Cartier’s registered trade dress. Cartier accused Four Star of seven violations, including trade dress infringement, patent infringement of the Tank Francaise and Panthere and trademark dilution.
“This has implication for the bestsellers within Cartier, but also has implications for every watch seller,” said David A. Kalow, of Kalow & Springut, the law firm representing Cartier. “This ruling can apply to other cases. We feel we’ve helped the law head in the right direction.”
“Now a court has said, with regard to these four distinctive designs, you can’t copy them anymore,” said Milton Springut.
Steven Gursky, of intellectual property firm Gursky & Partners LLP, which was not involved in the case, agreed that the ruling could benefit other watch manufacturers in regard to protecting their designs. “It is a good decision for watchmakers, because this judge went along the lines that the aspects of the watch were not functional, and therefore protectable,” said Gursky.
Gursky said the fact that Four Star put up a prolonged defense raised other questions. “What was the defendant thinking? If they won this case, what was the stake they had that was worth this battle? Was the battle to make this a major business, to see if they could get away with copying Cartier’s watches and go into big business?” said Gursky. “Why the defendant chose to lose so expensively has to make you think.”