Image: WeWoreWhat

Danielle Bernstein and her brand WeWoreWhat want the copyright infringement and unfair competition case filed against them tossed out of court. According to the motion to dismiss filed on Tuesday, counsel for the heavily-followed influencer and her brand claim that CV Collection, LLC d/b/a the Great Eros “improperly” filed suit against them in the Central District of California in what they say “appears to be an improper attempt at forum-shopping to avoid a pending federal action in New York” after they allegedly knocked off the signature pattern that appears on its product packaging.

Setting the stage in the January 26 motion, counsel for the defendants – i.e., Bernstein, WeWoreWhat  (“WWW”), and lifestyle brand (and WWW collaborator) Onia, LLC – alleges that they were prompted to file a declaratory judgment action against the Great Eros this fall after the Brooklyn, New York-based intimates brand accused them of infringing its silhouette-centric print and threatened to file an infringement suit against them. 

In its October 15 complaint, New York-based WWW revealed that it had been engaged in a behind-the-scenes back and forth with the Great Eros ever since the brand first sent it a cease and desist letter on August 10, in which it accused WWW, Bernstein and Onia of “committing copyright infringement and engag[ing] in unfair competition” via their use of a specific “silhouettes design” on swimwear and activewear offerings. The defendants’ use of the pattern represents an “unauthorized reproduction” of the Great Eros’s “famous artwork and trade dress,” the brand argued in its letter, pointing to the silhouette-centric pattern that it uses on its own product packaging. 

In its declaratory judgment filing, WWW and co. asserted that despite what the Great Eros argued in its letters (and in the complaint that it drafted and threatened to file), the two parties’ prints are not “substantially similar,” and in fact, the WWW “silhouettes design is substantially different from” the design that appears on the Great Eros’s tissue paper.” WWW further alleged that “no one, including [the Great Eros], owns the concept of silhouettes of the human form,” pointing to “widely accessible and similar designs in the marketplace.” 

Against that background and given the defendants’ claim that WWW “independently created” its print and “did not copy, use, or reproduce any artwork belonging to the Great Eros,” WWW, Bernstein, and Onia sought a formal declaration from the court that they are not on the hook for the Great Eros’s threatened claims. 

Fast forward a few weeks and the Great Eros responded to WWW’s suit with a lawsuit of its own, filing a copyright infringement and unfair competition complaint. However, instead of filing suit with the U.S. District Court for the Southern District of New York, which is where WWW filed its case, the Great Eros’s counsel opted to file in a California federal court. Now, WWW is taking issue with the different venue, arguing that one month after it filed suit, the Great Eros initiated a separate case that is a “mirror image” of the pre-existing case, with “both [cases] concern[ing] the same dispute between the same parties over the right to use the same designs.” 

The Great Eros (top) & WeWoreWhat (bottom)

Given “the similarity the parties and the similarity of the issues” in the two cases, counsel for WWW claims that the Great Eros’s “case should have been brought in the Southern District of New York,” thereby, making venue in the Central District of California “improper.” More than that, WWW argues that “nearly all of the parties in this action are residents of New York, and reside in the Southern District of New York, [and] all of the relevant evidence and witnesses for WWW, Onia, Bernstein, and [the Great Eros] are in New York.” 

“The chronology of the two actions, the similarity the parties, and the similarity of the issues thus bring this action squarely within the well-established ‘first-to-file’ rule,” which allows the court to “dismiss, stay, or transfer the complaint in view of a first-filed declaratory judgment action in the Southern District of New York.” 

Accusing the Great Eros of “forum shopping” – or choosing the court that will treat its claims most favorably, WWW asserts that the Brooklyn brand “cannot make even a prima facie showing that venue is proper in the Central District of California.” Specifically, the defendants claim that the Great Eros’s “claims rest on an alleged an act of copying by Ms. Bernstein who allegedly ‘visited the showroom of [the Great Eros’s] sales representative prior to producing the infringing goods, and inquired about obtaining [the Great Eros’s] products in exchange for promoting the Great Eros through her social media channels.”

“Notably missing from this statement is where this showroom was located,” WWW argues.  

More than that, the Great Eros “alleges that ‘Ms. Bernstein, WWW, and/or Onia subsequently purchased products from [the Great Eros] that were wrapped in [its] trademark tissue paper, bearing [its silhouettes] design; and instructed their pattern makers to copy [that] design for use on [its own] infringing goods,” WWW claims. “Again missing from this allegation is any specific location where the allege copying would have taken place,” which WWW contends “is unsurprising given that both WWW’s and Onia’s designers work at their principal places of business in New York City, and those locations are where designs would be created and samples would be made.” 

Since the Great Eros “has not alleged facts showing (nor actually shown) a substantial part of the events or omissions giving rise to its claims occurred in California,” which are relevant factors to consider when determining the proper venue to initiate a case, “it is stuck alleging venue is proper because of ‘infringing products were sold here,’” per WWW.

With the foregoing in mind, counsel for WWW, Bernstein, and Onia argues that “the Court should dismiss this action in favor of the [previously-filed] New York action.” Or at the very least, “to the extent the court does not find dismissal appropriate,” it “should transfer this action to New York so that it may be consolidated with the pending action.”

The “New York action” – i.e., the declaratory judgment action that WWW, Bernstein, and Onia filed in October – is currently underway. 

UPDATED (February 23, 2020): In a Joint Stipulation to Transfer Venue to the Southern District of New York, the parties stated that they “have agreed to one of the alternative forms of relief requested in the Motion to Dismiss filed by WeWoreWhat, Onia, and Danielle Bernstein.” In an order on February 23, Judge R. Gary Klausner granted the parties’ Stipulation and transferred the action from the U.S. District Court for the Central District of California to the U.S. District Court for the Southern District of New York. 

*The case is CV Collection, LLC, v. WEWOREWHAT, LLC, et al, 1:2021-cv-01623 (SDNY).