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Image: WeWoreWhat

Influencer Danielle Bernstein, her brand WeWoreWhat, and a handful of retailers have been handed a mixed decision in the latest round of the case that has seen them facing off against Great Eros over a pattern that Bernstein and WeWoreWhat allegedly copied and passed off as their own. In a declaratory judgment action filed in October 2020, WeWoreWhat and Bernstein asked a New York federal court to formally declare that they did not run afoul of the indie intimates brand’s rights by using a lookalike “Silhouettes Design.” A month later, Great Eros filed a copyright infringement and unfair competition complaint against Bernstein, WeWoreWhat, their manufacturing partner Onia, and retailers Saks Fifth Avenue, ShopBop, and Carbon 38 (the “defendants”) in a California federal court, arguing that the WeWoreWhat pattern is a direct rip-off of one that it began using several years ago. 

Fast forward to May 2021, and following a combination of the two cases before the U.S. District Court for the Southern District of New York, something that the defendants argued was proper in light of the fact that the defendants filed their case first, and that “nearly all of the parties in this action are residents of New York,” the defendants sought to have one of the causes of action set out against them dismissed. Specifically, Bernstein and co. asked the court to toss out Great Eros’ California unfair competition claim, arguing that the Brooklyn, New York-based brand failed to show how their alleged violations of law occurred within California, and for the most part, the court agreed. 

In an Opinion & Order dated October 22, Judge Paul Engelmayer of the U.S. District Court for the Southern District of New York determined that Great Eros pleaded a “sufficient connection between [Carbon 38’s] alleged misconduct and California” – but failed to do so in connection with the other defendants. 

The problem, according to the court, is that Great Eros only cites one reference to misconduct that occurred in California when it alleged that Carbon 38 “sold the infringing goods to consumers in its brick-and-mortar store in Pacific Palisades, California.” Because none of the alleged infringement by the other defendants has “any nexus to California,” the court dismissed the plaintiff’s California unfair competition claim with respect to all of the defendants except for Carbon 38. Not a total loss for WeWoreWhat and co., the court has given Great Eros the opportunity to replead its California unfair competition claim to show that the other defendants also sold and marketed the infringing goods in California. (And, of course, Great Eros’ copyright infringement and Lanham Act claims against all of the defendants remain in place.)

WeWoreWhat pattern

No Sanctions for the Defendants

After addressing the defendants’ aim to have Great Eros’ California unfair competition claim tossed out, Judge Engelmayer turned his attention to the defendants’ motion in which they sought to have him levy sanctions – both in the form of monetary damages, as well as dismissal of Great Eros’ complaint – against Great Eros’ counsel on the basis that Great Eros filed a “baseless complaint, and has refused to withdraw [that] complaint after purportedly learning that its claims were without merit.”

As summarized by the court, the defendants argued in their previously-lodged motion for sanctions that a number of the key allegations that Great Eros made in connection with its complaint “lack factual support.” Among such allegations is Great Eros’ claim that Bernstein visited its PR showroom before making the allegedly infringing products, and that she and WWW “inquired about obtaining [Great Eros] products in exchange for promoting [the brand] on her social media channels.” Also at issue is Great Eros’ claim that Bernstein and Onia “purchased [Great Eros] goods and instructed their designers to copy the pattern at issue,” and that they infringed Great Eros’ copyright in the pattern by “reproducing” it for their own goods, including swimwear, athleisure garments, yoga mats, and wallpaper, among other things.

(The primary reason that these claims lack factual support, according to the defendants, is that Bernstein and WWW allegedly created their version of the pattern independently, as evidenced by an email asserting that Bernstein “does not recall specifically being introduced to” the Great Eros brand at any point. Among some of the other pieces of “clear” evidence that the defendants claim rebuts Great Eros’ claims is an inspiration deck for WWW’s collection that does not include Great Eros designs, “original” hand sketches of the design, and declarations from the defendants’ employees (that are not under oath) that WWW and Bernstein did not copy Great Eros’ design.)

The defendants further argue that Great Eros is also at fault – and sanctions are appropriate – for opting to file its case in California federal court after the defendants had already filed suit in New York, and thus, did so “with the improper purposes of harassing, causing unnecessary delay, and needlessly increasing litigation costs.” 

Reflecting on the defendants’ motion for sanctions, the court held that it is “entirely without merit” and held that sanctions are “unwarranted” across the board. In terms of the defendants’ independent creation arguments, the court sided with Great Eros, asserting that even with the aforementioned evidence at play (which is no substitute for discovery, per Judge Engelmayer), the defendants have fallen short of showing that Great Eros’ allegations are “so meritless as to warrant a finding of bad faith” and thus, to warrant sanctions. In fact, the court held that Great Eros can actually point to evidence that is “consistent with possible copying,” including that the defendants’ admission that “Bernstein may have visited a showroom in which [Great Eros’] products were shown, and Dalia Cunow, Onia’s creative director, admits that she actually purchased [Great Eros’] goods.” 

These facts “may prove to be building blocks for [Great Eros’] claim that the defendants knew of its design, and then copied it.” 

(And it is worth noting, as the court did, that even if the defendants can successfully show that they independently created the lookalike print, that will not shield them from potential liability when it comes to Great Eros’ Lanham Act claims, which do not require proof of deliberate copying,” and instead, hinge on whether the parties’ prints serve as trademarks and whether consumers are likely to be confused by the defendants’ use of the similar print.)

As for the defendants’ claim that Great Eros engaged in bad faith “forum shopping” by filing suit in California and should be subjected to sanctions as a result, the court sided with Great Eros again, holding that actually … “Onia and WWW filed the New York action only after receiving a draft copy of [Great Eros’] California complaint, and after the [defendants’] counsel after Great Eros to hold off filing that complaint while [they] conferred with their clients.” Against this background, the court stated that Great Eros’ decision to file suit in California “is no more sanctionable than the defendants’ decision to front-run the California lawsuit that [Great Eros] had notified [them] it planned to bring.” 

With all of this in mind, the court dismissed Great Eros’ California unfair competition claim with respect to all of the defendants by Carbon 38, and also dismissed the motion for sanctions without prejudice meaning that it could be filed again at a later point in the case.

In the complaint that initiated the case, WWW and co. asserted that despite what the Great Eros argued in cease-and-desist letters that it began sending to them in August 2020 (and then in its complaint), 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.” 

In its own complaint a month later, Great Eros pointed to Bernstein’s “history of copying others’ designs and passing them off as her own,” and argued that Bernstein had, in fact, “visited the showroom of [its] sales representative prior to producing the infringing goods, and inquired about obtaining [Great Eros’] products in exchange for promoting [the company] through her social media channels.” Great Eros asserted that it “believes that Ms. Bernstein, WWW, and/or Onia subsequently purchased [its] products that were wrapped in [its] trademark tissue paper … and instructed their pattern makers to copy the [design] for use on the infringing goods.” 

The case is CV Collection, LLC, v. WEWOREWHAT, LLC, et al, 1:21-cv-01623 (SDNY).