UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK OSRAM SYLVANIA INC., Plaintiff, -against- LEDVANCE LLC, Defendant. ) ) ) ) ) ) ) ) ) ) ) ) Case No.: COMPLAINT AND DEMAND FOR JURY TRIAL OSRAM SYLVANIA Inc. (“Sylvania”), by way of its undersigned attorneys, as and for its Complaint against Ledvance LLC (“Ledvance” or “Defendant”), hereby alleges as follows: INTRODUCTION 1. This is an action for breach of contract, unfair competition and infringement of Sylvania’s registered and unregistered rights in federal trademarks and related wrongs. Sylvania’s claims against Defendant arise under the Trademark Act of 1946, 15 U.S.C. §§ 1051, 1125 et seq. (as amended, the “Lanham Act”) and the common law of New York. 2. Sylvania is one of the largest and well-known manufacturers of lighting products and technology in North America. Sylvania manufactures and markets lighting products for businesses and vehicles and holds a leading share of the North American lighting market. The “Sylvania” brand has been associated with electric lighting since its predecessor Hygrade Sylvania started preliminary research on fluorescent technology, demonstrating the first linear, or tubular, fluorescent lamp at the 1939 New York World's Fair. The “Sylvania” brand has been used on and in connection with Sylvania’s various products continuously ever since then. Defendant Ledvance licensed from Sylvania the right to use the “Sylvania” brand and certain associated trademarks on 1:20-cv-09858 Case 1:20-cv-09858-RA Document 1 Filed 11/23/20 Page 1 of 14
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW … · 2020. 12. 10. · 1:20-cv-09858 Case 1:20-cv-09858-RA Document 1 Filed 11/23/20 Page 1 of 14. 2 and in connection with
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
OSRAM SYLVANIA INC.,
Plaintiff,
-against-
LEDVANCE LLC,
Defendant.
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Case No.:
COMPLAINT AND
DEMAND FOR JURY TRIAL
OSRAM SYLVANIA Inc. (“Sylvania”), by way of its undersigned attorneys, as and for its
Complaint against Ledvance LLC (“Ledvance” or “Defendant”), hereby alleges as follows:
INTRODUCTION
1. This is an action for breach of contract, unfair competition and infringement of
Sylvania’s registered and unregistered rights in federal trademarks and related wrongs. Sylvania’s
claims against Defendant arise under the Trademark Act of 1946, 15 U.S.C. §§ 1051, 1125 et seq.
(as amended, the “Lanham Act”) and the common law of New York.
2. Sylvania is one of the largest and well-known manufacturers of lighting products
and technology in North America. Sylvania manufactures and markets lighting products for
businesses and vehicles and holds a leading share of the North American lighting market. The
“Sylvania” brand has been associated with electric lighting since its predecessor Hygrade Sylvania
started preliminary research on fluorescent technology, demonstrating the first linear, or tubular,
fluorescent lamp at the 1939 New York World's Fair. The “Sylvania” brand has been used on and
in connection with Sylvania’s various products continuously ever since then. Defendant Ledvance
licensed from Sylvania the right to use the “Sylvania” brand and certain associated trademarks on
1:20-cv-09858
Case 1:20-cv-09858-RA Document 1 Filed 11/23/20 Page 1 of 14
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and in connection with particular goods and services, and for specific periods of time, pursuant to
a carefully negotiated agreement between the parties, the Sylvania Trademark License Agreement
dated as of July 1, 2016 (the “TMLA”).
3. Sylvania owns numerous federal trademark registrations for the various trademarks
set forth in Exhibit A attached hereto (collectively, the “Marks”), and uses the Marks in connection
with its sale of goods in the lighting and automotive lighting equipment markets (collectively, the
“Products”).
4. Under the TMLA
5. As described below, Defendant is making ongoing use of the Marks in violation of
the TMLA. As a result, Sylvania is entitled to remedies under the TMLA, the Lanham Act and
state laws for damages, injunction, interest and attorneys’ fees. Sylvania brings this suit to prevent
further damage and irreparable harm to the Marks, to Sylvania’s exclusive rights to its Marks, and
to uphold the excellent reputation that its “Sylvania” brand and the other Marks enjoy with the
consuming public.
THE PARTIES
6. Sylvania is a corporation organized under the laws of the State of Delaware with a
principal place of business in Massachusetts located at 200 Ballardvale Street, Wilmington, MA
01887.
Case 1:20-cv-09858-RA Document 1 Filed 11/23/20 Page 2 of 14
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7. Defendant is a limited liability company organized under the laws of the State of
Delaware with a principal place of business in Massachusetts located 200 Ballardvale Street,
Wilmington, MA 01887.
JURISDICTION AND VENUE
8. This Court has jurisdiction over this federal trademark infringement action pursuant
to 28 U.S.C. § 1331.
9. This Court also has jurisdiction over the state law claims pursuant to 28 U.S.C. §
1367(a).
10. Venue is proper in this district under 28 U.S.C. § 1391 because the TMLA provides
in Section 38.3 that any disputes between Defendant and Sylvania arising out of the TMLA shall
be governed by the laws of the State of New York and shall be adjudicated exclusively in the courts
of the State and County of New York.
FACTS COMMON TO ALL COUNTS
Defendant’s Operation of a Brand Shop Has Breached the TMLA.
11. For many years prior to 2016, when the parties signed the TMLA, and ever since
then, sales of the products to consumers have increasingly occurred online. E-commerce platforms,
such as the platform operated by Amazon, Inc. (“Amazon”) at Amazon.com (the “Amazon
Platform”), are increasingly vital to any distribution and sale to consumers of products, including
Products as defined in the TMLA.
12. Amazon controls the mechanism by which consumers search for and find the
consumer products they seek on the Amazon Platform, allowing many well-known trademarks to
be used as the basis for a “brand store,” in which products bearing a particular brand are aggregated
together in an online “store,” namely a webpage devoted to that particular brand of goods. To
ensure that a particular brand store bears the appearance and contains the goods that legitimately
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connect to that particular brand, Amazon allows the owner of such a brand store to control various
aspects of the appearance and contents of its brand store on the Amazon Platform. Because the
Amazon Platform attracts so many internet consumers, control of the brand store on the Amazon
Platform is therefore highly important to the owner of a particular brand, because consumers are
likely to become confused if there are several different brand stores associated with the same brand
within the same platform. At the very least, a brand owner wants to ensure that the brand store
associated with its brand remains under its control, so that any other brand store associated with
the same brand does not confuse consumers as to where they can purchase genuine products that
legitimately bear the brand, and so that the brand owner continues to control the manner and
circumstances under which legitimate products that bear its trademarks are sold and how they are
presented, sold and distributed to consumers.
13.
14. The ongoing Coronavirus pandemic has caused online sales to be even more
important to businesses than ever. US e-commerce retailers saw an uptick of 68% of revenue
generated online as of mid-April of 2020.1 This is a market that Sylvania had and has the right to
exploit, but because of Defendant’s breaches and infringements of the Marks,
1 See Louis Columbus, How COVID-19 is Transforming E-Commerce, FORBES