Tracey Tooker & TT Ltd. v. Whitworth

212 F. Supp. 3d 429, 2016 U.S. Dist. LEXIS 117254, 2016 WL 4557246
CourtDistrict Court, S.D. New York
DecidedAugust 31, 2016
Docket15-cv-9890 (AJN)
StatusPublished
Cited by15 cases

This text of 212 F. Supp. 3d 429 (Tracey Tooker & TT Ltd. v. Whitworth) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Tracey Tooker & TT Ltd. v. Whitworth, 212 F. Supp. 3d 429, 2016 U.S. Dist. LEXIS 117254, 2016 WL 4557246 (S.D.N.Y. 2016).

Opinion

MEMORANDUM & ORDER

ALISON J. NATHAN, District Judge

Plaintiff Tracey Tooker (“Tooker”), a hat-maker, brings this suit against her former colleague Barbara Whitworth (“Whit-worth”), and Whitworth’s employee Chandra Ransamie (“Ransamie”). Tooker hired Whitworth to make hats, but their relationship deteriorated. Tooker alleges that Whitworth made defective hats, refused to return her hat blocks (wooden blocks used in the hat-making process), copied the hat blocks, and made unauthorized copies of Tooker’s hat styles. The complaint is brim[431]*431ful with causes of action arising from Whit-worth and Ransamie’s alleged conduct. Tooker sues for breach of contract, breach of implied covenant of fair dealing, breach of implied warranty of fitness, breach of fiduciary duty, civil conspiracy, unfair competition and misappropriation of trade secrets, unjust enrichment, conversion, intentional infliction of emotional distress, and prima facie tort, all under New York common law. She also sues under the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. Ann. § 501.204, and New York common law copyright. With respect to federal law, she brings two claims before the Court: violation of Chapter 13 of the Copyright Act (“Chapter 13”), 17 U.S.C. § 1301 et seq., and infringement of trademark and trade dress under the Lan-ham Act, 15 U.S.C. § 1125(a). Additionally, Tooker seeks a preliminary injunction preventing the sale or transfer of her hat blocks, and seizure of the blocks pursuant to N.Y.C.P.L.R. § 7101. Whitworth moves to dismiss all of Tooker’s federal claims and many of her state claims. Dkt No. 52. She has answered the remaining allegations and seeks judgment on the pleadings for the warranty and breach of contract claims. Dkt No. 59. Ransamie moves to dismiss all claims against her. Dkt No. 50. Defendants also move for sanctions. Dkt. No. 85. For the reasons explained below, the Court dismisses Tooker’s federal claims and remands the rest of the case to state court. The Court also denies the motion for sanctions.

I. Background

The facts surrounding this clash of haberdashers are taken from the complaint. Tracey Tooker is a debutante, and for thirty years has been a maker of fancy hats for the rich and famous. Am. Compl. ¶ 1. Known as “society’s milliner” and the “queen of hats,” Tooker’s celebrity clients have included Nancy Reagan, Hillary Clinton, Meryl Streep, Aretha Franklin, and Martha Stewart. Id. Plaintiff TT Ltd., Inc., is Tooker’s business. Id. ¶ 2. Defendant Barbara Whitworth is a hat-maker with twenty years of experience. Id. ¶ 3. Defendant Chandra Ransamie is a hat sewer who was working for Whitworth during the period covered by the complaint. Id. ¶ 4.

In August 2014, Tooker hired Whitworth to help produce hats for a pop-up shop in Long Island. Id. ¶ 5. The two had an oral contract under which Tooker would send orders and instructions to Whitworth, and pay for raw materials. Id. ¶ 6. Whitworth, in turn, would manufacture the hats to order and deliver them back to Tooker. Id. After the pop-up shop, Tooker continued to employ Whitworth to manufacture hats through May 2015. Id. ¶ 22, 25. In total, Whitworth produced 31 hats for Tooker. Id. ¶ 25.

Tooker’s hats are made by steaming felt or straw, and then giving the material shape by stretching it over wooden hat blocks. Id. ¶ 9. Each hat requires the use of at least two blocks (one for the crown and one for the brim), and sometimes more. Id. ¶ 9. In order for Whitworth to produce Tooker’s hats, Whitworth had to use Tooker’s custom-made hat blocks. Id. ¶ 8. Tooker provided Whitworth with an initial set of hat blocks, along with some sample hats, when the two began working together, id. ¶ 20, and a second group of blocks in January 2015. Id. ¶ 24.

By May 2015, the relationship between Tooker and Whitworth had unraveled. Tooker gradually became concerned with the quality of the hats Whitworth and Ransamie were producing. Id. ¶ 28. She instructed Whitworth to start sending the hats to Tooker for inspection, rather than directly to clients. Id. Tooker discovered that the craftsmanship of Whitworth’s hats was substantially below professional standards—so far below, in fact, that Tooker [432]*432alleges that malice is the only plausible explanation. Id. ¶¶ 29-36. After the business relationship between the parties ended, Tooker discovered that Whitworth had been using the hat blocks to make knockoffs. Id. ¶ 47. Whitworth exhibited the knockoffs at trade shows and marketed them on social media under her own name. Id. ¶¶ 49-63.

Moreover, Tooker alleged, Whitworth failed to return all of Tooker’s hat blocks and samples. After an abortive retrieval attempt in early May, Tooker arranged to pick up her blocks and sample hats from Whitworth’s studio on June 15, 2015. However, Whitworth returned only some of the hat blocks. Id. ¶¶ 89-90. When Tooker complained that some of her blocks and samples were still sitting on Whitworth’s shelves, Whitworth called the police, who eventually forced Tooker to leave without many of her possessions. Id. ¶¶ 90-92. During this encounter, Tooker observed that Whitworth had made copies of many of her hat blocks. Id. ¶¶ 112-14.

■ Tooker filed suit against Whitworth and Ransamie on November 19, 2015, seeking various forms of relief including a preliminary injunction against sale or transfer of the hat blocks, and seizure of chattels under N.Y.C.P.L.R. § 7101. Dkt. No. 1 Ex. A. Defendants removed the case to this Court on December 18, 2015. Dkt. No. 1. Tooker filed an amended complaint on February 17, 2016. Dkt. No. 39. Whitworth filed a partial motion to dismiss and an answer on March 11, 2016. Dkt. Nos. 52, 54. Ransamie filed a motion to dismiss that same day. Dkt. No. 50. On March 16, 2016, Whitworth moved for judgment on the pleadings on Tooker’s contract and implied warranty claims. Dkt. No. 59.

II. Tooker’s Federal Claims Are Merit-less

Whitworth moves to dismiss Tooker’s federal copyright and trade dress infringement claims, along with her state law claims for breach of implied covenant of good faith, civil conspiracy, tortious interference, breach of fiduciary duty, unfair competition (under both New York and Florida law), intentional infliction of emotional distress, and prima facie tort. However, the Court will address only Tooker’s federal claims under Chapter 13 and the Lanham Act. As explained below, the Court finds both federal claims to be mer-itless, and it declines to exercise supplemental jurisdiction over the rest of this action.

A. Legal Standard

When a defendant moves to dismiss for failure to state a claim upon which relief can be granted under Rule 12(b)(6), the complaint will survive the motion to dismiss so long as it pleads “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.

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Bluebook (online)
212 F. Supp. 3d 429, 2016 U.S. Dist. LEXIS 117254, 2016 WL 4557246, Counsel Stack Legal Research, https://law.counselstack.com/opinion/tracey-tooker-tt-ltd-v-whitworth-nysd-2016.