SEARCH

BPI Lux S.a.r.l. v. Bd. of Managers, Setai Condominium Residence

Balance of 'Polaroid' Factors Warrant Judgment for Marks' Owner on Infringement by Condo

Thank you for sharing!

Your article was successfully shared with the contacts you provided.

MEMORANDUM AND ORDER Plaintiff BPI Lux S.a.r.l (“BPI”) commenced this action against defendants Board of Managers of the Setai Condominium Residence at 40 Broad Street and the Setai Condominium Residence at 40 Broad Street for infringement of its trademarks. Plaintiff now moves for summary judgment on its claims for: (1) trademark infringement of a registered mark in violation of 15 U.S.C. §§1114, 1116; and (2) false designation of origin in violation of 15 U.S.C. §1125(a). Defendants cross-move for summary judgment and request that, should their cross-motion be denied, we also deny plaintiff’s motion pursuant to Federal Rule of Civil Procedure 56(d) because discovery is needed to establish proof to oppose plaintiff’s motion. For the reasons stated below, we grant plaintiff’s motion and deny defendants’ cross-motion and request for additional discovery.FACTUAL BACKGROUND¹In November 2001, The Setai Group LLC (“Setai Group”) registered the SETAI trademarks for use in real estate development and luxury hotels. Pl.’s 56.1 Stmt. 1, ECF No. 31.² The Setai Group used the trademarks at the Miami Setai Resort & Residences (“Miami Setai”), a condominium and hotel resort complex in Miami, Florida. Id. 2. In January 2006, the Setai Group entered into two agreements to license the SETAI trademarks for use in a project in lower Manhattan. Id. 3. The first agreement, between the Setai Group and 40 Broad LLC (“40 Broad”), licensed the trademarks for use in a condominium project at 40 Broad Street (“Condo License Agreement”). Id.

More From ALM

Premium Subscription

With this subscription you will receive unlimited access to high quality, online, on-demand premium content from well-respected faculty in the legal industry. This is perfect for attorneys licensed in multiple jurisdictions or for attorneys that have fulfilled their CLE requirement but need to access resourceful information for their practice areas.
View Now

Our Team Account subscription service is for legal teams of four or more attorneys. Each attorney is granted unlimited access to high quality, on-demand premium content from well-respected faculty in the legal industry along with administrative access to easily manage CLE for the entire team.
View Now

Bundle Subscriptions

Gain access to some of the most knowledgeable and experienced attorneys with our 2 bundle options! Our Compliance bundles are curated by CLE Counselors and include current legal topics and challenges within the industry. Our second option allows you to build your bundle and strategically select the content that pertains to your needs. Both options are priced the same.
View Now

From Data to Decisions

Dynamically explore and compare data on law firms, companies, individual lawyers, and industry trends.

Exclusive Depth and Reach.

Law.com Compass includes access to our exclusive industry reports, combining the unmatched expertise of our analyst team with ALM’s deep bench of proprietary information to provide insights that can’t be found anywhere else.

Big Pictures and Fine Details

Law.com Compass delivers you the full scope of information, from the rankings of the Am Law 200 and NLJ 500 to intricate details and comparisons of firms’ financials, staffing, clients, news and events.

British Legal Awards 2024

November 27, 2024
London

Celebrating achievement, excellence, and innovation in the legal profession in the UK.

Learn More

GlobeSt. Healthcare Real Estate 2024

December 02, 2024 - December 03, 2024
Scottsdale, AZ

Join the industry's top owners, investors, developers, brokers and financiers for the real estate healthcare event of the year!

Learn More

ThinkAdvisor LUMINARIES Awards 2024

December 11, 2024
Las Vegas, NV

This event shines a spotlight on how individuals and firms are changing the investment advisory industry where it matters most.

Learn More

Associate General Counsel, Global Employment

Role TitleAssociate General Counsel, Global EmploymentGrade F13Reporting ToSenior Legal Counsel, Global EmploymentProgram/Tool/ Department/U...

Apply Now ›

Associate Attorney

Ryan & Conlon, LLP, is a boutique firm specializing in insurance defense. We are a small eclectic practice with a busy and fast paced en...

Apply Now ›

INTELLECTUAL PROPERTY PROSECUTION PARALEGAL

INTELLECTUAL PROPERTY PROSECUTION PARALEGAL - NEW JERSEY OR NEW YORK OFFICESProminent mid-Atlantic law firm with multiple regional office lo...

Apply Now ›