OPINION AND ORDER BACKGROUND Plaintiff Osram Sylvania Inc. (OSI; the parties call its German parent company “Osram”) and Defendant Ledvance both make lights. OSI owns the “Sylvania” trademark but licensed it and some of its other marks to Ledvance for use on specific products. Dkt. 161 10. OSI says Ledvance breached that licensing agreement, so it brought claims for common-law breach of contract as well as federal trademark infringement and unfair competition. Am. Compl., Dkt. 108. Ledvance brought various counter — and third-party claims. Am. Answer, Dkt. 111. OSI now moves for partial summary judgment on liability for its breach-of-contract and trademark-infringement claims. Dkt. 155. For the reasons below, the motion is DENIED. LEGAL STANDARDS “The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A dispute is “genuine” if a reasonable jury could find for either side. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). And a fact is “material” if it could “affect the outcome.” Id. The Court views the record “in the light most favorable to the non-movant.” Williams v. MTA Bus Co., 44 F.4th 115, 126 (2d Cir. 2022) (cleaned up). DISCUSSION I. Breach of contract To win on a breach-of-contract claim under New York law (which the parties agree applies), a plaintiff must show that “(1) a contract exists; (2) plaintiff performed in accordance with the contract; (3) defendant breached its contractual obligations; and (4) defendant’s breach resulted in damages.” 34-06 73, LLC v. Seneca Ins. Co., 39 N.Y.3d 44, 52 (2022) (citations omitted). Ledvance says there are genuine disputes of material fact on elements three and four. OSI’s contract claim hinges on §12.8(a) of the licensing agreement: Unless otherwise stated herein, only Licensor [OSI] is entitled to run SYLVANIA brand shops on e-business or e-commerce platforms. Brand shops on an e-business or e-commerce platform means brand-by-brand structured webpages within a sales or advertising platform, such as www.ebay.com or www.amazon.com, where various products of specific brands (for example, the brand SYLVANIA) are listed on a brand-by-brand basis. Licensee [Ledvance] may request in writing that Licensor [OSI] grant its consent to display Contract Products branded with Licensed SYLVANIA Product Trademarks in Licensor’s [OSI's] brand shops on e-business or ecommerce platforms or integrate a new product category (e.g., lamps) into the existing brand shop. Dkt. 156-3 §12.8(a). Section 12.8(c) of the agreement further provides: Should Licensor [OSI] decide not to run a brand shop on an e-business or e-commerce platform, Licensee [Ledvance] may run its own SYLVANIA branded shop, subject to the prior consent of, and alignment with, Licensor [OSI]. Such consent shall not be unreasonably withheld or delayed. Should Licensee [Ledvance] run a SYLVANIA brand shop on an e-business or e-commerce platform, Licensee [Ledvance] shall exclusively use the shop to display Contract Products branded with Licensed SYLVANIA Product Trademarks and follow the SYLVANIA Guidelines (Schedule 10.3). Id. §12.8(c). OSI argues that Ledvance violated the agreement by operating a “SYLVANIA brand shop.” In 2018, OSI’s vendor, Pattern, established an “Amazon Storefront” for OSI. Id. 35. But from October 2019 to November 2020, Ledvance ran its own Amazon Storefront titled “Sylvania General Lighting.” Id.
45-47. (An Amazon Storefront is essentially a brand-specific page on the Amazon website. Id. 31.) OSI sent a letter to Ledvance, objecting to its Storefront, in August 2020. Dkt. 156-9. In November, Ledvance renamed its page “Sylvania by Ledvance” for one week and then settled on “The Ledvance Store.” Dkt. 161
