Form Portfolios LLC v. Food52, Inc., 2025 WL 3638165, No. 24-cv-07690
(NCM) (CLP) (E.D.N.Y. Dec. 16, 2025)
Form designs consumer products, partnering with other
companies that license those designs. Food52 sells cookware and other homegoods
under the brand Dansk. This dispute arises from their former collaboration.
Dansk is known for products
designed by Jens Quistgaard, a Danish designer…. After Quistgaard was no longer
Chief Designer for Dansk, Quistgaard continued to develop designs for
kitchenware on his own. … In 1992—long before defendant acquired Dansk—Dansk
and Quistgaard entered into a contractual arrangement) for Dansk to have the
opportunity to purchase designs that Quistgaard continued to invent. … Quistgaard
retained all rights for designs not accepted by Dansk. The 1992 Design
Agreement provided Dansk with a limited license to utilize Quistgaard’s
distinctive and famous name, signature, biographical data, photograph and/or
likeness on the accepted designs.
Quistgaard died in 2008; his heirs set up an entity that
entered into a new agreement with Dansk, providing it a right of first refusal to
certain archival designs and again provided Dansk a limited license to utilize
Quistgaard’s name, initials, signature, biographical information, and likeness
for promotional materials for the additional accepted designs. This agreement
expired in 2022.
The parties then entered into an agreement allowing Dansk to
make and sell products based on certain designs owned or managed by Form. Dansk
also asked Form to act as an intermediary with the Quistgaard Family because of
Form’s expertise working with the heirs of designers. The Quistgaard family
granted Form the exclusive right to negotiate a new agreement with Dansk,
including provisions making Form its legal representative. The parties then entered
into a new license, which said it superseded all previous licenses.
The new agreement stated, among other things, that “[a]ny
trademark, other than [defendant]’s house mark or brand, that is adopted by
[defendant] in marketing Licensed Products in addition to a Licensed Trademark
that becomes associated exclusively with any or all Licensed Products as a
result of such marketing, shall revert to [plaintiff] upon termination of this
Agreement for any reason,” including “the name of the designer in question,
their likenesses, signatures, logos and initials for use in connection with the
promotion, advertising, marketing and sale of Licensed Products.”
Then a dispute developed and Dansk allegedly unilaterally
ceased making payments to Form. But it allegedly continued to sell products
covered by the new agreement and to use various trademarks, including the Jens
Quistgaard name and the Kobenstyle registered trademark.
Form sued for trademark infringement under Section 32 of the
Lanham Act and false association, false advertising, and trademark dilution
under Section 43.
Section 32: Kobenstyle is a specific line of cookware. The
parties agreed that this trademark was initially owned by Dansk in 2013, but Form
argued that the license agreement transferred it to Form when the license was
terminated, implicitly arguing that the Kobenstyle trademark was not “[Dansk]’s
house mark or brand.”
First, the court found that summary judgment was the right
place to make the argument that the agreement’s reference to “revert” meant
that the agreement only covered marks Form previously owned; it never owned
Kobenstyle. At the motion to dismiss stage, though, the court accepted the
argument that the only things exempt from “reverting” are Dansk’s “house mark
or brand.”
Dansk then argued that, regardless, this section would fail
to actually transfer ownership because it was a prohibited “in gross” transfer
of trademark rights. “[F]or a trademark
transfer to be valid, the transfer must include the underlying trademarked
commercial undertaking in some meaningful respect.” It was true that no aspect
of defendant’s business has changed hands, but Form argued that a trademark can
be validly transferred even without transfer of the underlying business so long
as the recipient continues or intends to continue producing similar goods. “The
fundamental requirement for a valid transfer of trademark is continuity of the
underlying product or business.”
However, the complaint didn’t plead that Form intends
to produce or market Kobenstyle products within a reasonable timeframe or
partner with a different collaborator to do so. Thus, the section 32 claim
failed.
43(a)(1)(A) false association: Form alleged that Dansk’s use
of Jens Quistgaard’s name, initials, signature, biographical information, and
likeness was actionable. Form properly alleged standing: its interests were
within the zone of interests, which for 43(a) doesn’t require trademark
ownership, and it sufficiently alleged that its re-licensing rights were being
harmed by Dansk’s competing uses.
Dansk argued that it was using Jens Quistgaard’s name and
initials only in a descriptive and factual sense—to convey to consumers that
defendant is selling goods that were, in fact, designed by Quistgaard. But this
doesn’t work on a motion to dismiss because descriptive fair use is a
fact-intensive inquiry. (Could this be reframed as a Dastar defense that
would work?)
However, the 43(a)(1)(B) claim was dismissed as duplicative
with the unregistered trademark infringement claim. T The idea that consumers
will falsely believe that defendant is authorized to sell trademarked goods
does not sufficiently entail or imply a false statement that “go[es] beyond
mere claims of false association.”
Dilution: of course not; Form didn’t even bother to defend
it.
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