Northwell Health files motion to dismiss NYU Langone lawsuit over purple ads

Northwell Health filed a motion in federal court Tuesday seeking to dismiss NYU Langone Health’s lawsuit alleging Northwell’s purple ads are “confusingly similar” to NYU’s.

In their motion, filed in the Southern District of New York, attorneys for Northwell said NYU Langone’s claims that Northwell “copied the trade dress” the Manhattan-based hospital group uses in its marketing hinges on  its ability to identify what visual elements it owns — a bar Northwell said NYU has not met.

NYU's lawsuit, filed in June, alleged that Northwell copied unique color schemes — including a distinctive purple color, specific accent colors, color combinations, font styles and types, headline styles and formats NYU has used in its marketing. 

Trade dress, a term used in trademark law, refers to the appearance of a product, packaging or advertising that signifies the source of the product for customers, according to Upcounsel, an online marketplace for legal services for business owners. 

The distinctive curved glass bottle used by soft drink giant Coca-Cola, for example, serves as a visual reminder to consumers that the product packaging is the property of Coca-Cola, and would be considered trade dress under the law.

“NYU Langone does not own a trademark registration for any shade of purple for healthcare services, and its case is based on cherry-picking certain pieces of Northwell advertising to make false claims,” Northwell spokeswoman Barbara Osborn said in a statement Tuesday.

“Northwell has a history of using a variety of fonts and colors from our copyright-protected Northwell 'Constellation'  logo along with showcasing our accomplishments in research, education and clinical excellence to differentiate ourselves from others in the markets,” Osborn said. The New Hyde Park-based health system's logo features 16 triangles of varying sizes and hues.

In response to Northwell’s motion, NYU Langone spokesman Steve Ritea said Northwell’s use of NYU's advertising motifs began as the city-based hospital system's presence in the Long Island market grew.

“In their motion, Northwell attempts to minimize their brazen copying of NYU Langone’s distinctive and recognizable advertising — including fonts, layouts, and color schemes — to confuse patients, who deserve the best care and the best outcomes,” Ritea said.  

“It’s no coincidence that this shameless mimicry began as NYU Langone substantially grew on Long Island, posing a perceived threat in the region,” he said.

“Through its confusingly similar advertising, Northwell has engaged, and continues to engage, in an apparent scheme to trade off the good will and reputation of NYU Langone,” NYU said in its lawsuit.  

Northwell did not respond to a May 25 cease-and-desist letter, NYU said in its suit. NYU is seeking undetermined damages, attorney fees and an injunction preventing Northwell  from using “confusingly similar advertising.”

Kathryn Dalli, an intellectual property attorney and partner at Riverhead-based Twomey Latham, said cases involving alleged infringement are not necessarily straightforward and often involve a degree of fact finding. 

When it comes to trade dress, companies don't need to show that a particular design or look was trademarked prior to an allegation of infringement, she said. Often, the length of use of particular visuals, when visuals were first used, and consistency of usage can be a major factor in determining whether infringement has occurred. 

Additionally, the type of industry a company is in can be crucial, Dalli said. 

“For instance, NYU Langone couldn’t sue Midas mufflers if they used similar colors or layout," she said. "Nobody is going to confuse Midas mufflers with NYU Langone, but people could confuse Northwell with NYU Langone”

Ultimately, she said, the case will be determined by the specifics surrounding the use of marketing visuals.