A U.S. district judge dismissed an NYU lawsuit claiming that Northwell Health, a competitor of NYU Langone Health, had deceived patients by using a similar shade of purple to the university’s medical center in its advertisements and marketing campaigns. 

In the March 1 order, Judge Valerie Caproni called NYU Langone’s claims against Northwell “vague and overbroad,” also calling them “confusing.” Caproni also said NYU Langone’s June 2023 complaint did not “adequately allege” violations that Northwell had imitated the design and appearance of trademarked products. Northwell requested that the lawsuit be dismissed in August 2023.

Steve Ritea, a spokesperson for NYU Langone, told WSN the medical center is “pleased” the court recognized that NYU Langone may have an “actionable claim” against Northwell’s advertising methods over their similar appearance. 

“The striking side-by-side comparisons continue to demonstrate how Northwell is attempting to confuse the public by capitalizing on our unmatched reputation for exceptional quality and safety outcomes, which is a disservice to patients seeking the best care,” Ritea wrote.

In a previous statement to WSN, Ritea said the lawsuit “is not a fight over a color,” and was an effort to protect NYU Langone’s brand. In its complaint, the medical center claimed Northwell’s “confusingly similar advertising” was a means to “trade off of the goodwill and reputation” of NYU Langone. 

Northwell spokesperson Ramon Soto called NYU Langone’s lawsuit “unfounded,” adding that while Northwell is pleased by the court’s decision, it is disappointed in NYU Langone’s “continuing waste of resources and funds and diverting the attention of the communities we both serve with such baseless allegations.”

“Northwell Health has a very distinct and bold advertising style,” Soto wrote to WSN. “We continue to push and challenge traditional health care marketing through our purpose-driven marketing.”

In August, Northwell accused NYU Langone of “cherry-picking” certain parts of Northwell’s advertising, including the use of the color purple, to make false claims in the lawsuit. Willajeanne McLean, a professor specializing in trademark law at the University of Connecticut, said color may serve as a trademark “if it serves as a source indicator” for a company or brand in an interview with WSN.

“Consumers must make an association between the color and the product or service,” McLean said. “Think red soles and Louboutin shoes, a certain shade of blue and Tiffany packaging, brown and UPS, and one you certainly saw all summer — Barbie pink. All of these serve as a trademark for their representative products and services because consumers associate those colors with them. Without that association or secondary meaning, color is just a color.”

McLean said that “trading off the reputation of another company is unfair competition,” and that competitors often benefit from the work of the trademark’s owner. McLean said that based on NYU Langone’s complaint, it is unclear what is claimed as “the trade dress,” or the distinct branding feature, which she said is why the judge dismissed the counts of unfair competition.

“An amendment of the complaint specifies exactly what constitutes the trade dress and shows that the relevant public associates those colors with NYU Langone and that the claimed trade dress is not functional,” McLean said.

Contact Yezen Saadah at [email protected].