A federal judge handed Northwell Health a victory in a lawsuit with NYU Langone Health System over allegations that advertisements run by the former intentionally emulated the visuals and color palettes of the latter—though NYU Langone has the opportunity to continue pleading its case.
Filed last summer, the legal fight centered on ads Northwell began to run in 2019 that leaned on the color purple.
NYU Langone, the plaintiff, argued that the color has been “closely associated” with its parent university for a century and a half and pointed to accent colors, typeface and layouts in Northwell’s ads similar to what NYU Langone had already used and laid out in its 2017 advertising style guide.
NYU Langone alleged that Northwell had “intentionally” copied its advertising “in an apparent effort to trade off of the goodwill and reputation of NYU Langone” after a market entry made the two competitors. It also took issue with claims in Northwell’s advertising that its facilities ranked higher in consumer-facing rankings.
Northwell pushed back on the lawsuit with a motion to dismiss. In statements to press at the time, Senior Vice President and Chief Marketing and Communications Officer Ramon Soto said "NYU Langone’s claim that it owns the color purple for healthcare services is nothing short of preposterous.”
In an order handed down Friday, U.S. District Judge Valerie Caproni largely sided with Northwell. She dismissed some of NYU Langone’s claims related to trade dress infringement and false advertising “with prejudice for failure to state a claim.”
She described these claims as “confusing and expansive,” wrote that Healthgrades and U.S. News’ rankings of the best hospital in New York referenced in competing ads “can be true simultaneously” and found that NYU Langone did not show that the alleged infringement injured the public interest (which the court would need to infer under the law cited by the health system).
“While we are pleased by these rulings, we are 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,” Soto said Monday in an emailed statement. “Northwell Health has a very distinct and bold advertising style.”
The judge also dismissed all other claims in NYU Langone’s complaint without prejudice but noted that NYU Langone didn’t take the opportunity to “shore up” its allegations after reading Northwell’s counter.
Doing so, with more specific descriptions of how Northwell copied its style, could still be persuasive, she wrote.
“The court cannot conclude that amendment would be futile,” Caproni wrote. “Although the current description of the trade dress is too general, contains too many ‘or’ connectors and ‘for example’ phrases, and overall encompasses too many possible permutations and combinations to constitute a singular distinct trade dress, there could be a subset of the current description that is actionable.”
The judge gave NYU Langone until March 22 to file an amended complaint. Steve Ritea, NYU Langone Health’s senior director of media relations, painted the judge’s comments as a path forward for the system’s case.
“We are pleased the court recognized that NYU Langone may have an actionable claim against Northwell’s imitation of NYU Langone’s distinctive advertising and look forward to providing the court with greater detail,” Ritea said in an email statement. “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.”
NYU Langone did not promptly respond to a follow-up email seeking explicit confirmation that it intends to file an amended complaint by the deadline.
Despite leaving NYU Langone the opportunity to refile, Caproni’s ruling outlined the broad variety of features such as font, color and layout “vividly” portrayed in the side-by-side photographs submitted by the plaintiff system.
She wrote that “even among ads that are predominantly purple, the shade of purple varies; some have all cap white writing; some have all white sentence case writing; and some have a mix of white and other color writing.”
“The single consistent aspect that the Court can discern is that the font is consistently sans serif,” the judge also wrote in a footnote.
NYU Langone wrote in its original complaint that it spends $25 million per year purchasing ad space for the marketing campaigns it claims Northwell is copying. The plaintiff said it had delivered a cease and desist but had not heard back and so sought a permanent injunction barring Northwell from continuing to use the similar advertisements.