Designer Skin, LLC v. S & L Vitamins, Inc. (E.D.N.Y.)
Sep 05, 2008
Most claims dismissed; injunction; no dams or fees
Citation is to summary judgment opinion. Final findings of fact and conclusions of law also found at 2008 WL 4174882 D.Ariz.,2008.
From Professor Eric Goldman's Technology & Marketing Law Blog:
An Arizona district court has ruled that the surreptitious use of trademarks doesn't create a likelihood of initial interest confusion, granting summary judgment on the trademark claims to the defendant.
This case is another enforcement action brought by a manufacturer trying to keep its goods from leaking out of its restricted channel and being sold on the Internet. For other lawsuits along this line, see Australian Gold v. Hatfield, S&L Vitamins v. Australian Gold (yes, the same S&L...and the same lawyer) and Standard Process v. Banks. The plaintiff tries the typical arsenal of claims to control the independent online retailer, including trademark infringement and dilution, copyright infringement for displaying product shots, interference with contract and other related claims. . . .
[C]ourts are realizing that they are being asked to facilitate anti-competitive practices, and wisely they are balking. Thus, a case like this illustrates that a judge will find limits to the initial interest confusion doctrine (a doctrine that otherwise has no natural doctrinal limits) and interpose pro-competitive defenses to trademark dilution.
The outcome of this case will be used as a precedent when deciding others and will bolster the argument that use of keywords in metatags and bidding on trademarked terms for search purposes is a legitimate practice. Fairly often, plaintiffs are more concerned about control of channels and control of competition than they are about trademark infringement.
From my own blog, Likelihood of Confusion, quoting the District Court's oral decision dismissing the remaining damages claims:
"The Court has, obviously, heard the evidence and heard the arguments of counsel and I have previously granted the motion to strike certain of the damage evidence from Miss Romero and set forth my reasons why. The Court has now granted the unopposed motion to dismiss the claim for statutory damages. I now grant the Rule 50 motion with respect to actual damages on the bases that there has been no showing of actual damages suffered as a result of the alleged copyright infringement.
"As I pointed out earlier, there has been a witting or unwitting conflation between the alleged lifting of the electronic image from Designerâ€™s website and pasting it on the S & L website, and yet weâ€™ve heard virtually all the evidence, in fact, I think itâ€™s fair to say all the so-called damage evidence, directed at product. In other words, the difference here is between the alleged copyright infringement in connection with the image and the product distribution issues.
"It is clear that the beef, if you may, on the part of the plaintiffs is the selling of product by S & L, and weâ€™ve heard evidence in terms of how much money Designer has spent in their product development, how much theyâ€™ve spent in their product image, the money theyâ€™ve spent in their diversion program, and it would appear that is all directed at seeking out product distributors such as S & L.
"But even if one could assume that somehow it is to seek out and take action against a copyright infringement of its images, there is no basis for this jury or any reasonable jury to attempt to connect how much of those expenditures are connected to the images themselves as opposed to the product distribution issues....
"So again, the only issue in front of this jury and before this Court is that narrow issue of the electronic image being lifted and pasted on the website, and thereâ€™s been simply no connection between that and any ascertainable damages."
DS has withdrawn its appeal.
S & L Vitamins, Inc. v. Australian Gold, Inc. (E.D.N.Y.)
Jan 30, 2009
Partial SJ for S&L; verdict vacated; consent inj.
From Profressor Eric Goldman's Technology & Marketing Law blog:
In this case, S&L initiated a declaratory judgment against Australian Gold. By bringing a DJ, S&L kept the case in a Second Circuit jurisdiction--where courts recently have regularly rejected trademark lawsuits over keyword advertising and metatag inclusion. S&L's move paid off when the court says that buying keyword advertising and using metatags, without more, doesn't constitute a trademark use in commerce.
The remainder of the opinion includes lots of other interesting discussion, including:
* S&L took its own product shots of Australian Gold's products. The court rejects Australian Gold's claim that S&L declaring "All Rights Reserved" with respect to those product shots constituted false advertising.
* The "Australian Gold" trademark lacked sufficient fame to support a dilution claim.
* Australian Gold claimed that S&L violated its copyrights in its labels by taking the product shots. This is an obviously spurious claim because after-market product shots are exactly what 17 USC 113(c) was designed to permit--and Australian Gold's effort to invoke copyright to restrict product shots shows its desperation to restrict legitimate after-market activities (as the court says, "AG is attempting to force a claim with facts that do not really fit"). Unfortunately, the court sidesteps 113(c). Fortunately, the court nevertheless finds that S&L's product shots were fair use of the labels' copyrights. . . .
UPDATE: Jury verdict for Australian Gold -- http://www.likelihoodofconfusion.com/?p=1904
Vacated and consent injunction entered by the court.
Louis Vuitton Malletier v. Veit (E.D. Pa.)
Jun 28, 2002
Statutory damages of $1M for TM counterfeiting
From the website of the Finnegan Henderson law firm:
Defendantâ€™s sold counterfeit LOUIS VUITTON handbags and OAKLEY sunglasses and offered those products at various websites, including â€œwatchreplica.com,â€ â€œreplicatime.com,â€ and â€œlouisvuitton-replicas.com.â€ Plaintiffs sent a cease-and-desist letter to defendants, but they continued to sell counterfeit products on their websites. Defendants continued to sell counterfeit products even after plaintiffs sued defendants for trademark counterfeiting, infringement, dilution, and cybersquatting. The court granted plaintiffsâ€™ motion for default judgment holding that defendantsâ€™ use of plaintiffsâ€™ marks and the domain name â€œlouisvuitton-replicas.comâ€ constituted trademark counterfeiting, infringement, dilution, (federal and state), and cybersquatting. The court awarded $1,500,000 in statutory damages for defendantsâ€™ willful counterfeiting ($1,000,000 for the six LOUIS VUITTON marks and $500,000 for the two OAKLEY marks) and $100,000 in statutory damages under the ACPA. The court awarded the maximum $100,000 under ACPA because of the defendantsâ€™ â€œegregiousâ€ use of plaintiff Louis Vuittonâ€™s trademark as part of a domain name to sell counterfeit LOUIS VUITTON products. And the court awarded plaintiffs $46,504.88 in attorneyâ€™s fees in costs. Finally, the court permanently enjoined defendants from using plaintiffsâ€™ marks at issue or any other confusingly similar or dilutive marks. The court rejected plaintiffsâ€™ request to enjoin defendants from using about 80 trademarks owned by plaintiffs, not just the eight marks at issue in the case. Although the court found defendants likely infringed more than these eight marks, plaintiffsâ€™ complaint failed to allege violations regarding other marks, and plaintiffs failed to introduce any supporting evidence regarding additional marks with its motion for default.
Burch v. Nyarko (S.D.N.Y.)
Jul 31, 2007
Judgment for statutory damage and attys fees
Robert Burch is hardly the only photographer to find his work being copied online, but his recent victory in a lawsuit proves photographers have some recourse when it happens
A federal judge recently awarded Burch a $63,866 judgment against a New York City travel agency, finding that the site used four of Burch's photographs on its Web site without permission. . . .
In the U.S., Burch decided to pursue one of the most blatant infringers. According to the lawsuit, Burch discovered four of his photographs on the Black Star Travel Web site. Burch hadn't licensed them to this travel agency. He contacted Nyarko to try to solicit a fee for use of the images, but Nyarko refused. Burch tried to send in a bill, but Nyarko ignored it and the photos remained online. Eventually, the photos disappeared when the Black Star Travel site went offline; it was replaced by a redesigned site.
Burch had registered the photos with the copyright office years earlier. . . . The judge, after considering the values awarded in other cases involving photographs, awarded Burch $15,000 per photograph in damages, plus $3,280 in fees and $586 in costs.
Burch hopes other infringers will hear about his lawsuit and be convinced to stop ripping off his work. One other travel agent who was using his photos has already been in touch to work out a deal, he says. "I'd much rather have them as my friends," Burch says.
Dorsey v. Black Pearl Books, Inc. (D.N.J.)
Nov 14, 2006
Right of publicity - recall and statutory damages
From New Jersey Justice:
The unfortunately titled new novel, Legit Baller, written for the unfortunate genre of "street life," is the product of Black Pearl Books, a publisher of such high-minded fare as Snitch: No Rest, No Sleep and Hu$tlin' Backwards.
Legit Baller is the tender tale of a crack dealer and the two women who wait for him while he serves time in prison. Problem is, when the publisher needed a picture for the cover, they simply used a photo of a well-respected R & B singer named Marc Dorsey.
Dorsey claims he lost an endorsement deal after the book bearing his photo was published.
US District Judge Joseph Greenaway agreed with Dorsey, and this week ordered Black Pearl to stop using the photo and to recall distributed copies.
At an inquest, the Court awarded total damages in the amount of $500,000 ($250,000 in compensatory damages and $250,000 in punitive damages) plus attorneys' fees.
Buying for the Home, LLC v. Humble Abode, LLC (D.N.J.)
Oct 19, 2006
Cash payout to defendant after mixed SJ opinion
From Eric Goldman's Technology and Marketing Blog:
[T]he court denied the defendant's motion for summary judgment on the use in commerce issue. For more on why this result is wrong, see my writeups on the Edina Realty and 800-JR-Cigar cases.
In an ironic twist, the defendant alleges that the plaintiff buys the "Humble Abode" keyword at Google and displays an ad saying: "Save on Humble Abode. Find many of the Humble Abode.com beds at a significant discount" and providing a link to the plaintiff's website. I really don't understand how a plaintiff can complain with a straight face about competitive keyword purchases on its trademarks when it does the same thing itself. (But this seems to happen fairly frequently--for example, it was an embarrassing fact in the 1-800 Contacts case as well).
In this ruling, the defendant sought SJ on its counterclaim against the plaintiff for buying its trademarks. This should set up a mirror image opinion--if keyword purchases are a problem, the plaintiff should be liable too. The judge sidesteps this parallelism by ignoring the use in commerce question altogether, instead citing the possibility that the plaintiff is protected by the nominative use defense to deny the defendant's SJ motion on the counterclaim. Of course, this raises a highly ironic question, but the irony appears to have been lost on (or ignored by) the judge.
You may recall the Buying for the Home v. Humble Abode decision from last Fall, part of the topsy-turvy jurisprudence from 2006 on whether buying/selling trademarked keywords constitutes a trademark use in commerce. In the prior opinion, the defendant Humble Abode failed to win summary judgment to dismiss Buying for the Home's infringement claim. Further, Humble Abode brought a counterclaim based on Buying for the Home's purchase of keywords containing Humble Abode's trademarks, and the court also denied Humble Abode's SJ motion for its counterclaim.
Cooler heads have prevailed, and the parties settled the case. Both agreed not to use the other's trademarks on their websites. However, as far as I can tell, the parties did not agree to stop buying each other's trademarks as keywords--a pretty big omission if that's what started the lawsuit in the first place. Further, the settlement deal includes the initial aggressor, Buying for the Home, paying the defendant, Humble Abode, $10,000. So Buying for the Home initiates the lawsuit and beats Humble Abode's motions for SJ, but nevertheless settles the case without stopping Humble Abode from buying its trademarked keywords, AND ends up writing a check to Humble Abode to boot? What gives?
Lawson v. N.Y. Billiards Corp. (E.D.N.Y.)
Aug 10, 2004
Overcame motion for summary judgment
Plaintiffs, a former employee and his wife, filed an action against defendants, a corporation and two officers, alleging breach of employment contract and wrongful discharge, malicious prosecution, intentional infliction of emotional distress, slander and libel, and loss of consortium. We were substituted into the case at the end of discovery. Defendants filed a motion for summary judgment. The court granted partial summary judgment but did not dismiss the malicious prosecution claim. Eventually a settlement was reached.
Favorable rulings for our client cited in Am. Jur. 2nd "Malicious Prosecution" Â§Â§ 34, 60, 141; "Actual belief on part of prosecutor as element of probable cause in action for malicious prosecution," 65 A.L.R. 225; "Unreversed conviction as conclusive in action for malicious prosecution," 69 A.L.R. 1062; "Defendant's acquiescence in, approval of, or silence regarding, acts of another for which he was not otherwise responsible as ground of liability in action for malicious prosecution or false arrest," 120 A.L.R. 1322; "Dismissal by magistrate or other inferior court for lack or insufficiency of evidence as a final termination of prosecution as regards action for malicious prosecution," 135 A.L.R. 784.
Valley Nat'l Bank v. Lavecchia (D.N.J.)
Aug 13, 1999
Summary judgment and permanent injunction awarded
On July 13, 1999, Valley National Bank, a wholly- owned subsidiary of Valley National Bancorp, reported that it had acquired the assets of Commonwealth Land Title insurance Company's Totowa, New Jersey office and will immediately begin selling title insurance through Valley's Branch office located in Riverdale, NJ. The new title agency is a separate subsidiary of VNB known as Wayne Title, Inc. and will conduct business under the trade name of Commonwealth All Service Title Agency.
You might have thought that Banks were prohibited from selling title insurance. They were under NJSA 17: 46B-30.1, which prohibits lenders from owning or controlling title insurance companies. Valley National Bank applied for a title producer's license for Wayne Title, Inc. based on an interpretation of 12 U.S.C. Sec. 92, permitting national banks to sell insurance in towns having a population of 5,000 or less. In Barnet Bank vs. Nelson, 517 U.S. 25 ( 1996), the United States Supreme Court used this section to permit national banks to sell title insurance even though it was prohibited by Florida State law.
After the initial denial of their license, VNB instituted an action to compel the issuance of same by the NJ Department of Insurance. In Valley National Bank v. LaVecchia, the New Jersey Courts agreed and issued an order prohibiting the Commissioner of Banking and Insurance from denying the license application because Wayne Title is a subsidiary of VNB.
From a law journal article by attorney Jonathan Hudis:
The Jews for Jesus court found that Brodsky's use of the JEWS FOR JESUS mark as a domain name was a commercial use because his web site: (i) intended to intercept, through deceit and trickery, the audience sought by JFJ; (ii) conveyed the impression that JFJ was the site's sponsor; (iii) commercially disparaged JFJ; (iv) prevented JFJ from exploiting its own mark; (v) hyperlinked to the Outreach Judaism site, which provided its own viewpoints and offered products and services for sale; and (vi) prevented at least some Internet users from reaching its own web site. In a mere passing footnote, the court stated that the parties"dispute d[id] not implicate rights granted by the First Amendment of the United States Constitution."
From the U.S. Court of Appeals for the Fourth Circuit:
Although the appellate courts that have adopted the initial interest confusion theory have only applied it to profit-seeking uses of another's mark, the district courts have not so limited the application of the theory. Without expressly referring to this theory, two frequently-discussed district court cases have held that using another's domain name to post content antithetical to the markholder constitutes infringement. See Planned Parenthood Fed'n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. March 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (table) (finding use of domain name "www.plannedparenthood.com" to provide links to passages of anti-abortion book constituted infringement); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), aff'd, 159 F.3d 1351 (3d Cir. 1998) (table) (finding use of "www.jewsforjesus.org" to criticize religious group constituted infringement). We think both cases were wrongly decided to the extent that in determining whether the domain names were confusing, the courts did not consider whether the websites' content would dispel any confusion. In expanding the initial interest confusion theory of liability, these cases cut it off from its moorings to the detriment of the First Amendment.
Lamparello v. Falwell, 420 F.3d 309, 318 (4th Cir. Va. 2005) http://pacer.ca4.uscourts.gov/opinion.pdf/042011.P.pdf
From the the U.S. District Court for the Eastern District of Michigan:
[T]he implication in ... Jews for Jesus that the "commercial use" requirement is satisfied any time unauthorized use of a protected mark hinders the mark owner's ability to establish a presence on the Internet or otherwise disparages the mark owner is flawed.
Ford Motor Co. v. 2600 Enters., 177 F. Supp. 2d 661, 664 ( E.D. Mich. 2001)
Lewis v. Am. Cyanamid Co. (Supreme Ct., NJ)
Defective and Dangerous Products
Jul 20, 1998
Dismissal of failure to warn products claim aff'd
From the decision by the New Jersey Supreme Court:
Plaintiff consumer, who sustained severe burns from the use of an insecticide in contravention of its instructions, sued defendant companies, the product's maker and seller. Plaintiff asserted a failure to warn of dangers and defects in design and manufacturing. The failure-to-warn claim was dismissed and the jury rejected the manufacturing defect claim, while returning a verdict for plaintiff on the design defect claim. However, judgment for defendants notwithstanding the verdict was entered. The appellate division upheld the dismissal of the failure-to-warn claim, but reversed the judgment n.o.v. and remanded the case for retrial solely on the issues of damages and comparative negligence. On review, the court affirmed in part, holding that the failure-to-warn claim was preempted by the Federal Insecticide, Fungicide and Rodentia Act, 7 U.S.C.S. Â§ 136 et seq., and federal labeling regulations. The court concluded by reversing in part, finding that remand was necessary because of improper jury instructions on assumption of risk and noting that retrial of defendant's liability also was required where it was intertwined with plaintiff's comparative fault.