Designer Skin, LLC v. S & L Vitamins, Inc. (E.D.N.Y.)

Ronald David Coleman

Case Conclusion Date:September 5, 2008

Practice Area:Copyright Infringement

Outcome:Most claims dismissed; injunction; no dams or fees

Description: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. http://ericgoldman.org/archives/2008/06/keyword_metatag_1.htm From WebProNews: 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. http://www.webpronews.com/topnews/2008/06/05/bidding-on-trademark-terms-okayed-by-court 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 Designer’s website and pasting it on the S & L website, and yet we’ve heard virtually all the evidence, in fact, I think it’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 we’ve heard evidence in terms of how much money Designer has spent in their product development, how much they’ve spent in their product image, the money they’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 there’s been simply no connection between that and any ascertainable damages." http://www.likelihoodofconfusion.com/?p=1567 DS has withdrawn its appeal.