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S & L Vitamins, Inc. v. Australian Gold, Inc. (E.D.N.Y.)

Case Conclusion Date: 01.30.2009

Practice Area: Trademark infringement

Outcome: Partial SJ for S&L; verdict vacated; consent inj.

Description: 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 -- Vacated and consent injunction entered by the court.

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